DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 28, 29, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 15 of U.S. Patent No. 12,043,571. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements that the present application claims are not materially different than those described in the ‘571 patent and they would have been obvious to the person of ordinary skill in the art at the time of filing in view of the ‘571 patent.
Regarding claim 21, claim 1 of the ‘571 patent describe the elements of the present claim 21, including a portable electronic device and a cover glass member having front and rear compressive stress regions (i.e., exterior and interior compressive stress regions; including peripheral front and rear portions) and edge compressive stress regions that are greater than the front and rear compressive stress regions.
Claims 28 and 29 are described by claim 8 of the ‘571 patent.
Claim 35 is described by claim 15 of the ‘571 patent.
Claims 22-27, 33, and 36 - 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,043,571 in view of Harvey et al. (US 2010/0206008, “Harvey”). Regarding claims 22-25, the ‘571 patent does not specifically describe that the peripheral compressive stress region has a portion extending from each of front and rear surfaces of the glass, however such a feature is known in the art and would be expected to arise from common glass strengthening techniques. For example, Harvey describes that the entirety of the edges of a glass sheet may be strengthened and would result in the extension of a strengthened region (or compressive stress region) from the front and rear surfaces in order to provide a suitably strengthened glass sheet (Harvey, [0017], Fig. 1, [0003] – [0007]), thus rendering obvious the extension of the peripheral strengthened regions along the front, side, and rear surfaces.
Claim 26 is described by claim 4 of the ‘571 patent.
Claim 27 is described by claim 20 of the ‘571 patent.
Regarding claims 33, 36, and 37, the ‘571 patent does not specifically describe that the peripheral compressive stress region has a portion extending from each of front and rear surfaces of the glass, however such a feature is known in the art and would be expected to arise from common glass strengthening techniques. For example, Harvey describes that the entirety of the edges of a glass sheet may be strengthened and would result in the extension of a strengthened region (or compressive stress region) from the front and rear surfaces in order to provide a suitably strengthened glass sheet (Harvey, [0017], Fig. 1, [0003] – [0007], notably the width on the front surface associated with the peripheral edge strengthening is not as wide as the width of the front surface strengthening), thus rendering obvious the extension of the peripheral strengthened regions along the front, side, and rear surfaces.
Claims 38-40 are described by claim 18-20 of the ‘571 patent.
Allowable Subject Matter
Claims 30-32 and 34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 21-40 are allowable over the prior art.
Regarding claims 21-40, the closest prior art of record, Barefoot (US 2010/0035038, “Barefoot), teaches a strengthened glass article for use in display devices (e.g., [0048]) and teaches glass sheets having various thicknesses and compressive stress depths ([0041], [0044], [0045]). Barefoot fails to teach that the glass member has different peripheral and front compressive stress depths and that the peripheral front and rear depths extend to different depths than the corresponding front and rear central compressive depths within the glass layer (i.e., therefore those regions have undergone different amounts of chemical strengthening). While Feinstein (US 2009/0324899, “Feinstein”) teaches an embodiment wherein the peripheral portions of the glass sheet remain unexposed (e.g., see Feinstein Fig. 6B, having a glass sheet that is completely wrapped by the housing such that only the outward facing surface is exposed), Feinstein fails to teach the claimed depth of compressive stresses and it would not have been obvious to have applied different peripheral and front compressive stress depths such that the peripheral front and rear depths extend to different depths than the corresponding front and rear central compressive depths within the glass layer. That is, there is no teaching in the prior art to apply different levels of strengthening treatment to different areas of a glass sheet so as to provide the sheet with different depths of layer on the surfaces of the periphery and the front and rear surfaces in the center of the glass layer. Therefore, the claimed glass article having different compressive stress layer depths in the periphery than the center region it would not have been obvious at the time of the invention to the person of ordinary skill in the art. The combination of elements as set forth in the independent claims 21, 28, and 35 and dependent claims 22-27, 29-34, and 36-40 are not disclosed or made obvious by the prior art for the reasons explained above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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