DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election by Original Presentation
37 CFR 1.145 Subsequent presentation of claims for different invention.
If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.
Newly submitted claims 2-13 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Original claim 1 (filed 7/31/2024), drawn to a combination of a display device, classified in G06F 1/1601.
II. Current claims 2-13, drawn to subcombination of a display device, classified in G06F 1/1616.
The inventions are independent or distinct, each from the other because:
Inventions 1 and 2 are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination (previous claim 1; filed 7/31/2024) as claimed does not require the particulars of the subcombination (current claims 2-13) as claimed because it does not require any of the features of claims 2-6 and 8-13; and (2) the subcombination has utility by itself or in other combinations – such as a combination without both “a digitizer positioned on a rear surface of the plate” and “a fiber area weight (FAW) of the second layer is 100 g/m2 to 150 g/m2”.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions require a different field of search (e.g. searching different subclasses/subgroups or electronic resources, or employing different search strategies or search queries);
the prior art (or combination of prior art) applicable to reject claims drawn to one invention would not likely be applicable to reject claims drawn to another invention; and
and/or the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112.
Since applicant has received an action on the merits for the originally presented invention, this invention Group I has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 2-13 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of prior U.S. Patent No. 12085983 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates, encompasses, and requires all of the limitations of the present claim.
Present App. No. 18/791352
U.S. Patent No. 12085983 B2
1. A display device comprising:
a display module;
a plate positioned on a rear surface of the display module;
wherein the plate includes a first layer, a second layer, and a third layer each including carbon fiber reinforced plastic.
1. A display device comprising:
a display module;
a plate positioned on a rear surface of the display module; and
a digitizer positioned on a rear surface of the plate,
wherein the plate includes a first layer, a second layer, and a third layer each including carbon fiber reinforced plastic, and
a fiber area weight (FAW) of the second layer is 100 g/m2 to 150 g/m2.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shin (KR 101743198 B1). Foreign Reference and translation attached (also available in parent application).
As to claim 1, Shin discloses:
A display device (Fig. 1, 13; par. 0034) comprising:
a display module 110 (par. 0045-0047);
a plate (multilayer back plate 200 as in Fig. 13; positioned corresponding to single layer back plate 100 in Fig. 1) positioned on a rear surface of the display module;
wherein the plate 200 (Fig. 13) includes a first layer 210, a second layer 220, and a third layer 230 each including carbon fiber reinforced plastic (carbon fiber and resin; par. 0121).
Alternatively, Shin discloses:
A display device (Fig. 1; par. 0034) comprising:
a display module 110 (par. 0045-0047);
a plate 100 positioned on a rear surface of the display module.
In the current embodiment of Fig. 1; Shin does not explicitly disclose:
wherein the plate includes a first layer, a second layer, and a third layer each including carbon fiber reinforced plastic.
However, in another embodiment, Shin discloses:
wherein the plate 200 (Fig. 13) includes a first layer 210, a second layer 220, and a third layer 230 each including carbon fiber reinforced plastic (carbon fiber and resin; par. 0121);
in order to provide a back cover with higher rigidity (par. 0122-0123).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Shin as suggested by Shin, e.g., providing:
wherein the plate includes a first layer, a second layer, and a third layer each including carbon fiber reinforced plastic;
in order to provide a back cover with higher rigidity.
Additionally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination/modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB R CRUM whose telephone number is (571)270-7665. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached at (571) 270-1985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB R CRUM/Primary Examiner, Art Unit 2841
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