REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Claim Interpretation
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances where applicants have included lexicographic definitions, either express or implied. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which Applicants are acting as their own lexicographer. See MPEP § 2111.01.IV.
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which would invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16, 19, 32 and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
More specifically, independent claims 11 and 27 recite the structure for the touch display device having a plurality of mesh units including one or more gaps. Dependent claims 14, 16, 19, 30, 32 and 35 further limit the independent claims by reciting first and second end portions and a gap in between. Lastly claims 16 and 32 further teach that the first and second ends are electrically connected, in contrast to claims 19 and 35, which specify that the first and second ends are electrically isolated. Since the same structure is addressed in the dependent claims, how can it be two things at the same time (i.e. electrically connected and electrically isolated).
In order to advance the prosecution, the Examiner interpreted the gap as both connected and isolated based on two different interpretations. First, interpreting capacitive connection as being indirectly electrically connected and in the second interpretation as being electrically isolated as there is no conductor in the gap space allowing for direct electrical connection.
The Applicant is requested to select one group of claims so that there are no conflicting interpretations, or if the Applicant maintains that both options are valid, then detailed explanation pointing to the citations in the original disclosure is requested.
Claim Rejections - 35 USC § 251
Claims 11-42 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(A)) In the instant case, the Applicant seeks to broaden original independent claims 1, 11 and 27 by omitting at least the patent claim language requiring the underlined limitations, “at least one of the plurality of first light emitting units is disposed in the first mesh opening in the direction perpendicular to the substrate, and at least one of the plurality of second light emitting units is disposed in the second mesh opening in the direction perpendicular to the substrate, wherein an area of the second mesh opening is greater than an area of the first mesh opening” (emphasis added), “wherein the first mesh corner is curved and the second mesh corner is curved” and “the first end portion is electrically connected to the second end portion”.
(Step 2: MPEP 1412.02(B))
The records of the parent application 15/448,592 (now US Patent No. 10,825,839), the Applicant has amended independent claim 1 to include the limitation “the first end portion is electrically connected to the second end portion” referring to the part of a mesh unit. The amendment has been accompanied by arguments, contending that the content of claim 6 has been incorporated into the independent claim 1 and therefore, “the amended claim 1 should be patentable over the cited references”1.
Secondly, the record of the prior application no. 17/033,666 prosecution history indicates that on January 18, 2022, the Applicant has amended independent claim 1 by incorporating limitation “wherein the first mesh corner is curved and the second mesh corner is curved” and on pages 7-8, the Applicant also contended that the newly added limitation is not disclosed by the cited references. Additionally, in a Response filed on September 12, 2024, the Applicant amended the claims in such a manner as to rewrite previously objected dependent claims, into the independent form. Accordingly, the newly amended claims recited the allowable subject matter as explained in the step 1 above, hence they overcame the cited prior art (Lee et al (US 2015/0109246), Kusunoki et al (US 2015/0346866), Oh et al. (US 2014/0333555) and Seo et al (US 2015/0077361)).
Subject matter is previously surrendered during the prosecution of the original application by reliance by Applicant to define the original patent claims over the art by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art2. It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the claim limitations of “at least one of the plurality of first light emitting units is disposed in the first mesh opening in the direction perpendicular to the substrate, and at least one of the plurality of second light emitting units is disposed in the second mesh opening in the direction perpendicular to the substrate, wherein an area of the second mesh opening is greater than an area of the first mesh opening”, “wherein the first mesh corner is curved and the second mesh corner is curved” and “the first end portion is electrically connected to the second end portion” are surrendered subject matter and some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that the reissue claims were not materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. The underlined surrendered subject matter, noted above, has been entirely eliminated from new independent reissue claims 11-42. It is noted that the added limitations do not materially narrow the patent claims to avoid recapture.
Therefore, broadened independent reissue claims 11 and 27 attempt impermissible recapture of subject matter surrendered during prosecution of the 15/448,592 and 17/033, 666 applications. Dependent reissue claims dependent upon the independent claims mentioned above are rejected for similar rationale.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 11, 13-14, 16-26, 27, 29-30 and 32-42 are rejected under 35 U.S.C. 103 as being unpatentable over Kusunoki (US Patent Publication No. 2015/0346866) in view of Oh et al (US Patent Publication No. 2014/0333555).
With respect to claims 11 and 27, Kusunoki teaches a touch display device (Figures 21A and 21C and para. [0047]), comprising: a substrate (Figure 10B, element 31); a plurality of first light emitting units disposed on the substrate (Figure 10B, element 52R, wherein as illustrated in the figure there are multiple 52R light display elements), wherein, having first areas in plan view, and configured to emit a first color light (para. [0121], wherein element 52R transmits red light and Figure 9B, element 33R);
a plurality of second light emitting units disposed on the substrate (Figure 10B, element 52B and Figure 9A, element 33B), having second areas greater than the first areas in plan view and configured to emit a second color light (as illustrated in Figure 9B, element 33B has an area greater than 33R, wherein element 52B transmits blue light); an insulation layer disposed on the plurality of first light emitting units and the plurality of second light emitting units (Figure 10B, element 28); and a plurality of mesh units (Figure 10B, element 53, wherein, the layer forms multiple mesh units (i.e. mesh area surrounding each opening)) configured to have a mesh frame and a mesh opening disposed on the insulation layer (Figures 10B and 3B, elements 23 and 24 and para. [0089]); wherein a first plurality of the plurality of mesh units are configured to have a first mesh opening area and arranged such that respective ones of at least a portion of the plurality of first light emitting units are disposed in the mesh opening of the respective ones of the first plurality of the plurality of mesh units in plan view (Figure 9E, wherein there are multiple openings and at least some of them are occupied by light element display 33R (i.e. first light emitting units)): wherein a second plurality of the plurality of mesh units are configured to have a second mesh opening area and arranged such that respective ones of at least a portion of the plurality of second light emitting units are disposed in the mesh opening of the respective ones of the second plurality of the plurality of mesh units in plan view (Figure 9E, wherein there are multiple openings and at least some of them are occupied by light element display 33B (i.e. second light emitting unit)); wherein the second mesh opening area is configured to be different than the first mesh opening area (as illustrated in Figure 9B, the second opening is hosting one larger light element 33B, while the first opening can host smaller light elements 33R and 33G, hence mesh opening areas are configured differently).
Kusunoki, however does not explicitly discuss the mesh frames of a plurality of the first plurality of the plurality of mesh units and second plurality of the plurality of mesh units including one or more gaps.
On the other hand, Oh teaches touch sensory device wherein the mesh frames of a plurality of the first plurality of the plurality of mesh units and second plurality of the plurality of mesh units including one or more gaps (Figure 2, element 20a, para [0061]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate a gap into plurality of mesh units as taught by Oh, into the mesh design taught by Kusunoki, to efficiently and appropriately control the mutual capacitance (Oh, para. [0061]).
Moreover, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the embodiment illustrated in Figure 10B with the embodiment depicted in Figure 9B as taught by Kusunoki, because changing arrangement of the mesh units would be dictated by a design choice.
With respect to claims 13 and 29, Kusunoki teaches the touch display device of claim 11, wherein the mesh frames of the plurality of the first plurality of the plurality of mesh units and second plurality of the plurality of mesh units comprise metal (para. [0060]).
With respect to claims 14 and 30, Oh further teaches the touch display device, wherein at least one mesh frame having the one or more gaps comprises a first end portion and a second end portion opposite to the first end portion and wherein one of the one or more gaps is disposed between the first end portion and the second end portion (as illustrated in Figure 3 below).
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With respect to claims 16 and 32, Oh further teaches the touch display device, wherein the first end portion is electrically connected to the second end portion (Figure 3, wherein capacitive connection is considered indirect electrical coupling).
With respect to claims 17 and 33, Oh teaches the touch display device, wherein the at least one mesh frame having the one or more gaps comprises a third end portion and a fourth end portion opposite to the third end portion and wherein a second of the one or more gaps is disposed between the third end portion and the fourth end portion (as depicted below, the first gap has third and fourth end portion in the proximity and the second gap is placed between 3rd and 4th end portions).
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With respect to claims 18 and 34, Oh teaches the touch display device, further comprising: a first touch electrode including a first portion of the at least one mesh frame (Abstract, “first electrode pattern”); and a second touch electrode including a second portion of the at least one mesh frame (Abstract, “second electrode pattern”); wherein the one of the one or more gaps separates the first touch electrode and the second touch electrode (Abstract, “the second electrode patterns spaced apart from the first electrode patterns”. In addition, the touch electrode is further discussed in para. [0060] and [0061]).
With respect to claims 19 and 35, Oh teaches the touch display device, wherein the first end portion is electrically isolated from the second end portion (as depicted in Figures 2 or 3 above, since there is a disconnect in the wiring the first and second portions are electrically isolated (i.e. there is no direct electrical connection)).
With respect to claims 20 and 36, Kusunoki teaches the touch display device, wherein the insulation layer is an encapsulation layer covering the plurality of first light emitting units and the plurality of second light emitting units (Figure 12A, elements 52 “light element” covered by encapsulation insulation layer 266).
With respect to claims 21 and 37, Kusunoki teaches the touch display device, wherein the first plurality of the plurality of mesh units are arranged such that second respective ones of at least a portion of the plurality of first light emitting units are disposed in the mesh opening of the respective ones of the first plurality of the plurality of mesh units in plan view (Figure 9B, wherein there are plurality of mesh openings as better seen in Figure 10B, element 53, and first light emitting unit 33R is disposed in the mesh opening).
With respect to claims 22 and 38, Kusunoki teaches the touch display device, wherein the second plurality of the plurality of mesh units are arranged such that second respective ones of at least a portion of the plurality of second light emitting units are disposed in the mesh opening of the respective ones of the second plurality of the plurality of mesh units in plan view (Figure 9B, wherein there are plurality of mesh openings as better seen in Figure 10B, element 53 (i.e. the element 53 is considered to consists of multiple mesh units), and second light emitting unit 33B is disposed in the mesh opening).
With respect to claims 23 and 39, Kusunoki teaches the touch display device, wherein the first plurality of the plurality of mesh units are arranged such that second respective ones of at least a portion of the plurality of second light emitting units are disposed in the mesh opening of the respective ones of the first plurality of the plurality of mesh units in plan view (as illustrated in Figure 9A, which depicts only portion of the mesh units (i.e. there are multiple mesh units arranged in the pattern), the mesh opening can have multiple light elements disposed inside it. Thus, if the 33B is part of the second light emitting units, as clearly illustrated in Figure 9B, this light element would be placed inside the opening of the first mesh unit).
With respect to claims 24 and 40, Kusunoki teaches the touch display device, wherein a first distance between the mesh frames and the plurality of first light emitting units when viewed in plan view is less than a second distance between the mesh frames and the plurality of first light emitting units when viewed in a cross-sectional view, the second distance being measured in a direction perpendicular to the substrate (as depicted in the annotated Figure 12A below, D1 is less than D2), and
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a third distance between the mesh frames and the plurality of second light emitting units when viewed in plan view is less than a fourth distance between the mesh frames and the plurality of second light emitting units when viewed in the cross-sectional view, the fourth distance being measured in the direction perpendicular to the substrate (wherein the distances illustrated above are the same whether it is first or second mesh frames. In this case D1 would correspond to the third distance and D2 would correspond to fourth distance).
With respect to claims 25 and 41, Kusunoki further teaches the touch display device, wherein the mesh frames of the plurality of the first plurality of the plurality of mesh units and second plurality of the plurality of mesh units comprise any one or more materials selected from the group of Al, Cu, Mo, Ti, and Ag (para. [0078] and [0177]).
With respect to claims 26 and 42, Kusunoki further teaches the touch display device, wherein the mesh frames of the plurality of the first plurality of the plurality of mesh units and second plurality of the plurality of mesh units comprise an alloy of any one or more selected from the group of Al, Cu, Mo, Ti, and Ag (para. [0060], [0078] and [0177]).
Allowable Subject Matter
Claims 1-10 are allowed.
Claims 12, 15, 28 and 31 would be allowable contingent upon overcoming the rejection as recited above.
Additionally, changes to the original claims or new claims would need to be present for the reissue to be issued because at least one error must be addressed by the reissue.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 1, the prior art of record, does not anticipate nor renders obvious a touch display as disclosed in claim 1, wherein comprising plurality of light emitting units and plurality of mesh units arranged in the manner as disclosed in claims and further wherein the plurality of mesh units comprise a first mesh unit including a first mesh opening and a second mesh unit including a second mesh opening, at least one of the plurality of first light emitting units is disposed in the first mesh opening in the direction perpendicular to the substrate, and at least one of the plurality of second light emitting units is disposed in the second mesh opening in the direction perpendicular to the substrate, wherein an area of the second mesh opening is greater than an area of the first mesh opening.
With respect to claims 2-10, those claims would also be allowable by the virtue of their dependency on claim 1.
With respect to claims 12 and 28, the prior art of record does not anticipate nor render obvious the touch display device as disclosed in claims 11 and 27, further wherein the second mesh opening area is greater than the first mesh opening area.
With respect to claims 15 and 31, the prior art of record does not anticipate nor render obvious the touch display device as disclosed in claims 11 and 27, further wherein at least one mesh frame having the one or more gaps comprises a first end portion a second end portion opposite to the first end portion, a first mesh corner, a second mesh corner adjacent to the first mesh corner, and a first line portion disposed between the first mesh corner and the first end portion and wherein one of the one or more gaps is disposed between the first end portion and the second end portion and between the first mesh corner and the second mesh corner.
Conclusion
In accordance with MPEP § 1406, the examiner has reviewed and considered the prior art cited or ‘of record’ in the original prosecution of the '104 patent. Applicants are reminded that a listing of the information cited or ‘of record’ in the original prosecution of the ‘104 patent need not be resubmitted in this reissue application unless Applicant(s) desire the information to be printed on a patent issuing from this reissue application.
Applicant(s) are reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which ‘104 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, other post-grant proceedings in the Office, and litigation.
Applicant(s) are further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant(s) are also reminded that any amendments to the claims must comply with the provisions of 35 U.S.C. § 112 first paragraph, having clear support and antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela Lie at telephone number is 571-272-8445 during office hours Monday-Friday 7 am – 3:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
1 Applicant’s Arguments filed, in the application 15/448,592, on March 31, 2020, page 6
2 Applicant’s Arguments filed, in the application 17/033,666, on April 24, 2022, page 5 and Arguments filed on 01/18/2022, pages 7-8
Prosecution Insights