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/Restrictions
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 12, 2026.
Applicant's election with traverse of the invention corresponding to group I (claims 1-11) is acknowledged. The traversal is on the ground(s) that “the invention of Group I presupposes the display structure of Group II for its technical effects to be achieved, and therefore Groups I and II should be considered not as patentably distinct inventions but as claims directed to a single invention from different perspectives.” (Remarks, pg. 3, para. 1) Applicant supports this position by contending that “[t]he Examiner has characterized the invention of Group I as relating to an electronic device that does not necessarily require a display.” (Remarks, pg. 2, para. 4)
This is not found persuasive because Applicant has mischaracterized the Examiner’s position. That is, it was never alleged that the electronic device of Group I does not require a display alone, but instead that the electronic device of Group I does not require a display that is at least partially surrounded by a lateral member constituting an external appearance of the electronic device. Accordingly, the invention of Group I cannot presuppose the display structure of Group II for its technical effects to be achieved, and therefore Groups I and II are considered patentably distinct inventions.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on September 30, 2024 and July 24, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling.
Claim 1: The disclosure does not enable one of ordinary skill in the art to practice the invention without the display structure defined by claim 12, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). Reasons for holding the display structure of claim 12 as essential are provided by Applicant in the Remarks, filed February 12, 2026. (Remarks, section II) In the Remarks, Applicant’s statement relating to the functional and inseparable combination between the display structure (claim 12) and the electronic device (claim 1) makes clear the essential nature of the display structure.
Claim Rejections - 35 USC § 112(b)
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 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Claim 1: Evidence that claim 1 fails to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the reply filed February 12, 2026. In that paper, the inventor or a joint inventor, or for pre-AIA applications the applicant has stated “the invention of Group I presupposes the display structure of Group II for its technical effects to be achieved,” (Remarks, pg. 3, para. 1) and this statement indicates that the invention is different from what is defined in the claim(s) because the electronic device of claim 1 does not require all of the particulars of the display structure of claim 12.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEE et al. (U.S. Publication No. 2016/0044801).
LEE, in figures 4-6, discloses:
Claim 1: An electronic device (100) comprising: a display (102) including a display panel (121); a lateral member (201b) including a conductive material and disposed in a manner that at least a part thereof surrounds the display; a communication module electrically connected to the lateral member to enable the lateral member to function as an antenna (¶[0073]); and a support plate (203) disposed below the display panel and including a first region (233) adjacent to the lateral member and a second region (231) excluding the first region, wherein the first region and the second region of the support plate include different materials (¶[0069]).
Claim 2: wherein the first region of the support plate includes a material having different dielectric properties from the second region at radio frequency (RF) communication frequencies (¶[0069]).
Claim 3: wherein the first region of the support plate includes a material having a lower permittivity than the second region of the support plate at the RF communication frequencies (¶[0069]).
Claim 4: wherein the first region of the support plate includes a material having a lower dielectric loss than the second region of the support plate at the RF communication frequencies (¶[0069]).
Claim 5: wherein the RF communication frequencies are greater than or equal to 500 MHz and less than or equal to 10 GHz (¶[0053]).
Claim 7: wherein at least a portion of the first region of the support plate further protrudes toward the lateral member relative to the display panel (fig. 6).
Claim 9: wherein the second region of the support plate includes a metal material (¶[0069]).
Allowable Subject Matter
Claims 6, 8, 10 and 11 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT KARACSONY whose telephone number is (571)270-1268. The examiner can normally be reached 9:00 am - 5:00 pm, Monday - Friday.
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, Dimary Lopez can be reached at (571) 270-7893. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert Karacsony/ Primary Examiner, Art Unit 2845
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