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 .
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9, 10, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0212340 to Ai et al. in view of U.S. Patent Application Publication No. 2020/0298539 to Shibai et al. and 2008/0055729 to Li et al.
Regarding Claim 9, Ai discloses (e.g., Figs. 1–4, 14, and 20 and their descriptions including at least paragraphs [0035]–[0055]) an electronic device 10, comprising: a housing 12 configured to fold along an axis 22; a flexible display 14 mounted to the housing and configured to display images across the axis (e.g., Figs. 3 and 4 illustrate the display 14 continuously wrapping the axis, reasonably suggesting display across the axis); a display cover layer 24 overlapping the flexible display (e.g., paragraphs [0039], [0046], and [0047] and Fig. 6), wherein the display cover layer has first and second rigid portions and a groove interposed between the first and second rigid portions (Fig. 5, paragraph [0046], rigid planar layers 24A/C with flexible portion 24B therebetween having grooves 30 formed therein, e.g., Figs. 8–15); and a polymer material 32 in the groove (paragraph [0050], filler 32 may be polymer such as silicone).
Ai further teaches that the grooves may have pseudorandom patterns (e.g., paragraphs [0050]–[0054] and Figs. 12–14), at least in part to prevent optical interference or prevent visible artifacts, but does not explicitly disclose wherein the first and second rigid portions each have a roughened surface facing the groove to produce a gradual change in refractive index between the display cover layer and the polymer material.
Shibai teaches roughening a surface to which a polymer is applied in order to improve adhesion of the polymer to that surface (e.g., paragraph [0086]).
Li teaches using a roughened surface to gradually change the index of refraction to reduce reflection at the interface (paragraph [0025]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the device of Ai such that the first and second rigid portions each have a roughened surface facing the groove to produce a gradual change in refractive index between the display cover layer and the polymer material, as suggested by Shibai and Li, in order to improve adhesion of the polymer and reduce reflection at the interface.
Regarding Claim 10, the combination of Ai, Shibai, and Li would have rendered obvious wherein the polymer material comprises silicone (paragraph [0050] of Ai).
Regarding Claim 13, the combination of Ai, Shibai, and Li would have rendered obvious wherein the first and second rigid portions have sloped sidewalls facing the groove and wherein the roughened surface is formed on the sloped sidewalls (e.g., Fig. 10 of Ai).
Regarding Claim 14, the combination of Ai, Shibai, and Li would have rendered obvious wherein the display cover layer comprises first and second chemically strengthened surfaces (e.g., hard coating layer 24B-2, paragraph [0053] of Ai).
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 1–4 and 6–8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 5–10 respectively of U.S. Patent No. 12,142,632. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially similar despite wording differences.
Claims 1, 2, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 2, and 12 respectively of U.S. Patent No. 11,862,664. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially similar despite wording differences.
Allowable Subject Matter
Claims 1–8, 11, 12, and 15–20 are allowable, subject to the Double Patenting rejections set forth above and the incorporation of any subject matter of rejected claims from which they may depend.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN CROCKETT whose telephone number is (571)270-3183. The examiner can normally be reached M-F 8am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Caley can be reached at 571-272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN CROCKETT/Primary Examiner, Art Unit 2871
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