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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications 18/312594, 17/861255, 17/020864, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 3. The display device according to claim 2, further comprising:
an adhesive between the polarizer and the top surface of the second substrate.
Claim 4. The display device according to claim 2, wherein:
the polarizer is electrically connected to the second substrate.
Claim 5. The display device according to claim 4, wherein the connection member provides the electrical connection between the polarizer and the second substrate.
Figure 11 depicts a polarizer (OD2/PL2) on the top surface of the second substrate (20). However, support could not be located in the rest of the disclosure for the limitations of claims 3-5. Accordingly, claims 3-5 are not entitled to the benefit of the prior application.
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 and 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-4 of U.S. Patent No. 12147129. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the 129 Patent teaches every limitation of claim 1 of the instant application. Claim 1 of the patent additionally specifies that the second substrate comprises a first transparent conductive film, and therefore the pad portion is claimed to comprise a second rather than first transparent conductive film, however all corresponding limitations are equivalent. Claims 3 and 4 of the 129 Patent respectively teach every limitation of claims 7 and 8 of the instant application in a corresponding manner.
Claims 2-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12147129 in view of Ono (U.S. PGPub 2016/0004122).
Regarding claim 2, claims 1-2 of the 129 Patent do not teach a polarizer bonded to a top surface of the second substrate.
Ono teaches a first substrate comprising a first area and a second area (Fig. 1, 12/12c, [0052]) and a second substrate comprising a substrate end portion located at a boundary between the first area and the second area, overlapping the first area (Fig. 2, 11, [0046]),
wherein the first substrate comprises a pad portion, a terminal, and a wiring line connecting the pad portion and the terminal in the second area (Fig. 1, 15, 13, [0059]-[0060]),
a connection member connecting the pad portion and the second substrate (17, [0055]-[0060]), and a polarizer bonded to a top surface of the second substrate (18, [0046]-[0048]).
Therefore it would have been obvious to a person having ordinary skill in the art to combine the teachings of Ono with the 129 Patent such that the device comprises a polarizer bonded to a top surface of the second substrate for the purpose of providing a polarization plate for a liquid crystal display device (Ono, [0027]).
Regarding claim 3, the combination of the 129 Patent and Ono teaches an adhesive between the polarizer and the top surface of the second substrate (Ono, [0050]).
Regarding claim 4, the combination of the 129 Patent and Ono teaches wherein the polarizer is electrically connected to the second substrate (Ono, [0048]-[0049], [0059]-[0063]).
Regarding claim 5, the combination of the 129 Patent and Ono teaches wherein the connection member provides the electrical connection between the polarizer and the second substrate (Ono, [0048]-[0049], [0059]-[0063]).
Regarding claim 6, the combination of the 129 Patent and Ono teaches every limitation of claim 6 (129 Patent, claim 2).
Conclusion
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/ALIA SABUR/Primary Examiner, Art Unit 2812
