DETAILED ACTION
I. ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 18/955,691 (“691 Reissue Application” or “instant application”). Based upon a review of the instant application, the actual filing date is Nov. 21, 2024 (“691 Actual Filing Date”). Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this reissue application proceeding. The 691 Reissue Application contained, among other things: reissue application declarations by assignee and a preliminary amendment.
The 691 Reissue Application is a reissue application of U.S. Patent No. 11,302,257 (“’257 Patent”) titled “SHIFT REGISTER, DRIVING METHOD THEREOF, GATE DRIVING CIRCUIT, AND DISPLAY DEVICE.” The application for the 257 Patent was filed on Mar. 9, 2020 and assigned by the Office US patent application number 16/645,733 (“733 Application”) and issued on Apr. 12, 2022 with claims 1-20 (“Originally Patented Claims”).
Because the parent reissue application of the instant reissue application was filed within two years after the ‘257 Patent issued, broadening of claim scope is allowed. See MPEP 1401 and 35 USC 251. The notice of instant reissue application was published in Official Gazette on Jan. 7, 2025.
II. OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the ‘257 patent itself and its prosecution history, the Examiner finds that she cannot locate any ongoing proceeding before the Office or current ongoing litigation. Also based upon the Examiner's independent review of the ‘257 Patent itself and the prosecution history, the Examiner finds that she cannot locate any previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction.
III. PRIORITY CLAIMS
Based upon a review of the instant reissue application and ‘257 Patent, the Examiner finds that the instant reissue application claims the following priority:
The instant reissue application is a continuation reissue application of 17/889,180, which is a reissue application of 16/645,733, matured into the ‘257 Patent, which is a national stage entry of PCT/CN2019/070966 filed on Jan. 9, 2019.
The instant reissue application does not claim any foreign priority.
Because the effective filing date of the instant application is on or after March 16, 2013, the present application is being examined under the AIA first to file provisions.
IV. PRELIMINARY AMENDMENT
The 691 Reissue Application contains a preliminary amendment (“691 Preliminary Amendment”). The 691 Preliminary Amendment contained, among other things, “REMARKS” (“2024 Remarks”), a “Reissue Application Declaration by the Assignee” (“2024 Reissue Dec”), an Information Disclosure Statement (“IDS”), “AMENDMENTS TO THE SPECIFICATION” (“2024 Specification Amendment”) and “AMENDMENTS TO THE CLAIMS” (“2024 Claim Amendment”). The IDS has been considered. The 2024 Claim Amendment canceled claims 1-20 and added new claims 21-40.
V. STATUS OF CLAIMS
In light of the above:
Claims 21-40 are currently pending (“Pending Claims”).
Claims 21-40 are currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 21-40 are rejected over non-statutory double patenting and 35 USC § 251.
VI. CLAIM INTERPRETATION
A. Lexicographic Definitions
After careful review of the original specification and unless expressly noted otherwise by the Examiner, the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes the Patent Owner is not their own lexicographer. See MPEP § 2111.01 IV.
B. 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Patent Owner, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how she is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. Processor: "1: one that processes 2. a: (1) a computer (2) The part of a computer system that operates on data – called also a central processing unit b : a computer program (as a compiler) that puts another program into a form acceptable to the computer " Microsoft Press Computer Dictionary , 2nd Edition, Microsoft Press, Redmond, WA, 1994.
2. Configuration: “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
3. Circuit: “(C) An arrangement of interconnected components that has at least one
input and one output terminal, and whose purpose is to produce at the output terminals a signal that is a function of the signal at the input terminals.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
4. Register: “(1) (electronic computation) A device capable of retaining information, often that contained in a small subset (for example, one word), of the aggregate information in a digital computer.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
5. blanking “(1) (general) The process of making a channel or device noneffective for a desired interval. (2) (television) The substitution for the picture signal, during prescribed intervals, of a signal whose instantaneous amplitude is such as to make the return trace invisible.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
6. shift register “ (1) A register in which the stored data can be moved to the right or left. (C) [20], [85] (2) A register in which the data bits can be shifted in one direction or both; for example, if the contents are 11010010 and the register is shifted to the right, the result is x1101001; where x is a zero, one, or the bit shifted off the right end, depending on the type of shift register. See also: circulating register.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
C. Claims Invoking 35 U.S.C. § 112 (f)
In what follows, the Examiner takes the primary position that at least one functional phrase of claims 21-40 invoke 35 U.S.C. § 112 (f). For support of the Examiners position the Examiner notes the following appropriate 3-prong analysis. See MPEP §2181 I. See Williamson v. Citrix Online, L.L.C., 792 F.3d 1339 (2015).
Functional Phrases
1) Functional Phrase #1
wherein the blanking input circuit is configured to provide a blanking input signal from a blanking input signal terminal to a first control node,
wherein the blanking input circuit comprises a first transistor, wherein a first electrode of the first transistor is coupled to the blanking input signal terminal, and
wherein a second electrode of the first transistor is coupled to the first control node;
-- as recited in Claims 21, 34 and 40.
2) Functional Phrase #2
wherein the blanking pull-down circuit is configured to provide a voltage of the second control node to a pull-down node according to a first clock signal,
wherein the blanking pull-down circuit comprises a third transistor and a third leakage-preventive transistor;
wherein a control electrode of the third transistor is coupled to the first clock signal terminal, wherein a first electrode of the third transistor is coupled to the second control node, and wherein a second electrode of the third transistor is coupled to a first electrode of the third leakage- preventive transistor; a control electrode of the third leakage-preventive transistor is coupled to the first clock signal terminal; and a second electrode of the third leakage-preventive transistor is coupled to the pull-down node
-- as in Claims 21 and 34 and 40.
3) Functional Phrase #3
wherein the shift register circuit is configured to provide a shift signal via a shift signal output terminal and a first drive signal via a first drive signal output terminal according to a voltage of the pull-down node,
wherein the shift register circuit comprises a reset circuit, wherein the reset circuit comprises a fifth transistor and a fifth leakage-preventive transistor,
-- as in claims 21 and 34 and 40
4) Functional Phrase #4
wherein the output circuit is configured to output the shift signal from the shift signal output terminal and output the first drive signal from the first drive signal output terminal according to the voltage of the pull-down node.
-- as in claim 26.
5) Functional Phrase #5
wherein the first control circuit is configured to control a voltage of a pull-up node according to the voltage of the pull-down node;
as in claim 29..
6) Functional Phrase #6
wherein the pull-up circuit is configured to provide a second voltage from a second voltage terminal to the pull-down node, the shift signal output terminal, and the drive signal output terminal according to the voltage of the pull-up node;
-- as in claim 29..
Functional Phrase #7
wherein the second control circuit is configured to control the voltage of the pull- up node according to the first clock signal and the voltage of the first control node, and control the voltage of the pull-up node according to the display input signal.
-- as in claim 29.
3-Prong Analysis Prong (A):
As an initial matter, the Examiner finds that Functional Phrases #1-#7 (FP#1-#7) do not use the phrase “means for.” The issue arising under Prong (A) then becomes whether or not the claimed “circuit,” etc., is a generic placeholder for the phrase ‘means for,’ i.e., being applied as a generic means for performing the function. See MPEP 2181 I (C).
First, the Examiner has reviewed the specification and concludes that the specification does not provide a description sufficient to inform a person having ordinary skill in the art (“PHOSITA”) that the above terms denotes sufficient structure to perform the corresponding claimed functions. The Examiner finds that A PHOSITA understands that an ordinary “circuit,” cannot perform the corresponding entire claimed function. Other structural elements such as algorithms are needed.
Second, the Examiner has reviewed both general dictionaries and subject matter specific dictionaries for evidence to establish that each of the terms “circuit,” has achieved recognition as noun denoting structure. Based upon a review of these dictionaries, the Examiner is unable to locate sufficient evidence that each of “circuit,” has achieved recognition as a noun denoting structure for performing the claimed functions. However, the Examiner finds that A PHOSITA understands that ordinary “circuit,” cannot perform the corresponding entire claimed functions.
Finally, the Examiner has reviewed the prior art of record for evidence that each of “circuit,” has an art-recognized structure to perform the corresponding claimed functions. Based upon a review of the prior art now of record, the Examiner is unable to locate sufficient evidence to establish that each of the terms “circuit,” has an art-recognized structure to perform the claimed functions.
Accordingly the Examiner concludes that each of the phrases “circuit,” as set forth in Functional Phrases #1-#8 is being used as a generic term for a structure performing the functions, and therefore a place holder for the phrase "means for" performing the recited functions. Because “circuit,” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that Functional Phrases #1-#8 (FP#1-#8) meets invocation Prong (A).
3-Prong Analysis Prong (B):
The functions associated with Functional Phrases #1-#7 are:
to provide a blanking input signal from a blanking input signal terminal to a first control node
- Function of FP#1.
to provide a voltage of the second control node to a pull-down node according to a first clock signal.
- Function of FP#2.
to provide a shift signal via a shift signal output terminal and a first drive signal via a first drive signal output terminal according to a voltage of the pull-down node.
- Function of FP#3.
to output the shift signal from the shift signal output terminal and output the first drive signal from the first drive signal output terminal according to the voltage of the pull-down node.
- Function of FP#4.
to control a voltage of a pull-up node according to the voltage of the pull-down node;
- Function of FP#5.
to provide a second voltage from a second voltage terminal to the pull-down node, the shift signal output terminal, and the drive signal output terminal according to the voltage of the pull-up node;
- Function of FP#6.
to control the voltage of the pull- up node according to the first clock signal and the voltage of the first control node, and control the voltage of the pull-up node according to the display input signal.
- Function of FP#7.
3-Prong Analysis Prong (C):
Based upon a review of the entire Functional Phrases #1-#7, the Examiner finds that Functional Phrase #1-#7 do not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrases #1-#7. In fact, the Examiner finds that Functional Phrases #1-#7 recites some structure but not sufficient structure for performing the claimed function.
Because Functional Phrases #1-#7 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrases #1-#7 meets invocation Prong (C).
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622
918
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501
625
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-Figs. 6A and 6B of the 257 patent.
Corresponding Structure for the above Functional Phrases
Based upon a review of the original disclosure, the Examiner finds that the corresponding structure for the above functional phrases. The results of the findings are indicated below:
Functional Phrase #1
wherein the blanking input circuit is configured to provide a blanking input signal from a blanking input signal terminal to a first control node,
wherein the blanking input circuit comprises a first transistor; wherein a first electrode of the first transistor is coupled to the blanking input signal terminal, and wherein a second electrode of the first transistor is coupled to the first control node;
wherein the blanking control circuit comprises a second transistor, wherein a control electrode of the second transistor is coupled to the first control node, and wherein a second electrode of the second transistor is coupled to the second control node.
- As shown in FIGS. 3A and 3B, the blanking input circuit 100 includes a first transistor M1. A control electrode of the first transistor M1 is coupled to the second clock signal terminal to receive the second clock signal CLKB. A first electrode of the first transistor M1 is coupled to the blanking input signal terminal to receive the blanking input signal STU1. A second electrode of the first transistor M1 is coupled to the first control node H. In an embodiment, when the second clock signal CLKB is at a low level, the first transistor M1 is turned on, such that the blanking input signal can be provided to the first control node H to control the voltage of the first control node H.
col. 11, lines 5-15, the 257 Patent.
The corresponding structure of FP#1 is described associated with 100 in Figs. 3A-3B and in col. 11, lines 5-15 and 110 in Figs. 6A-6B of the 257 Patent. Because Applicant indicates the invention corresponds to the embodiment of Fig. 6A, the corresponding structure for FP#1 is 110 in Fig. 6A.
Functional Phrase #2
wherein the blanking pull-down circuit is configured to provide a voltage of the second control node to a pull-down node according to a first clock signal, wherein the blanking pull-down circuit comprises a third transistor and a third leakage-preventive transistor;
wherein a control electrode of the third transistor is coupled to the first clock signal terminal, wherein a first electrode of the third transistor is coupled to the second control node, and wherein a second electrode of the third transistor is coupled to a first electrode of the third leakage- preventive transistor; a control electrode of the third leakage-preventive transistor is coupled to the first clock signal terminal; and a second electrode of the third leakage-preventive transistor is coupled to the pull-down node
The corresponding structure of FP#2 is described associated with 300 in Figs. 3A-3B and in col. 11, lines 35-46 and 310 in Figs. 6A-6B of the 257 Patent. Because Applicant indicates the invention corresponds to the embodiment of Fig. 6A, the corresponding structure FP#2 is 310 in Fig. 6A.
Functional Phrase #3
wherein the shift register circuit is configured to provide a shift signal via a shift signal output terminal and a first drive signal via a first drive signal output terminal according to a voltage of the pull-down node,
wherein the shift register circuit further comprises a twenty-ninth transistor, wherein a control electrode of the twenty-ninth transistor is coupled to the pull-down node, a first electrode of the twenty-ninth transistor is coupled to a first voltage terminal, and a second electrode of the twenty-ninth transistor is coupled to the second electrode of the third transistor.
The corresponding structure of FP#3 is described associated with Figs. 6A-6B and in col. 16, line 52-col. 17, line 35 of the 257 Patent. In other words, the corresponding structure of FP#3 is the circuits, not including 110, 200 and 310, in Figs. 6A and 6B.
4) Functional Phrase #4
wherein the output circuit is configured to output the shift signal from the shift signal output terminal and output the first drive signal from the first drive signal output terminal according to the voltage of the pull-down node.
The corresponding structure of FP#4 is 500 in Fig. 2 and described in col. 11, line 56-col. 12, line 16 or 500 in Figs. 6A-6B.
5) Functional Phrase #5
wherein the first control circuit is configured to control a voltage of a pull-up node according to the voltage of the pull-down node;
The corresponding structure of FP#5 is 600 in Fig. 2 and Figs. 3A-3B and 6A-6B and described in col. 9, lines 13-33, col. 12, line 24-col. 13, line 21 of the 257 Patent.
6) Functional Phrase #6
wherein the pull-up circuit is configured to provide a second voltage from a second voltage terminal to the pull-down node, the shift signal output terminal, and the drive signal output terminal according to the voltage of the pull-up node;
The corresponding structure of FP#6 is 700 in Fig. 2 and Figs. 3A-3B and 710 in Figs. 6A-6B and described in col. 9, lines 34-44, col. 13, line 22-col. 14, line 24 of the 257 Patent.
7) Functional Phrase #7
wherein the second control circuit is configured to control the voltage of the pull- up node according to the first clock signal and the voltage of the first control node, and control the voltage of the pull-up node according to the display input signal.
The corresponding structure of FP#7 is 800 in Fig. 2 and Figs. 3A-3B and 810 in Figs. 6A-6B and described in col. 9, lines 45-63, col. 14, line 25-col. 15, line 13 of the 257 Patent.
vi) Analysis of dependent claims and other claims
Claims 22-33 depend on claim 21 and claims 35-39 depend on claim 34 and Functional Phrases #1-#3 in these also invoke 35 U.S.C. § 112 (f) because insufficient structure is recited in these claims. Therefore analysis of the corresponding structures for Functional Phrases #1-#3 modified by claims 22-33 and 35-39 are the same as identified above for Functional Phrases #1-#3 respectively.
VII. CLAIM OBJECTION
A. Explanation of Changes:
Claims 21-40 are objected to because the 691 Preliminary Amendment does not comply with 37 C.F.R. § 1.173(c). See MPEP § 1453(V)(D). Claims 22-40 are amended. Applicant has not sufficiently pointed out the support for the change.
37 C.F.R. § 1.173(c) states:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
Applicant indicated “Support for the amendments is provided throughout the specification, claims, and drawings, for instance, at least at Fig. 6A” in 2024 Remarks. However this is not sufficient as the support because the support has to be specific on the changes made to the claims.
B. New claims are not underlined in 2024 Claim Amendment
Claims 21-40 are objected to as not complying with 37 C.F.R. §1.173.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), and a “Sequence Listing XML” (§ 1.831(a)) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
The Examiner has reviewed the 2024 Claim Amendment and finds the following:
Claims 21-40 are new. However the new claims in 2024 Claim Amendment are not underlined.
While Examiners note these improper amendment instances, Examiners further require Applicant fully review the entire amendment for compliance with 37 C.F.R. §1.173.
Applicant is notified that any amendment or subsequent amendment to the specification and/or claims must comply with 37 C.F.R. §1.173, which sets forth the manner of making amendments in reissue applications. For example, matter deleted should be enclosed with brackets and added subject matter should be identified by underlining. Furthermore, all amendments must be made with respect to the patent. Finally, claims must have proper status identifiers.
Appropriate correction is required.
C. Note
In order to facilitate compact prosecution, the Examiner has, this one time only, entered the 2024 Claim Amendment. Nevertheless, should Applicant(s) submit any subsequent claim amendment that does include an explanation of support, the Examiner may indicate that the claim amendment(s) are improper and therefore not completely responsive.
VIII. SPECIFICATION
37 CFR 1.177 states:
(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
The Examiner finds that there are at least two reissue applications filed for the 257 Patent, i.e., 17/889,180 and 18/955,691. The specification is objected to because the specification has been not amended to state more than one application for the reissue of the 257 patent has been filed.
IX. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
A. US Patent 11,568,790
Claims 21, 34 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,568790 (“the 790 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 21, 34 and 40 and claim 2 of the 790 Patent recite common subject matter;
Whereby claims 21, 34 and 40, which recite the open ended transitional phrase “comprising” does not preclude the additional elements recited by claim 2 of the 790 Patent, and
Claims 21 and 40 recite “a shift register comprising a blanking input circuit, a blanking control circuit, and a blanking pull-down circuit and a shift register circuit” which are met by the “compensation selection circuit,” “holding circuit,” “blanking input circuit,” and “output circuit” and “first control circuit.” Claim 34 recites “a shift register of the N shift registers comprising a blanking input circuit, a blanking control circuit, and a blanking pull-down circuit and a shift register circuit.” Although different names are used for the same component in Figs. 6A-6B of the 257 Patent and Fig. 7 of the 790 Patent, the circuits in claims 21, 34 and 40 of the instant reissue application are met by that of claim 2 of the 790 Patent.
Therefore claims 21, 34, and 40 are obvious in view of claim 2 of the 790 Patent.
B. US Patent 11,024,235
Claims 21, 34 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11024235 (“the 235 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 21, 34 and 40 and claim 3 of the 235 Patent recite common subject matter;
Whereby claims 21, 34 and 40, which recite the open ended transitional phrase “comprising” does not preclude the additional elements recited by claim 3 of the 235 Patent, and
Claims 21 and 40 recite “a shift register comprising a blanking input circuit, a blanking control circuit, and a blanking pull-down circuit ” which are met by the “blanking input circuit” of claim 3. Claim 34 recites “a shift register of the N shift registers comprising a blanking input circuit, a blanking control circuit, and a blanking pull-down circuit and a shift register circuit.” The “shift register” of claims 21, 34 or 40 is met by “output circuit” and “display input circuit” and the “shift register unit” of the 235 Patent. Although different names are used for the same component in Figs. 6A-6B of the 257 Patent and Fig. 8 of the 235 Patent, the circuits in claims 21, 34, and 40 of the instant reissue application are met by that of claim 3 of the 235 Patent. See also Fig. 8 of the 235 Patent.
Therefore claims 21, 34 and 40 is obvious in view of claim 3 of the 235 Patent.
C. US Patent 12,039,949
Claims 21, 34 and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent 12,039,949 (“the ‘949 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 21, 34 and 40 and claim 4 of the ‘949 Patent recite common subject matter;
Whereby claims 21, 34 and 40, which recite the open ended transitional phrase “comprising” does not preclude the additional elements recited by claim 4 of the ‘949 Patent, and
Although different names are used for the same component in Figs. 6A-6B of the 257 Patent and Fig. 9 of the ‘949 Patent, the circuits in claims 21, 34 and 40 of the instant reissue application are met by that of claim 4 of the ‘949 Patent.
Therefore claims 21, 34 and 40 are obvious in view of claim 4 of the ‘949 Patent.
D. US Patent 11,176,871
Claims 21, 34 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent 11,176,871 (“the ‘871 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 21, 34 and 40 and claim 5 of the ‘871 Patent recite common subject matter;
Whereby claims 21, 34 and 40, which recite the open ended transitional phrase “comprising” does not preclude the additional elements recited by claim 5 of the ‘871 Patent, and
Although different names are used for the same component in Figs. 6A-6B of the 257 Patent and Fig. 9 of the 041 Application, the circuits in claims 21, 34 and 40 of the instant reissue application are met by that of claim 5 of the ‘871 Patent. See Fig. 13 of the 871 Patent.
Therefore claims 21, 34 and 40 are obvious in view of claim 5 of the ‘871 Patent.
E. US Patent RE50,290
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-20 of U.S. Patent RE50,290 (“the ‘290 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 21, 34 and 40 and claims 1, 15 and 20 of the ‘290 Patent recite common subject matter; Also claims 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, and 39 of the instant reissue application and claims 1, 14, 2, 3, 5, 6, 7, 8, 9, 10, 11, 12, 16, 1, 17, 18, and 19 of the ‘290 Patent recite common subject matter respectively.
Whereby claims 21-40, which recite the open ended transitional phrase “comprising” does not preclude the additional elements recited by claims 1-3 and 5-20 of the ‘290 Patent, and
The circuits or method in claims 21-40 of the instant reissue application are met by that of claims 1-20 of the ‘290 Patent. See Figs. 6A-6B of the ‘290 Patent.
Therefore claims 21-40 are obvious in view of claims 1-3 and 5-20 of the ‘290 Patent.
X. CLAIM REJECTIONS - 35 USC § 251
A. Defective Oath and Declaration
The Reissue Application Declaration by the Inventor filed on Nov. 21, 2024 is defective because the same errors were cited to be corrected compared to the parent reissue application. See MPEP 1414.II.(D). A different error must be corrected for the instant reissue application. Therefore a new error statement is required and the new error statement can be in the Remark section in the forthcoming response.
In view of above, claims 21-40 are rejected based on defective oath and declaration under 35 USC 251.
XI. ALLOWABLE SUBJECT MATTER
Claims 21-40 are would be allowable if a terminal disclaimer is filed to overcome the double patenting rejection set forth above in Section VIII in this Office action and a corrected error statement is submitted.
The following is a statement of reasons for the indication of allowable subject matter:
For independent claims 21 and 34, the prior art on the record including Zhang et al (US Patent App. Pub. 2018/0211606) and Noh et al (US Patent 10,783,820) fails disclose the corresponding structure of FP#3 of claims 21, 34 and 40 (see the Section of Claim Interpretation above) together with the corresponding structure of FP#1 and FP#2 of claims 21, 34 and 40.
For claim 40, FP#3 invokes § 112 (f). The prior art on the record including Zhang et al (US Patent App. Pub. 2018/0211606) and Noh et al (US Patent 10,783,820) fails disclose the corresponding structure of FP#3 together with the method steps recited in claim 40.
XII. CONCLUSION
A. Reissue Application Reminders
Disclosure of other proceedings. Applicants 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 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 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.
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.”
B. Suggested Examples: Preventing Both New Matter Rejections & Objections to the Specification in the Future
Applicants are respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicants decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicants to choose the precise claim language of the amendment in order to ensure that the amended language complies with 35 U.S.C. § 112 (a).
Independent of the requirements under 35 U.S.C. § 112 (a), Applicants are also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicants amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicants are encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicants choose to amend the specification, Applicants are reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicants have any questions on this matter, Applicants are encouraged to contact the Examiner via the telephone number listed below.
C. Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to YUZHEN GE whose telephone number is (571)272-7636. The Examiner can normally be reached on Monday-Thursday 8:00-6:00.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/Yuzhen Ge/
Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the 257 Patent, or in the prior art.
Prosecution Insights