DETAILED ACTION
Reissue
The present reissue application is directed to US 9,939,677 B2 (“677 Patent”). 677 Patent issued on April 10, 2018 with claims 1-13 from application 13/997,112, which is a 371 of PCT/KR2001/006213 filed on August 23, 2011, and claims priority to KR 10-2010-0133431 filed on December 23, 2010.
This application was filed on December 9, 2024. Since this date is after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Furthermore, the present application is being examined under the pre-AIA first to invent provisions.
This application is a continuation reissue of reissue applications 16/845,508 (now US RE49,101 E) and 17/833,860 (now US RE50,234 E).
This application presents broadened claims, which are permitted because Applicant filed these claims and demonstrated an intent to broaden within two years of the issue date of 677 Patent (see claims filed in parent reissue application 16/845,508).
The most recent amendment was filed on December 9, 2024. The status of the claims is:
Claims 1-11: Amended
Claim 12 and 13: Canceled
Claims 14-22: New
This is a first, non-final action.
References and Documents Cited in this Action
677 Patent (US 9,939,677 B2)
Tokita (US 2009/0129058 A1)
US RE49,101 E
US RE50,234 E.
Summary of Rejections and Objections in this Action
Examiner objects to the specification amendment.
Claims 1-11 are rejected under 35 U.S.C. 251
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. RE49,101 E.
Claims 1, 3, 5, 6, and 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 18-20, and 14-17, respectively, of U.S. Patent No. RE50,234 E.
Summary of the Claims
677 Patent is directed to a back light unit including a plurality of light sources on a printed circuit board. Claim 1, the only independent claim, is representative:
1. A light unit comprising:
a printed circuit board;
a plurality of light emitting devices on the printed circuit board;
a resin layer laminated on the printed circuit board and covering the plurality of light emitting devices;
a diffusion plate disposed on an upper surface of the resin layer; and
an optical pattern disposed between the diffusion plate and the resin layer,
wherein the resin layer is disposed between the printed circuit board and the diffusion plate,
wherein the optical pattern comprises a first pattern and a second pattern,
wherein the second pattern has a pattern shape different from a pattern shape of the first pattern,
wherein the first pattern comprises: a first part in direct physical contact with the second pattern and vertically overlapped with the second pattern, and a second part not vertically overlapped with the second pattern,
wherein the first part is disposed in a light emission direction of the plurality of light emitting devices,
wherein the first pattern and the second pattern are disposed in different layers,
wherein a first outer side of the first pattern is disposed farther outward than is the second pattern in a first direction orthogonal to the light emission direction, and
wherein a portion of the optical pattern is disposed to vertically overlap a first light emitting device of the plurality of light emitting devices.
Certificate of Correction in Parent Reissues
This reissue application is a continuation reissue of US RE49,101 E and US RE50,234 E.
The prior reissue patents have issued without the cross reference to this reissue application of the family which is required pursuant to 37 CFR 1.177(a). Accordingly, Applicant must request Certificates of Correction in the prior reissue patents to insert language in the first sentence of the specification, such as:
“Notice: More than one reissue application has been filed for the reissue of patent US 9,939,677 B2. The reissue applications are US RE49,101 E, US RE50,234 E, and 18/973,981.”
Specification Amendment
Examiner objects to the amendment to the specification filed on December 9, 2024 because the text of the new cross reference paragraph must be completely underlined. See MPEP 1453 and 37 CFR 1.1173.
Claim Rejections - 35 USC § 251
Claims 1-11 are rejected under 35 U.S.C. 251 because the reissue application is not correcting an error in the original patent. Claims 1-11 of 677 Patent have been superseded by the previous reissue US RE49,101 E. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application. Applicant should cancel claims 1-11. The subject matter recited in claims 1-11 may be presented as additional new claims. See MPEP 1451 I for further details (the discussion therein of numbering claims in a divisional reissue application applies also to this continuation reissue).
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 1-11 and 14-22 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.
Claims 1-11 are indefinite because the invention of claims 1-11 is not particularly pointed out and distinctly claimed. Claims 1-11 present one coverage in prior reissue application US RE49,101 E and another in the present reissue application. This is inconsistent. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application. See MPEP 1451 I for further details (the discussion therein of numbering claims in a divisional reissue application applies also to this continuing reissue).
Claims 14-22 depend on claim 1 and are also definite for the same reason as parent claim 1.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. RE49,101 E.
Regarding independent reissue claim 1, although the claim is not identical to dependent claim 20 of US RE49,101E (which includes all the limitations of claim 1 of US RE49,101 E), they are not patentably distinct from each other because they recite substantially the same scope. Both claims recite a light unit comprising a printed circuit board; a plurality of light emitting devices on the printed circuit board; a resin layer laminated on the printed circuit board and burying/covering the plurality of light emitting devices; a diffusion plate disposed on an upper surface of the resin layer; and an optical pattern disposed between the diffusion plate and the resin layer. Both claims further recite the optical pattern comprises a first pattern and a second pattern; the second pattern has a pattern shape different from a pattern shape of the first pattern; the first pattern comprises: a first part in direct physical contact with the second pattern and vertically overlapped with the second pattern, and a second part not vertically overlapped with the second pattern; the first part is disposed in a light exit/emission direction of the plurality of light emitting devices; and a portion of the optical pattern is disposed to vertically overlap a light emitting device.
Claims 1, 3, 5, 6, and 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 18-20, and 14-17, respectively, of U.S. Patent No. RE50,234 E.
Regarding independent reissue claim 1, although the claim is not identical to claim 1 of US RE50,234 E, they are not patentably distinct from each other because they recite substantially the same scope. Both claims recite a light unit comprising: a printed circuit board; a plurality of light emitting devices on the printed circuit board; a resin layer laminated on the printed circuit board and burying/covering the plurality of light emitting devices; a diffusion plate disposed on an upper surface of the resin layer; and an optical pattern disposed between the diffusion plate and the resin layer. Both claims further recite the optical pattern comprises a first pattern and a second pattern; the second pattern has a pattern shape different from a pattern shape of the first pattern; wherein the first pattern comprises: a first part in direct physical contact with the second pattern and vertically overlapped with the second pattern, and a second part not vertically overlapped with the second pattern; the first part is disposed in a light exit/emission direction of the plurality of light emitting devices; and a portion of the optical pattern is disposed to vertically overlap a light emitting device.
Dependent reissue claims 3, 5, 6, and 14-17 recite the same or substantially the same limitations as dependent claims 18-20 and 14-17, respectively, of US RE50,234 E, and are also rejected on the ground of nonstatutory double patenting as being unpatentable over those claims of U.S. Patent No. RE50,234 E.
Allowable Subject Matter
Claims 1-11 and 14-22 may contain allowable subject matter if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) and 35 U.S.C. 251 set forth in this Office action and if Applicant overcomes the double patenting rejections in this Office action.
Tokita teaches, among other things, a light unit including a substrate 12, light emitting devices 14, and a resin layer 16 (Figures 3 and 9; paragraph [0120]). Tokita teaches a dot pattern 24 and light semi-permeable portion 32 disposed in a light emission direction (Figures 9 and 10; paragraphs [0117]-[0133]).
The prior art does not specifically disclose or fairly teach a light unit including the combination of all of the elements, steps, and limitations recited in claims 1-11 and 14-22 (as well as the claims may be understood as discussed above with respect to 35 U.S.C. 112(b) as discussed above), particularly including
an optical pattern disposed between the diffusion plate and the resin layer, comprising a first pattern and a second pattern,
wherein the second pattern has a pattern shape different from a pattern shape of the first
pattern,
wherein the first pattern comprises: a first part in direct physical contact with the second
pattern and vertically overlapped with the second pattern, and a second part not vertically
overlapped with the second pattern,
wherein the first part is disposed in a light emission direction of the plurality of light
emitting devices,
wherein the first pattern and the second pattern are disposed in different layers, and
wherein a first outer side of the first pattern is disposed farther outward than is the second pattern in a first direction orthogonal to the light emission direction.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this reissue application is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 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 is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
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 https://www.uspto.gov/patents/laws/interview-practice.
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Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to Examiner Christina Leung at telephone number (571) 272-3023; the Examiner’s supervisor, SPE Patricia Engle at (571) 272-6660; or the Central Reexamination Unit at (571) 272-7705.
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
Conferees:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
/Patricia L Engle/SPRS, Art Unit 3991