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 .
Election/Restrictions
Applicant’s election of Species O, drawn to Fig. 25, claims 1-6, 8-16, and 19-20 in the reply filed on 11/21/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7 and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because:
Some reference characters mingle with the lines, contrary to the requirement in 37 CFR 1.84(p)(3), which recites “Numbers, letters, and reference characters … should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines.” See S and D, for example.
Some letters, numerals, and reference characters do not measure at least 1/8 inch in height, contrary to the requirement in 37 CFR 1.84(p)(3), which recites “Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height.” See Fig. 14 and Fig. 35, for example.
Fewer than all lines are “sufficiently dense and dark, and uniformly thick and well-defined” as required by 37 CFR 1.84(l). See lead lines for K1 and K2, for example.
Some reference characters are indistinct due to crowding. See “333425” and “173610” in Fig. 1, for example.
Reference characters are unnecessarily underlined.
Views are not “grouped together and arranged on the sheet(s) without wasting space” as required by 37 CFR 1.84(h). The Examiner suggests enlarging at least some drawings to occupy more of the available space on the sheets.
Sheet numbers (“1/27”, “2/27”, etc.) are not “larger than the numbers used as reference characters to avoid confusion” as required by 37 CFR 1.84(t).
In Fig. 25, it is unclear where the lead line for 36 points.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The product by process limitations in these claims are directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessman, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al, 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process limitations or steps, which must be determined in a “product by process” claim, and not the patentability of the process limitations. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not. Note that the applicant has the burden of proof in such cases, as the above case law makes clear.
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 16 and 19 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.
Claim 16 recites “the pixel openings” in the penultimate line. There is insufficient antecedent basis for this limitation in the claims.
Other rejected claim(s) is/are rejected by virtue of dependency from at least one indefinite claim.
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 1 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipates the instant claim.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipates the instant claim.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipates the instant claim.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipates the instant claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because there is no invention in changing the shape of known parts, when the functioning of the apparatus is not changed by the reshaping. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). In this case, the record is devoid of evidence of unexpected results due to the recited shape.
Moreover, the Examiner finds that the recited shape was predictable before the effective filing date.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to arrive at the recited shape in the course of routine design choice. The rationale is as follows: one of ordinary skill in the art would have had reason to try any known shape, including the claimed shape, in the absence of criticality.
Claim 16, to the extent understood, is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipates the instant claim, to the extent understood.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12236030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim anticipates the instant claim, to the extent understood.
Allowable Subject Matter
Claims 2-3, 8-9, 11-15, and 20 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
Information regarding the status of published or unpublished applications may be obtained from 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julie Anne Watko whose telephone number is (571)272-7597. The examiner can normally be reached Monday-Tuesday 9AM-5PM, Wednesday 10:30AM-5PM, Thursday-Friday 9AM-5PM, and occasional Saturdays.
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, Ke Xiao can be reached at 571-272-7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
JULIE ANNE WATKO
Primary Examiner
Art Unit 2627
/Julie Anne Watko/Primary Examiner, Art Unit 2627
01/20/2026