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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/3/2025, 1/16/2025, 12/12/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a second part” in claims 1 and 16.
“a first connection part” and “a second connection part” in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2-15 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 2-15 recites “The foldable electronic device of claim …”. There is a lack of antecedent basis. Should claim 1 be “A foldable electronic device comprising: “ instead?
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, 5, 6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 9-13 of copending Application No. 19/028,732 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 19/028,732 teaches everything except difference in wording, such as first linear direction and second linear direction are the same as first straight line direction and second straight line direction. Copending Application No. 19/028,732 does not teach the second part is connected to a shaft, and the second rotation axis is provided by the shaft. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the second part is connected to a shaft, and the second rotation axis is provided by the shaft, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, using a shaft provides smooth and simple rotation on an axis, and this yields predictable results to one of ordinary skill in the art.
Claims 1-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/980,573 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/980,573 teaches everything except difference in wording, such as first unit, second unit, third unit, and fourth unit are the same as first part, second part, third part and fourth part.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al. (US 11,054,868; hereinafter “Lin”).
Regarding claim 1, Lin discloses an electronic device (Figs. 1-4C) comprising:
first (210, Fig. 3B) and second housings (230 and/or 220, Fig. 3B); and
a hinge module (100, Figs. 1A-1C) configured to foldably connect the first and second housings (as shown in Figs. 3A-4C),
wherein the hinge module comprises:
a first part (160, Fig. 1C) configured to be rotatable about a first rotation axis (120, Figs. 2A, 2B) and comprising a first pin rail (G2, Fig. 1C);
a second part (180, Fig. 1C) configured to be rotatable about a second rotation axis (relative to axis at P2, Figs. 2A-2C) parallel to the first rotation axis and spaced apart from the first rotation axis (as shown in Figs. 2A-2C);
a first bracket (150, Figs. 1C) connected to the first and second parts and fixed to the first housing; and
a first pin (P3, Fig. 1C) provided in parallel with the second rotation axis, disposed in the second part (180), and inserted into the first pin rail (see P3 dashed line to G2 as shown in Fig. 1C; also see Figs. 2A-2C),
wherein the first part and the first bracket are connected to each other and configured to be slidable in a first linear direction (linear portion of G2 at SP, not RP in Fig. 2B),
wherein the second part (180) and the first bracket (150) are connected to each other and configured to be slidable in a second linear direction (G1 direction, see Figs. 1C, 2A-2C) different from the first linear direction,
wherein the first part (160) and the first bracket (150) mutually slide and the second part (180) and the first bracket (150) mutually slide when an angle between the first and second housings is changed (as shown in Figs. 2A-2C), and
wherein a force or motion is transmitted between the first and second parts by an interaction between the first pin rail and the first pin when the angle between the first and second housings is changed (inherent as shown in Figs. 2A-4C).
Regarding claim 8, Lin discloses the foldable electronic device of claim 1, and Lin further discloses wherein the second part is connected to a shaft (shaft of P2, Fig. 1C) included in the hinge module, and the second rotation axis is provided by the shaft.
Claims 1, 4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ahn et al. (US 2017/0139663; hereinafter “Ahn”).
Regarding claim 1, Ahn discloses an electronic device (Figs. 1A-7) comprising:
first (112, 111a, Figs. 1B, 2) and second housings (113, 111b, Figs. 1B, 2); and
a hinge module (left and right 120 in Fig. 3) configured to foldably connect the first and second housings (as shown in Figs. 5-7),
wherein the hinge module comprises:
a first part (122, Fig. 3) configured to be rotatable about a first rotation axis (axis at 114a) and comprising a first pin rail (122b, Fig. 3);
a second part (123, Fig. 3) configured to be rotatable about a second rotation axis (axis at 123a, Fig. 3) parallel to the first rotation axis and spaced apart from the first rotation axis (as shown in Fig. 3);
a first bracket (121, Fig. 3) connected to the first and second parts and fixed to the first housing; and
a first pin (pin of 123a, Fig. 3) provided in parallel with the second rotation axis, disposed in the second part (123), and inserted into the first pin rail (122b),
wherein the first part and the first bracket are connected to each other and configured to be slidable in a first linear direction (linear portion of 122b),
wherein the second part (123) and the first bracket (121) are connected to each other and configured to be slidable in a second linear direction (vertical direction of 121b in Fig. 3) different from the first linear direction,
wherein the first part (122) and the first bracket (121) mutually slide and the second part (123) and the first bracket (121) mutually slide when an angle between the first and second housings is changed (Figs. 5-7), and
wherein a force or motion is transmitted between the first and second parts by an interaction between the first pin rail and the first pin when the angle between the first and second housings is changed (inherent as shown in Figs. 5-7).
Regarding claim 4, Ahn discloses the foldable electronic device of claim 1, and Ahn further discloses a flexible display module (10, Fig. 2), wherein the flexible display module comprises: a third display area (portion of 10 above 114 at middle section of 100 in Fig. 2) positioned to correspond to the hinge module; a first display area extending from the third display area and disposed in the first housing (such as left 10 in Fig. 2); and a second display area (such as right 10 in Fig. 2) extending from the third display area and disposed in the second housing.
Regarding claim 8, Ahn discloses the foldable electronic device of claim 1, and Ahn further discloses wherein the second part (123) is connected to a shaft (shaft of 123a) included in the hinge module, and the second rotation axis is provided by the shaft.
Allowable Subject Matter
Claims 2-3, 5-7 and 9-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and double patenting rejection in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WU whose telephone number is (571)270-7974. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen Parker can be reached at (303)297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WU/ Primary Examiner, Art Unit 2841
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