DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
This application seeks to reissue U.S. Patent No. 9,678,382 (“the ‘382 patent”). This application is a continuing reissue application of application 17/403,382, which was a continuing reissue application of 16/440,343. This latter application was the first reissue application for the ‘382 patent. In a preliminary amendment, the applicant has canceled claims 1-19 of the ’382 patent and introduced new claims 20-39.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions. For reissue applications filed on or 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.
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 Patent No. 9,678,382 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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.
Claim Objection, Minor Informalities
Claim 22 recites “wherein the third region is wherein one selected from the pattern layers is disposed.” Judging by the limitations that precede this, it appears that the applicant intended for this to recite “wherein the third region is where[in] one selected from the pattern layers is disposed.”
Objection, 37 CFR 1.173 – Improper Amendment
This application is objected to because the amended specification does not comply with 37 CFR 1.173. All amendments to the specification “must be made by submission of the entire text of each added or rewritten paragraph with markings (single brackets and underlining) … Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined.” MPEP 1453(I). The applicant’s amendment to the specification does not show the added paragraph as underlined.
Objection, 37 CFR 1.175 – Defective Declaration
The declaration is objected to. The applicant has provided a copy of the declaration that was filed in the parent application 17/403,382. According to the error statement in the declaration, this reissue application is correcting the same error in the patent that was already corrected in the parent application, and is correcting it in the same way. This is not a sufficient error statement. See MPEP 1414(II), example (D). In addition, the applicant did not provide a statement in the remarks to “explain why the filing of the copy of the oath/declaration from the parent reissue application is sufficient.” MPEP 1451(II)(B).
Rejection, 35 USC § 251 – Recapture
Claims 20-39 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The recapture analysis involve a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
MPEP 1412.02(II).
Step 1: Claim 20 does not recite that “a part of the shielding pattern overlaps a part of the diffusion pattern in a vertical direction.” Claim 20 also does not require the resin layer to be “surrounding” the LED light sources. These limitations were present in the claims of the ‘382 patent, thus the reissue claims are broader than the patent claims. Analysis therefore proceeds to step 2.
Step 2: The limitation “a part of the shielding pattern overlaps a part of the diffusion pattern in a vertical direction” was added to claim 1 of the ‘382 patent in the 06/06/2016 and 01/03/2017 amendments in application 14/343,721. These amendments were made in direct reply to preceding Office actions, and were argued by the applicant as differentiating over the prior art that was cited in the examiner’s rejections. See the 06/06/2016 Remarks at 5-6 and the 01/03/2017 Remarks at 5-6. This limitation was therefore surrendered. See MPEP 1412.02(II)(B)(2).
In addition, the reissue claims do not require the resin layer to be “surrounding” the light sources. Claim 1 of the ‘721 application was amended to require this in the 06/06/2016 response. This amendment was made in response to the preceding Office action, but this added limitation not directly addressed in the remarks that accompanied this amendment. However, “[e]ven though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered.” MPEP 1412.02(II)(B)(2). Requiring the resin layer to be “surrounding” the light sources was therefore surrendered.
The above-quoted limitations were surrendered, and these limitations are absent from the claims of this reissue application. Analysis therefore proceeds to step 3.
Step 3: there has been no material narrowing of the claims relative to the surrendered subject matter, which has been omitted entirely. The claims therefore attempt to recapture claim scope that had previously been surrendered.
Claim Rejection – 35 USC § 251 – Defective Declaration
Claims 20-39 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
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 20-39 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 20 recites “a diffusion plate on the resin layer.” It is not clear what is required by reciting that the diffusion plate is “on” the resin layer. On its face, this language would appear to require direct contact between the diffusion plate and the resin layer. But this is not how this claim feature is described in the specification, which shows a “surface treatment layer 152” between the diffusion plate 150 and the resin layer 140. See e.g. Fig. 3 and its description. This surface treatment layer is not described as being optional. In addition, every discussion in the specification of one objecting being “on” another object shows those two objects in direct contact.
In light of the apparent mismatch between language in claim and the specification, it is not clear if the claim requires the diffusion plate to be directly “on” the resin layer, or merely above it in the vertical direction with a different layer between the two. Claims 21-39 depend from claim 20 and inherit this indefiniteness.
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 20-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-38 of U.S. Patent No. RE50289; claims 1-2, 4-5, 7-10, 12-13, 15, 17, and 19-26 of RE48690; claims 1, 12, and 14-30 of RE49101; claims 1 and 14-20 of RE50234; claims 1-13 of 9,939,677. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of this application recite only features that are found in the parent claims, or obvious variants thereof.
For example, claim 20 of RE50289 renders obvious the limitations that are found in claim 20 of this application. The “laminated” language of instant claim 20 is only an obvious variant of the limitations in claim 20 of the patent regarding the first, second, and third optical patterns. This “laminated” language also corresponds to the limitations in the other reference patents’ claims describing that the optical patterns “overlap.”
As another example, claim 1 of RE49101 does not explicitly recite that “areas of two pattern layers adjacent to each other in the pattern layers are different from each other.” But this claim does recite that “the second pattern has a pattern shape different from a pattern shape of the first pattern” and “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 recitation of this feature in instant claim 20 is only an obvious variant of this language in claim 1 of RE49101. The claims are obvious over the claims of RE50234 and 9,939,677 for similar reasons.
All other limitations that are found in instant claim 20, as well as the dependent claims of this application, find correlating subject matter in the claims of the reference patents.
Claims 20-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 9,964,844; claim 19 of 8,858,025; claims 1-17 of 9,482,889; claims 1-19 of 9,933,126; claims 1-19 of 9,627,595; claims 1-21 of 9,664,844; all in view of Jung, US 20110249215. The claims of the reference patents contain all limitations (or obvious variants) of the instant claims except that “areas of two pattern layers adjacent to each other in the pattern layers are different from each other.” But this is taught in Jung. See Jung Abstract, and Fig. 12 and its description. It would have been obvious to the POSITA to modify the claims of the reference patents to include this feature in Jung, the rationale being to improve optical characteristics of the backlight unit.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 20-26, 28-29, and 39 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Jung, US 20110249215.
Claim 20: Jung discloses a light unit, comprising:
a printed circuit board (Fig. 52: 210. See also ¶ 52.);
a plurality of light sources disposed on the printed circuit board (Fig. 52: 220 and ¶50.);
a resin layer disposed on the printed circuit board (Fig. 52: 230 and ¶ 62.);
a diffusion plate on the resin layer (Fig. 52: 280 and ¶ 249. See also the § 112(b) rejection of this claim language above.); and
a plurality of optical patterns disposed in each of regions between the diffusion plate and the resin layer (Fig. 52: 250.),
wherein each of the optical patterns comprises a plurality of pattern layers laminated from a lower surface of the diffusion plate toward an upper surface of the resin layer (Fig. 52: 252 and 253. See ¶¶ 107 and 119-121 for a discussion of these optical patterns.), and
wherein at least one of the pattern layers is configured to shield light emitted from the light sources (Fig. 52: layer 251 is a shielding film. See e.g. ¶ 97.), and
wherein areas of two pattern layers adjacent to each other in the pattern layers are different from each other (Figures 12-13 and 19-25 show embodiments where the layers of the light shielding pattern 250 have different areas. Jung describes that “the components of the backlight unit described in connection with FIGS. 6 to 55 may be combined with one another.” See ¶ 263. Therefore the POSITA would appreciate that the scope of the Jung disclosure includes using, for example, the configuration for the shielding pattern 250 that is shown in Fig. 12 in the Fig. 52 embodiment. This configuration anticipates claim 20.).
Claim 21: Jung discloses that each of the optical patterns is spaced apart from the upper surface of the resin layer (Fig. 52: layers 253 and 252 are spaced apart from the resin layer 230. In another embodiment, Fig. 52-53 and ¶¶ 249-250 show that the transparent layer 270 directly contacting resin layer 230. In this embodiment, light shielding patterns 250 are spaced apart from the upper surface of the resin layer.).
Claim 22: Jung disclose that the optical pattern includes a first region, a second region, and a third region, wherein the first region is where all the pattern layers are disposed, wherein the second region is where two selected from the pattern layers are disposed, and wherein the third region is wherein one selected from the pattern layers is disposed (See Fig. 24. In a light shielding pattern 250, patterns 251, 252, and 253 form the claimed first, second, and third regions, as shown in the annotated detail of Fig. 24 below:
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188
258
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As described in the rejection of claim 20 above, Jung describes that “the components of the backlight unit described in connection with FIGS. 6 to 55 may be combined with one another.” See ¶ 263. In light of this, the POSITA would conclude that in the Fig. 52 embodiment which uses a diffusing plate 280, Jung envisioned using “components of the backlight unit described in connection with” Fig. 24. That is, the scope of the Jung disclosure includes using the Fig. 24 light shielding pattern 250 in place of the light shielding pattern 250 that is depicted in Fig. 52. This embodiment anticipates claim 22.).
Claim 23: Jung discloses that a thickness of the first region is thicker than a thickness of the second region (Fig. 24 shows that a (horizontal) thickness of the first region is greater than that of the second.).
Claim 24: Jung discloses that the thickness of the second region is thicker than a thickness of the third region (Fig. 24 shows that a (horizontal) thickness of the second region is greater than that of the third.).
Claim 25: Jung discloses that each of the optical patterns is in direct physical contact with the lower surface of the diffusion plate (Fig. 52-53 and ¶¶ 249-250 – the transparent layer 270 is, in an embodiment, directly contacting resin layer 230. In this embodiment, light shielding patterns 250 are directly attached to the diffusing plate 280.).
Claim 26: Jung discloses that two pattern layers adjacent among the pattern layers are in physical contact (Fig. 12 and Fig. 52.).
Claim 28: Jung discloses that the plurality of pattern layers includes a first pattern layer on a lower surface of the diffusion plate, a second pattern layer on a lower surface of the first pattern layer, and a third pattern layer on a lower surface of the second pattern layer (Fig. 52-53 and ¶¶ 249-250 – the transparent layer 270 is, in an embodiment, directly contacting resin layer 230. In this embodiment, light shielding patterns 250 are directly attached to the diffusing plate 280.).
Claim 29: Jung discloses that the third pattern layer is spaced apart from the upper surface of the resin layer (In the embodiment described in the rejection of claim 28, there exists a transparent layer 270 between the resin layer and the third pattern layer, so these two elements are spaced apart from one another).
Claim 39: Jung discloses a reflection film disposed between the resin layer and the printed circuit board and having at least one reflection pattern, wherein each of the light sources is a LED light source and protrudes through a hole in the reflective film (¶ 67.).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 27 and 30-38 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jung.
Claim 27: Jung does not explicitly disclose that at least one of the pattern layers has a thickness in a range of from 4 µm to 100 µm. However, Jung discusses that film 252, which is one of the pattern layers, “may have a thickness that stops at least part of light from being transmitted to enhance reflection effects. The thickness of the reflection film 252 may be adjusted to provide a proper luminance of light.” Jung ¶ 84. Therefore POSITA would conclude that arriving a thickness in the claimed range amounted to no more than routine optimization of the thickness through experimentation. See MPEP 2144.05(II)(A). It would have been obvious to use a thickness within the claimed range in order to achieve the optimal luminance of light that is sought in Jung.
Claim 30: Jung does not disclose that at least one of the first pattern layer, the second pattern layer, and the third pattern layer has light shielding beads to shield light emitted from the light sources. The examiner in parent application 17/403,382 took official notice that this feature was well known in the art (see the 01/24/2024 non-final Office action at 45), and this assertion was not traversed by the applicant in the following response, rendering the asserted fact admitted prior art. See MPEP 2144.03(C). It would have been obvious to modify Jung to include such beads, the rationale being to provide greater control over the light blocking/diffusing properties of the layers.
Claim 31: Jung discloses that an area of the first pattern layer is larger than an area of the second pattern layer, wherein the first pattern layer overlaps the second pattern layer in a vertical direction perpendicular to the lower surface of the diffusion plate (Jung Fig. 12, Fig. 24, and Fig. 52.).
Claim 32: Jung discloses that each of the optical patterns includes a first region, a second region, and a third region, wherein the first region is formed of the first pattern layer, the second pattern layer, and the third pattern layer, wherein the second region is formed of two selected from the first pattern layer, the second pattern layer, and the third pattern layer, and wherein the third region is formed of one selected from the first pattern layer, the second pattern layer, and the third pattern layer (see rejection of claim 22).
Claim 33: Jung discloses that the first pattern layer is in direct physical contact with the lower surface of the diffusion plate (Fig. 52-53 and ¶¶ 249-250 – the transparent layer 270 is, in an embodiment, directly contacting resin layer 230. In this embodiment, light shielding patterns 250 are directly attached to the diffusing plate 280.).
Claim 34: Jung discloses that the second pattern layer is in direct physical contact with the first pattern layer (Fig. 12 and Fig. 52).
Claim 35: Jung discloses that the second pattern layer is in direct physical contact with the first pattern layer, wherein the third pattern layer is in direct physical contact with the second pattern layer.
Claims 36 and 38: see rejection of claim 27.
Claim 37: see rejection of claim 30.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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