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
This application is a continuation of U.S. application No. 18/523,628, filed on 11/29/2023, now US patent No. 12,279,385; which is a continuation of U.S. application 18/157,502, filed on 01/20/2023, now US patent No. 11,889,642; and which is a continuation of U.S. application No. 17/349,050, filed on 06/16/2021, now US patent No. 11,602,062; and which is a continuation of U.S. application No. 16/744,564, filed on 01/16/2020, now US patent No. 11,071,218.
Information Disclosure Statement
The IDS filed on 03/07/2025 has been considered and made of record.
Oath/Declaration
The oath/declaration filed on 03/07/2025 is acceptable.
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 18 of U.S. Patent No. 11,889,642. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, The [US 11,889,642] discloses an electronic device, comprising:
a housing configured to move between expanded and unexpanded states (Claim 18, lines 2-3);
a display in the housing, wherein the display is configured to wrap around a portion of the housing in the unexpanded state (Claim 18, lines 4 and 6-8); and
a support structure that supports the display in the expanded state, wherein the support structure is configured to wrap around the portion of the housing in the unexpanded state (claim 18, lines 11-14).
These features as claimed are disclosed in the claim 18 of the US patent No. 11,889,642.
Claims 1, 3, 4, 7, 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5 and 6 of U.S. Patent No. 12,279,385. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, The [US 12,279,385] discloses an electronic device, comprising:
a housing configured to move between expanded and unexpanded states (Claim 1, lines 2-3);
a display in the housing, wherein the display is configured to wrap around a portion of the housing in the unexpanded state (Claim 1, lines 4 and 6-8); and
a support structure that supports the display in the expanded state, wherein the support structure is configured to wrap around the portion of the housing in the unexpanded state (claim 1, lines 9-12).
These features as claimed are disclosed in the claim 1 of the US patent No. 12,279,385.
Regarding claim 3, The [US 12,279,385] discloses wherein the support structure extends from the support members of the housing (Claim 2 of the US 12,279,385).
This feature as claimed is disclosed in the claim 2 of the US patent No. 12,279,385.
Regarding claim 4, The [US 12,279,385] discloses wherein the support members comprise interdigitated support members (Claim 3 of the US 12,279,385).
This feature as claimed is disclosed in the claim 3 of the US patent No. 12,279,385.
Regarding claim 7, The [US 12,279,385] discloses wherein the support structure comprises linked segments (Claim 4 of the US 12,279,385).
This feature as claimed is disclosed in the claim 4 of the US patent No. 12,279,385.
Regarding claim 8, The [US 12,279,385] discloses wherein the portion of the housing is a curved portion of the housing (Claim 5 of the US 12,279,385).
This feature as claimed is disclosed in the claim 5 of the US patent No. 12,279,385.
Regarding claim 9, The [US 12,279,385] discloses wherein the portion of the housing is a roller (Claim 6 of the US 12,279,385).
This feature as claimed is disclosed in the claim 6 of the US patent No. 12,279,385.
Claims 10, 11, 12, 13, 14 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 12, 13, 14, 15 and 17 of U.S. Patent No. 11,602,062. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 10, The [US 11,602,062] discloses an electronic device, comprising:
a display configured to move between a first configuration with an expanded viewable area and a second configuration with an unexpanded viewable area (Claim 11, lines 2-5);
first and second housing portions configured to slide relative to each other as the display moves between the first and second configurations (Claim 11, lines 6-8);
a support structure coupled to the first housing portion and overlapped by the display, wherein the support structure comprises an elongated member that extends from the first housing portion and is received by a recess in the second housing portion (Claim 11, lines 9-14);
a first set of nesting members interposed between the first and second housing portions (Claim 11, lines 15-16); and
a second set of nesting members interposed between the first and second housing portions, wherein the support structure is interposed between the first and second sets of
nesting members (Claim 11, lines 17-21).
These features as claimed are disclosed in the claim 11 of the US patent No. 11,602,062.
Regarding claim 11, The [US 11,602,062] discloses wherein the first and second sets of nesting members extend along respective first and second opposing sides of the electronic device (Claim 12 of the US 11,602,062).
This feature as claimed is disclosed in the claim 12 of the US patent No. 11,602,062.
Regarding claim 12, The [US 11,602,062] discloses wherein the first and second sets of nesting members telescope as the display moves between the first and second configurations (Claim 13 of the US 11,602,062).
This feature as claimed is disclosed in the claim 13 of the US patent No. 11,602,062.
Regarding claim 13, The [US 11,602,062] discloses wherein the support structure supports the display in the first and second configurations (Claim 14 of the US 11,602,062).
This feature as claimed is disclosed in the claim 14 of the US patent No. 11,602,062.
Regarding claim 14, The [US 11,602,062] further discloses an additional support structure coupled to the second housing portion, wherein the support structure has protrusions and the additional support structure has additional recesses that retain the protrusions when the first and second housing portions slide relative to each other (Claim 15 of the US 11,602,062).
These features as claimed are disclosed in the claim 15 of the US patent No. 11,602,062.
Regarding claim 15, The [US 11,602,062] discloses a tensioner coupled to first housing portion and to the display (Claim 17 of the US 11,602,062).
This feature as claimed is disclosed in the claim 17 of the US patent No. 11,602,062.
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 1-6, 8-9 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. [US 2018/0102072].
Regarding claim 1, Lee et al., disclose an electronic device (100, figures 1-11), comprising:
a housing (20 & 30, figures 1 and 3-5) configured to move between expanded state (figure 5) and unexpanded states (figures 1 and 3);
a display (10, figures 1-11) in the housing, wherein the display is configured to wrap around a portion of the housing in the unexpanded state (figure 3); and
a support structure (at least two elongated side members disposed both sides of a housing portion 30, figures 3 and 5) that supports the display in the expanded state, wherein the support structure is configured to wrap around the portion of the housing in the unexpanded state (figure 3).
Regarding claim 2, Lee et al., disclose wherein the housing further comprises a first portion (20, figure 5), a second portion (30, figure 5), and support members that extend between the first portion and the second portion (figure 5).
Regarding claim 3, Lee et al., disclose wherein the support structure extends from the support members of the housing (figure 5).
Regarding claim 4, Lee et al., further disclose wherein the support members comprise interdigitated support members (figure 5).
Regarding claim 5, Lee et al., further disclose wherein the support members comprise elongated support members (figure 5).
Regarding claim 6, Lee et al., disclose wherein the elongated support members are formed on the first portion of the housing and are received in corresponding recess in the second portion of the housing (figure 5).
Regarding claim 8, Lee et al., disclose wherein the portion of the housing is a curved portion of the housing (23, figure 8).
Regarding claim 9, Lee et al., disclose wherein the portion of the housing is a roller (RO, figure 7).
Regarding claim 17, Lee et al., disclose an electronic device (100, figures 1-11), comprising:
a housing (20 & 30, figures 1 and 3-5) comprising first and second housing portions (20 and 30, figure 5), wherein the first housing portion is configured to slide relative to the second housing portion between expanded state (figure 5) and unexpanded states (figures 1 and 3);
a display (10, figures 1-11) in the housing, wherein the display is configured to wrap around part of the second housing portion the unexpanded state (figures 1 and 3); and
an elongated support member (at least two elongated side members disposed both sides of a housing portion 30, figures 3 and 5) coupled to the second housing portion, wherein the elongated support member extends from the second housing portion to the first housing portion and supports the display in the expanded state (figures 5-6).
Regarding claim 18, Lee et al., further disclose a support member that supports the display in the expanded state (325, figures 4-6), wherein the support member is configured to wrap around the part of the second housing portion in the unexpanded state (23, figure 8).
Regarding claim 19, Lee et al., disclose additional support members coupled to the first housing portion, wherein the elongated support member is interdigitated with the additional support members (322/325, figure 6).
Regarding claim 20, Lee et al., further disclose telescoping support members that extend between the first and second housing portions, wherein the elongated support member is interposed between the telescoping support members (figures 4-6).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., in view of Shin [US 2018/0188778].
Regarding claim 7, Lee et al., disclose the claimed invention except for wherein the support structure comprises linked segments.
Shin discloses an electronic device (figures 1-5) comprising a housing (170 & 120, figures 1-5), wherein the housing comprises first and second housing portions (170, figures 1-5) configured to slide relative to each other through a support structure (177, figures 1-5), and wherein the support structure comprises linked segments (323, figure 7).
It would have been to one of ordinary skill in the art at the time the invention was made to use a support structure design of Shin, in an electronic device of Lee et al., in order to provide strongest, vibration-resistant, and easy repairable structures for heavy electric loads in an electronic device.
Allowable Subject Matter
Claim 16 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
The claim 16 discloses the combination features of “an additional support structure that supports the display in the first configuration, wherein the additional support structure is configured to wrap around a part of the first housing portion in the second configuration.” These features, in conjunction with other features, as claimed in the claim 10, were neither found to be disclosed, nor suggested by the prior art of records.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hung S. Bui whose telephone number is (571)272-2102. The examiner can normally be reached on M-F: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen L. Parker can be reached on (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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/HUNG S. BUI/Primary Patent Examiner, 2841/2800
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