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 .
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 1-3 and 6-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Nos. 12322329, 11817049, and 11501701. Please see the chart below for claim correspondence.
19/200629
USPN12322329
USPN11817049
USPN11501701
1
1
1
1
2
1
1
1
3
1
1
1
4
--
--
--
5
--
--
--
6
2
2
5
7
3
3
1
8
4
4
1
9
5
5
6
10
6
6
--
11
7
7
--
12
8
8
--
13
9
9
--
14
10
--
--
15
11
--
--
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The claims as shown above all recite similar features. It would have been obvious to one of ordinary skill in the art to use the claimed features of the reference application/patent to arrive at the instant claims, yielding predictable results and no more than one of ordinary skill in the art would expect from such an arrangement. Please see an example of claim language correspondence below.
19/200629
USPN 12322329
1. An electronic device, comprising: a layer comprising a first surface, a second surface opposite to the first surface and an opening penetrating from the first surface to the second surface;
1. An electronic device, comprising: a substrate comprising an opening;
a first light-emitting element and a second light-emitting element disposed corresponding to the first surface of the layer; and
a plurality of light-emitting elements disposed on the substrate, wherein the opening is located in a region between two of the plurality of the light-emitting elements; and
an optical sensor disposed corresponding to the second surface of the layer,
an optical sensor exposed by the opening in a normal direction of the electronic device and configured to receive a light through the opening;
wherein in a top view of the electronic device, the opening is overlapped with the optical sensor, and the first light-emitting element, the opening of the layer and the second light-emitting element are arranged in sequence along a first direction,
wherein, the plurality of light-emitting elements and the optical sensor are disposed on opposite sides of the substrate,
wherein in a cross-sectional view of the electronic device along the first direction, a width of the opening is greater than or equal to a first distance between the first surface and the second surface along a second direction perpendicular to the first direction and less than a second distance between the first light-emitting element and the second light-emitting element.
in a cross-sectional view of the electronic device, a width of the opening is greater than or equal to a length of the opening along the normal direction of the electronic device and less than a distance between the two of the plurality of the light-emitting elements, and the length of the opening is the same of a thickness of the substrate adjacent to the opening.
The rest of the claims listed above correspond in a similar manner as discussed above.
Regarding claim 2-3, reference U.S. Patent Nos. all claim a similar scope to that of claim 1 as discussed above. None of reference U.S. Patent Nos. specifically claim the various directional definitions as recited in claims 2-3. It would have been obvious to one of ordinary skill in the art to define the directions of alignment to the design of the display which would yield predictable results and no more than one of ordinary skill in the art would expect from such an arrangement.
Claims 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of each of U.S. Patent Nos. 12322329, 11817049, and 11501701 in view of Yueh et al. (hereinafter Yueh – US Doc. No. 20190212600).
Regarding claims 4-5, reference U.S. Patent Nos. all claim a similar scope to that of claim 1 as discussed above. None of reference U.S. Patent Nos. specifically claim that ‘the layer’ [read: substrate] is plastic or rigid.
Yueh discloses a display device comprising a substrate (Figure 11, element 11) with through holes (112), light emitting elements (13; see also paragraph 0029), and an optical device (22) wherein the substrate is both made of plastic (see paragraph 0028 – note the plastic substrates) and rigid (see paragraphs 0028 and 0059-0060 – note that multiple plastic materials which are valued for their rigidity such as PET or PMMA can be used as a supporting layer 23 which is directly on substrate 11).
It would have been obvious to one of ordinary skill in the art to combine the claims of reference U.S. Patent Nos. with the display substrate being composed of rigid plastic as disclosed by Ting, the combination yielding predictable results and no more than one of ordinary skill in the art would expect from such an arrangement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM R GIESY whose telephone number is (571)272-7555. The examiner can normally be reached Mon-Fri 8-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick Edouard can be reached at 5712727603. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM R. GIESY/ Primary Examiner, Art Unit 2622
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