NON-FINAL REJECTION
1. This non-final rejection addresses reissue U.S. Application No. 19/291,444 (“instant application”). Examiners find the actual filing date of the instant application is August 5, 2025.
2. The instant application is a broadening reissue application of U.S. Patent No. 12,147,070, (“‘070 Patent”) issued Nov. 19, 2024. The ‘070 Patent was filed on Aug. 14, 2023 as U.S. Application No. 18/233,648 (“648 Application”), titled “DISPLAY BACKLIGHT UNIT WITH EDGELIT LIGHT GUIDE HAVING PROTRUDING PATTERN ON BOTTOM SURFACE”.
3. Examiners do not find any certificates of correction, ongoing/previous proceedings before the Office, or current ongoing litigation involving the ‘070 Patent.
4. The ‘070 Patent issued with claims 1-11 (“Patented Claims”). In the amendment filed Oct. 15, 2024 ("AUGUST 2025 CLAIM AMENDMENTS"), claims 12-20 are added.
5. Claims 1-20 are pending and examined and are grouped as follows:
claims 1-8;
claim 9-11;
claims 12-17; and
claim 18-20.
Priority Claims
6. The instant application is claiming foreign priority to KR 10-2022-0167635 filed December 5, 2022.
7. The presumed effective filing date of the instant application is Dec. 5, 2022, which is the filing date of the ‘648 Application.
35 USC §251 - Original Patent Requirement (“OPR”)
8. Claims 12-20 are rejected under 35 U.S.C. 251 for not being the same invention as that disclosed as being the invention in the original patent. See MPEP 1412.01; United States Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ6 (1942); Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH. 771 F.3dl354, 112 USPQ2d 1865 (Fed. Cir. 2014); and Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346. 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019).
Under MPEP 1412.01, Examiners review the reissue application to determine whether the original patent requirement is satisfied, by considering the following factors:
A. the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. §112(a) is satisfied;
B. nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
C. the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
As to (A), Examiners find claims 12-20 satisfy §112(a).
As to (B), Examiners find nothing in the original patent specification indicates an intent not to claim the subject matter of the claims (i.e., claims 12-17: “light shielding pattern” and claims 18-20: “3rd light source package”) presented in the reissue application .
As to (C), Examiners find claims 12-20 are NOT clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features. Specifically, the only embodiment disclosed is the embodiment shown in Examiner Annotated figure 1 below.
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To satisfy the original patent requirement where a new invention is sought by reissue, “…the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention" Antares Pharma Inc., V. Medac Pharma Inc, and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). Here, Antares's original patent (U.S. Patent 7,776,015) claimed jet injection devices. On reissue, Antares broadened its claims to cover any “injection device.”
The C.A.F.C. commented as follows:
“‘[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification’ . . . [when] it was nonetheless clear that the invention disclosed in the original patent required the presence [of the element omitted in the reissue claims].” (Emphasis added.)
In other words, all embodiments disclosed by the original Antares patent were directed to jet injection devices; there was no express disclosure of an injection device that was not a jet injection device.
Also, prominently discussed in the M.P.E.P. is Forum US, Inc, v. Flow Valve, LLC. 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019). Here, unlike its original claims, Forum’s reissue claims did not include “arbors”. The C.A.F.C. concluded that ‘‘nowhere do the written description or drawings disclose that arbors are an optional feature of the invention”. Thus, like Antares, the original patent requirement was not met because Forum was attempting to claim subject matter for which there was no express disclosure in the original patent specification.
The M.P.E.P. also discusses Ex parte Sandwick. Appeal No. 2018-008369, (PTAB July 23, 2019). Here, the original patent described fabrication methods that all included casting. Nowhere was casting mentioned as optional. Once again, the Applicant was rebuffed by the original patent requirement since there was no disclosure of a fabrication method that did not include casting. This was the holding despite the fact that one skilled in the art would understand that techniques other than casting were readily available.
Antares, Forum, and Sandwick are all commonly characterized by a failure of the original patent specification to expressly describe the broadened versions of embodiments represented by the reissue claims. In Antares, there was no express description of a non-jet injection device. In Forum, there was no express description of an embodiment without arbors. In Sandwick, there was no express description of fabrication without casting. While the written description requirement may have been satisfied in each case, the original patent requirement was not.
In this case, the claims of the present reissue application are like those of Antares, Forum, and Sandwick in that the claims of the present reissue application do not find express support in the original patent disclosure of an embodiment without a “light shielding pattern” (claims 12-17) and/or a “3rd light source package” (claims 18-20). Irrespective of whether one skilled in the art would understand that a “light shielding pattern” and/or a “3rd light source package” is an optional limitation of the described embodiments, nowhere in the ‘070 Patent do the written description or drawings disclose that “light shielding pattern” and/or a “3rd light source package” is an optional limitation of the invention. In other words, the 35 U.S.C. §251 requires more than a skilled artisan’s ability to infer that the embodiment claimed on reissue was described in the specification of the original patent. There must be an “express disclosure” of the “exact embodiment claimed on reissue.” Antares, 771 F.3d at 1363. Here, the ‘070 Patent specification does not clearly and unequivocally disclose an embodiment without a “light shielding pattern” and/or a “3rd light source package.” Thus, the original patent requirement is not met because reissue claims 12-20 are directed to embodiments for which there was no express disclosure in the original patent specification.
Reissue Declaration
9. Claims 1-20 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251. See 37 CFR 1.175.
The description of the error is as follows:
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As to the first error, i.e., new claim 12 is broader than patent claim 1 by removing “a light shielding pattern.” Because removing the limitation “a light shielding pattern,” triggers an OPR rejection, this error cannot be the basis for this reissue.
As to the second error, i.e., new claim 18 is broader than patent claim 9 by removing “a 3rd light source package.” Because removing the limitation “a 3rd light source package,” triggers an OPR rejection, this error cannot be the basis for this reissue.
As such, the reissue oath/declaration filed with this application is defective because the errors relied upon to support the reissue application are not errors upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
Allowable Subject Matter
10. While not in condition for allowance, claims 1-20 contain allowable subject matter.
The closest prior art is US 2023/0152614 filed Mar. 11, 2021 to He et al. (“He”).
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As to claims 1-8, the prior art does not disclose or make obvious “the light path control pattern including a light shielding pattern configured to control the light emitted from the 2nd backlight unit to be emitted towards the display panel with a narrow viewing angle“ in combination with the other limitations of the claims.
As to claims 9-11, the prior art does not disclose or make obvious “a 2nd backlight unit including a 3rd light source package…a controller configured to: in response to turning both of the 1st light source package and the 2nd light source package on and turning the 3rd light source package off, display one or more images in the 1st area and the 2nd area with a wide viewing angle based on a share viewing mode, and in response to turning both of the 1st light source package and the 2nd light source package off and turning the 3rd light source package on, display one or more images in the 1st area and the 2nd area with a narrow viewing angle based on a privacy viewing mode, wherein the wide viewing angle has a wider viewing angle than the narrow viewing angle“ in combination with the other limitations of the claims.
As to claims 12-17, the prior art does not disclose or make obvious “the 1st backlight unit includes:…a 1st light guide plate disposed between the 1st light source package and the 2nd light source package, the 1st light guide plate including patterns that protrude from a bottom surface of the 1st light guide plate, and wherein each of the patterns of the 1st light guide plate includes at least one inclined surface that faces toward the 1st light source package or the 2nd light source package“ in combination with the other limitations of the claims.
As to claims 18-20, the prior art does not disclose or make obvious “a 1st backlight unit including a plurality of light source packages; a 2nd backlight unit including another light source package; and a controller configured to: in response to selectively turning on at least one of the plurality of light source packages of the 1st backlight unit and selectively turning off the another light source package of the 2nd backlight unit, display one or more images in the 1st area and the 2nd area with a wide viewing angle based on a share viewing mode, and in response to selectively turning off at least one of the plurality of light source packages of the 1st backlight unit and selectively turning on the another light source package of the 2nd backlight unit, display one or more images in the 1st area and the 2nd area with a narrow viewing angle based on a privacy viewing mode“ in combination with the other limitations of the claims.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEANDRA M HUGHES whose telephone number is (571)272-6982. The examiner can normally be reached Generally M-Th 8AM-6PM.
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, Hetul Patel can be reached at 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
Conferees:
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
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