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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application Nos. 14/546,508, 16/175,047, 16/998,197 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically, the disclosures of 14/546,508, 16/175,047, 16/998,197, 18/090,566, 18/520,781 make no mention of a first image sensor positioned over a front surface of the electronic device and a second image sensor positioned over a rear surface of the electronic device. Specifically, paragraph [0127] of the PG-PUB of 14/656,508 (US 2015/0146069), paragraph [0128] of the PG-PUB of 16/175,047 (US 2019/0075243), and paragraph [0128] of the PG-PUB of 16/998,197 (US 2021/0132653), paragraph [0128] of PG-PUB of 18/090,566 (US 2023/0195165), paragraph [0128] of the PG-PUB of 18/520,781 (US 2024/0094768) state that a plurality of image sensors may be provided. However, they only state that at least one may be provided in the region 201. There is no mention of one image sensor on a front side and another image sensor on a back side. In addition, paragraphs [0127], [0128], [0128] respectively refer to a different embodiment than is claimed. Specifically, paragraphs [0127], [0128], [0128], [0128], [0128] respectively refer to embodiment 2. The claims are directed exclusively to embodiment 4. With respect to embodiment 4, only paragraphs [0149], [0150], [0150], [0150], [0150] respectively mention an image sensor and they state “the image sensor 202…may be provided in the region 201.” This is not the same as stating that one image sensor is provided on the front of the device and another image sensor is provided on the rear.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first image sensor and first display region being positioned over a front surface of the electronic device and the second image sensor and second display region being positioned over a rear surface of the electronic device (claims 2, 4, 6) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2, 4, and 6, they recite that the first display region and first image sensor are positioned over a front surface of the electronic device and the second display region and second image sensor are positioned over a rear surface of the electronic device. There is no support for this feature in the specification as originally filed.
Specifically, paragraph [0128] of the PG-PUB of the instant application states that a plurality of image sensors may be provided. However, it only states that at least one may be provided in the region 201. There is no mention of one image sensor on a front side and another image sensor on a back side. In addition, paragraph [0128] refers to a different embodiment than is claimed. Specifically, paragraphs [0128] refers to embodiment 2. The claims are directed exclusively to embodiment 4. With respect to embodiment 4, only paragraph [0150] mentions an image sensor and it states “the image sensor 202…may be provided in the region 201.” This is not the same as stating that one image sensor is provided on the front of the device and another image sensor is provided on the rear.
Regarding claims 3, 5, 7, they depend from one of claims 2, 4, or 6 and are therefore rejected for the same reasons as stated above (see claims 2, 4, and 6).
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 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,846,963.
Regarding claim 6, claim 3 of ‘963 teaches all the limitations of instant claim 6.
Regarding claim 7, claim 3 of ‘963 teaches all the limitations of instant claim 7.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,443,222.
Regarding claim 6, claim 1 of ‘222 teaches all the limitations of instant claim 6.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,443,222 in view of Official Notice.
Regarding claim 7, claim 1 of ‘222 teaches all the limitations of instant claim 6 except that the support has a light-blocking property. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
The combination teaches an electronic device comprising two supports and a third support in between. In order for something to have “a light blocking property” it simply needs to transmit essentially no light. Plastics or metals that do not transmit light are well-known to be used for supports for electronics. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the undisclosed material used for the supports of claim 1 of ‘222 to achieve the predictable result of preventing stray light from effecting the image sensor or display electronics.
Claim Rejections - 35 USC § 102
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyashita et al. (US 2005/0270396 A1) hereinafter referenced Miyashita.
Regarding claim 6, Miyashita discloses
An electronic device comprising:
a first display panel (1; fig. 6) comprising a first display region;
a second display panel (2; fig. 5) comprising a second display region;
a non-display region (Region of casing surrounding display 1; fig. 6) surrounding the first display region;
a first image sensor (23; fig. 6);
a second image sensor (24; fig. 5);
a first support (214; fig. 5);
a second support (212; fig. 5) apart from the first support; and
a third support (213; fig. 5) comprising a region positioned between the first support and the second support,
wherein the first display region and the first image sensor are positioned over a front surface of the electronic device (fig. 6), and
wherein the second display region and the second image sensor are positioned over a rear surface of the electronic device (fig. 5).
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(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyashita in view of Official Notice.
Regarding claim 7, Miyashita discloses everything claimed as applied above (see claim 6), have a light-blocking property. However, Miyashita fails to explicitly disclose casings 212, 214, and hinge 213 have a light-blocking property. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Miyashita teaches a folding mobile phone comprising two casings and a hinge. In order for something to have “a light blocking property” it simply needs to transmit essentially no light. Plastics or metals that do not transmit light are well-known to be used for casings for electronics. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the undisclosed material used for the casings and hinge of Miyashita to achieve the predictable result of preventing stray light from effecting the camera or display electronics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M BERARDESCA whose telephone number is (571)270-3579. The examiner can normally be reached Mon-Thurs 10-8, Fri 10-2.
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, Sinh Tran can be reached at (571)272-7564. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PAUL M. BERARDESCA
Examiner
Art Unit 2637
/PAUL M BERARDESCA/Primary Examiner, Art Unit 2637 9/30/2026
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