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 .
Reissue Applications
This application seeks to reissue US Patent No. 11,398,189 (“the ‘189 patent”). In a preliminary amendment, the applicant has added claims 32-50.
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. 11,398,189 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.
Objection, 37 CFR 1.177(a)
The applicant has indicated in the application data sheet (“ADS”) that this application seeks to reissue US Patent No. 11,398,189, and is a continuation application of the previous reissue application 18/784,904. This relationship to the parent application and the patent is not clearly described in the amended specification that was filed on 08/17/2026, which appears to describe that this application is to reissue patent RE50,600 instead of US Patent 11,398,189. 37 CFR 1.177(a) states: “If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date.” The applicant is required to submit an amendment to the specification that conforms to the requirements of 37 CFR 1.177. See MPEP 1451 for example language to be used in the specification.
Objection, 37 CFR 1.173 – Improper Amendments
The application is objected to because the claims have not been amended in a manner consistent with 37 CFR 1.173(g), which requires amendments to be shown relative to the patent that is being reissued. The amendments to the claims and the specification that were filed with this application show changes relative to parent reissue patent RE50,600. But according to the ADS, this application seeks to reissue US Patent No, 11,398,189, not RE50,600. Amendments should be made relative to the ‘189 patent, not to RE50,600. Correction is required.
Objection, 37 CFR 1.175 – Defective Declaration
The declaration is objected to. The declaration states that “it is unclear whether claim 43 enlarges the scope of the claims in the Patent because some features are added … and some features are deleted.” The reissue claims are broader because they do not include various limitations that were recited in the claims of the ‘189 patent. “A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.” MPEP 1412.03(I). Therefore the reissue claims in this application are broader than the patent claims.
In a reissue application that seeks to enlarge claim scope, the declaration must “identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.” MPEP 1414(II). In addition, “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” Id.
A supplemental declaration (rather than a new error statement in a remarks document) must be submitted to overcome this objection.
Claim Rejection, 35 U.S.C. § 251
Claims 3-5, 8-14, and 20-50 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.
Claims 3-5 and 8-14 are also rejected under § 251. This is a continuation reissue application and seeks to reissue the ‘189 patent. This application presents claims 3-5, 8-14, and 20-31 as currently pending. But these claims were already reissued by the parent reissue application, and are present in patent RE50,600. “The same claim of the patent cannot, however, be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions…Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application.” MPEP 1451(II). Therefore these claims are rejected under § 251 for not correcting an error in the original patent, because the claims were superseded by the reissuance of the claims in the other reissue application. See id.
To overcome this rejection and the § 112(b) and statutory double patenting rejections below, the applicant is advised to cancel the ‘189 patent claims (claims 1-19) and present the new claims starting with claim 20. Please refer to the guidance in MPEP 1451(I).
Claim 45 is further rejected under § 251 for adding new matter to the patent. See the § 112(a) rejection of this claim below.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 3-5, 8-14, and 20-31 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 3-5, 8-14, and 20-31 of prior U.S. Patent No. RE50,600. This is a statutory double patenting rejection.
Nonstatutory 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 32-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. RE50,600 in view of Kim, US 20140346520. Claims 32-37 of this application recite only limitations found in the claims of the patent (or obvious variants thereof), except that this application claims that the dummy scan stage circuit is a not connected to any clock line. But this is disclosed in Kim (see Fig. 2; ¶¶ 50 and 86). It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify the patent claims with this feature in Kim, the rationale being to improve synchronization on the signal lines (see Kim ¶¶ 4-6).
Claims 38-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. RE50,600 in view of Chang in Shin (see the § 103 rejection of claim 38 below). Claims 38-45 of this application recite only limitations found in the claims of the patent (or obvious variants thereof), except that this application claims that the distances between emission stage circuits is different that distance between scan stage circuits in the second peripheral area. But this is rendered obvious by Chang and Shin. See the rejection of claim 38 below for a discussion of how these references arrive at this claim feature. It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify the patent claims with this feature, the rationale being to provide emissivity control while minimizing bezel width.
Claims 46-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. RE50,600 in view of Shin. Other than the “routing wires” limitation, claims 46-50 of this application recite only limitations found in the claims of the patent (or obvious variants thereof). But this is disclosed in Shin (see the prior art rejection of claim 46 below). It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify the patent claims with this feature in Shin, the rationale being to provide improved routing of wires from scan and data stage circuits in the display device.
Claim Rejections - 35 USC § 112(a)
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.
Claim 45 is 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.
Claim 45 recites that the second scan stage and second emission stage circuits are “alternately positioned in a line.” But claim 45 depends from claim 38, which requires that the distance between the second emission stage circuits is different than the distance between the second scan stage circuits. Claim 38 corresponds to the embodiment that is depicted in Fig. 8, while the claim 45 embodiment is depicted in Fig. 9B. The applicant’s description of support for the claim amendments confirms this. In the Fig. 9B embodiment that is recited in claim 45, the distances do not vary in the manner that is recited in claim 38. Therefore claim 45 recites an inconsistent combination of embodiments that is not described in the specification.
Claim Rejections - 35 USC § 112(b)
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 3-5 and 8-14 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. These claims present one coverage in this application, and another coverage in the parent reissue application that is inconsistent with the scope of the claims in this application. See MPEP 1451.
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 32 is rejected under 35 U.S.C. 103 as being unpatentable over Kim, US 20140346520 in view of Anzai, US 20090102758.
Claim 32: Kim discloses a display device (Fig. 1) comprising:
first scan stage circuits disposed in a first arrangement in a first peripheral area and connected to a clock line (Circuits SRC1 to SRCn+1 are arranged in a peripheral area of the display and are connected to clock lines. See Fig. 2 and ¶¶ 50-56. The lower stage circuits in Fig. 2 are equivalent to the claimed first scan stage circuits);
second scan stage circuits and connected to the clock line (The topmost stage circuits in Fig. 2 are equivalent to the second scan stage circuits. See Fig. 2 and ¶¶ 50-56.); and
a dummy scan stage circuit positioned adjacent to at least one of the second scan stage circuits (Dummy circuit DUM is positioned adjacent to SRC1, which is one of the second scan stage circuits. ¶ 50 and Fig. 2), and
wherein the dummy scan stage circuit is a not connected to any clock line (The dummy circuit does not connect to any clock line. Fig. 2; ¶¶ 50 and 86).
Kim does not disclose that the second scan stage circuits are disposed in a second arrangement different from the first arrangement in a second peripheral area.
Anzai discloses a display with first scan stages in a first arrangement in a first peripheral area (Fig. 5A: scan stages 4a are shown in a first (linear) arrangement in a first peripheral area) and second scan stage circuits disposed in a second arrangement different from the first arrangement in a second peripheral area (Fig. 5A: scan stages 4b, 4c, and 4d are in a second, non-linear arrangement in second peripheral area).
It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify Kim with these teachings in Anzai, the rationale being to provide a non-rectangular display shape. See Anzai ¶¶ 5-6, 9, and 13.
Claims 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Kim-Anzai in view of Shin, US 20160225306.
Claim 33: Kim-Anzai discloses that the first arrangement extends in a first direction, wherein the second arrangement is a curve that is adjacent to the first arrangement (see Anzai Fig. 3B and Fig. 5A).
Kim-Anzai does not disclose that the second scan stage circuits are arranged along the curve to form varying slopes with respect to the first direction, and a part of the second scan stage circuit of the second scan stage circuits that is farthest from the first peripheral area makes a largest angle with respect to a corresponding part of one of the first scan stage circuits.
But this is obvious in view of Shin. Shin discloses that scan stage circuits in a curved peripheral area are arranged to form varying slopes. See Shin Fig. 2
It would have been obvious to the skilled artisan before the effective filing date of the claimed invention to modify Kim-Anzai with these teachings in Shin. This POSITA would have recognized that this modification would have resulted in a smaller peripheral area width. When Kim-Anzai is modified in this way, the scan stage circuits that are arranged along the curved portion of the peripheral area (see e.g. Anzai Fig. 3B, which shows that circuits 104a are disposed in linear and curved regions) would take on the radial arrangement that is taught in Shin.
Claim 34: Kim-Anzai-Shin renders obvious that:
the first peripheral area comprises a first sub-peripheral area and a second sub-peripheral area, wherein the first sub-peripheral area is positioned between the second peripheral area and the second sub-peripheral area, the second sub-peripheral area has a curved shape, and sub-scan-stage circuits are disposed in the second sub-peripheral area, wherein the sub- scan-stage circuits are separated by a first distance that is different from a second distance that separates adjacent second scan stage circuits in the second peripheral area (When the embodiment shown in Anzai Fig. 2B is modified based on teachings in Shin, the scan stage circuits will be arranged in the manner claimed. The Anzai Fig. 2B embodiment has a first peripheral area with straight and curved sub-peripheral areas (that is, portion of circuit area 104a below the curved region at its top). The straight sub-peripheral area is between the curved sub-area and the second peripheral area (the top, curved portion of circuits 104a). When the scan stage circuits in the curved region are arranged radially (as in Shin), the circuits will be spaced as this claim recites. This corresponds to the disclosure in Fig. 10 of the ‘198 patent.)
Claims 38-41 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Chang, US 20180075809 in view of Shin.
Claim 38: Chang discloses a display device comprising:
a first peripheral area and a second peripheral area adjacent to the first peripheral area; first scan stage circuits and first emission stage circuits positioned in the first peripheral area and connected to first pixels; and second scan stage circuits and second emission stage circuits positioned in the second peripheral area and connected to a preselected set of second pixels (Chang Fig. 4 shows scan stage circuits 52 and emission stage circuits 54 in peripheral areas of the display. See ¶¶ 42-44. These stage circuits are present on left (first) and right (second) peripheral areas of the display. ).
Chang does not disclose that a first distance between the second emission stage circuits that are connected to the preselected set of second pixels is different from a second distance between the second scan stage circuits that are connected to the preselected set of second pixels.
But this is obvious in view of Shin. Shin discloses that when a display has a non-linear peripheral area, the driving circuits are arranged in a radial manner. See Shin Fig. 1-2 and ¶¶ 69-74. It would have been obvious to the skilled artisan at the time of the invention to modify Chang in this way, the rationale being to provide more flexibility in the shape of the display while minimizing bezel width.
When Chang is modified in this way, in curved peripheral areas, Chang’s scan stage circuits will be separated by a first distance, and the emission stage circuits will be separated by a greater distance. This is because the scan stage circuits are arranged adjacent to the pixel area, and the emission stage circuits are at a greater distance to the pixel area. See Chang Fig. 4 and ¶¶ 42-47. The result of modifying Chang to arrange its scan and emission stage circuits in the manner suggested by Shin would be that a first distance between the second emission stage circuits is different from a second distance between the second scan stage circuits, as required in this claim. Therefore claim 38 is obvious over Chang and Shin.
Claim 39: Chang-Shin discloses that the first distance is between a contact point of one of the second emission stage circuits and a first one of the emission routing wires and a contact point of another one of the second emission stage circuits and a second one of the emission routing wires, and wherein the second distance is between a contact point of one of the second scan stage circuits and a first one of the scan routing wires and a contact point of another one of the second scan stage circuits and a second one of the scan routing wires (Chang Fig. 4-5; Shin Fig. 2).
Claim 40: Chang-Shin discloses that the preselected set of second pixels comprises a first row of second pixels and a second row of second pixels (Shin Fig. 2).
Claim 41: Chang-Shin does not disclose: emission routing wires in the second peripheral area connecting the second emission stage circuits to the preselected set of second pixels, and one or more dummy scan stage circuits positioned in the second peripheral area between emission routing wires.
Claim 45: Chang-Shin discloses that the second scan stage circuits and the second emission stage circuits are alternately positioned in a line (Chang Fig. 4-5; each stage circuit is alternately positioned in its own line).
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.
Claims 46-47 and 49-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shin, US 20160225306.
Claim 46: Shin discloses a display device comprising:
first stage circuits positioned in a first peripheral area and connected to first lines in a first pixel area (Fig. 2: scan circuit 100 and its neighbors connect to lines SL in a first pixel area. See Fig. 2 and ¶¶ 69-72.); and
second stage circuits positioned in a second peripheral area and connected to second lines parallel to the first lines in a second pixel area (The unlabeled scan circuits in other portions of the device are second stage circuits in a second peripheral area. See Fig. 2 and ¶¶ 71-76. These circuits are connected to parallel lines in a second pixel area.);
routing wires in the second peripheral area connecting the second stage circuits to the second lines, the routing wires being non-parallel to the second lines (Connecting lines 110 connect the scan stage circuits to the second lines and are non-parallel to the second lines. Fig. 2 and ¶ 76.).
Claim 47: Shin discloses that the routing wires are arranged radially along a curve toward a virtual center point (See Fig. 2).
Claim 49: Shin discloses pixels connected to the second lines, wherein a number of pixels connected to each of the second lines varies according to position in the second pixel area having a curved boundary (See Fig. 1-2).
Claim 50: Shin discloses that lengths of the second lines in a second group are shorter than lengths of the first lines in a first group, wherein number of lines in the second group is the same as number of lines in the first group, and wherein number of pixels connected to the second group is smaller than number of pixels connected to the first group (This is implicit in Shin Fig. 1-2).
Claim 48 is rejected under 35 U.S.C. 103 as being unpatentable over Shin.
Claim 48: Shin does not disclose third stage circuits positioned in a third peripheral area and connected to third lines in a third pixel area, wherein the first pixel area is connected to the second pixel area and the third pixel area, and a pixel-less area at least partially separates the second pixel area from the third pixel area. But official notice is taken that display devices of this shape were well known in the art before the effective filing date of the claimed invention. For example, display screens having an area without pixels between second and third pixel areas were known. Therefore it would have been obvious to the skilled artisan to modify Shin in this way, the rationale being to provide a display that covers a larger portion of a device when certain areas are required for non-display hardware such as cameras, microphones, or other sensors. When Shin is modified in this way, it will include the features that are recited in this claim.
Allowable Subject Matter
Claims 35-37 are rejected above, but are otherwise in condition for allowance. See the 12/23/2024 non-final Office action in parent application 18/784,904 for reasons that these claims are allowable.
Claim 42-44 are also rejected to above, but recite allowable subject matter.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/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
