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 – Statutory
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 1 and 2 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 3 and 4 of prior U.S. Patent No. 11,929,010 (resulting from parent application 17/600,905). See the following table. This is a statutory double patenting rejection.
US 19/408,754
US 11,929,010
1. A method of populating a system (receiver) substrate with micro devices, comprising
arranging the micro devices in a cartridge;
extracting at least one parameter for at least one of the micro devices in the cartridge; and
selecting and arranging the cartridges to populate the system substrate so that the parameter extracted for adjacent cartridges is within a predefined threshold.
3. A method of populating a system (receiver) substrate with micro devices, the method comprising:
arranging the micro devices in a cartridge;
extracting at least one parameter for at least one of the micro devices in the cartridge; and
selecting and arranging the cartridges to populate the system substrate so that the parameter extracted for adjacent cartridges is within a predefined threshold.
2. A method of populating a system (receiver) substrate micro devices comprising
arranging microdevices in a cartridge;
extracting at least a distribution map for one parameter for the micro devices in the cartridge; and
selecting and arranging the cartridges to populate the system substrate so that the distribution map for at least one of the parameters forms a continuous map with a step within a defined threshold between the map of the cartridges associated with the corresponding adjacent areas on the system substrate.
4. A method of populating a system (receiver) substrate micro devices, the method comprising:
arranging microdevices in a cartridge;
extracting at least a distribution map for one parameter for the micro devices in the cartridge; and
selecting and arranging the cartridges to populate the system substrate so that the distribution map for at least one of the parameters forms a continuous map with a step within a defined threshold between the map of the cartridges associated with the corresponding adjacent areas on the system substrate.
Double Patenting – Nonstatutory
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 3 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,512,040 (resulting from parent application 18/430,857). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). See the following table.
US 19/408,754
US 12,512,040
3. A method to calculate compensation value for variation in micro-devices transferred from different cartridges into system substrate comprising:
using a micro device position to fetch the cartridge parameters; and
using the cartridge parameters along with micro device value to calculate the compensation value.
1. A method to calculate a compensation value for variation in micro-devices transferred from different cartridges into system substrate comprising:
using a micro device position to fetch cartridge parameters;
using the cartridge parameters along with a micro device value to calculate the compensation value; and
performing compensation for a plurality of the cartridge parameters using blocks in series or parallel.
4. The method of claim 3, wherein
the micro device value is converted into a brightness value and the cartridge parameters are passed to a compensation block where it converts the brightness value into compensation value.
2. The method of claim 1, wherein
the micro device value is converted into a brightness value and the cartridge parameters are passed to a compensation block where it converts the brightness value into compensation value.
Allowable Subject Matter
Claims 1 and 2 would be allowable if rewritten or amended to overcome the Statutory Double Patenting rejection set forth in this Office action.
Claims 3 and 4 would be allowable if rewritten or amended to overcome the Nonstatutory Double Patenting rejection set forth in this Office action, or upon the filing of a proper Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, either alone or in combination, fails to teach or fairly suggest:
a. In claim 1, the steps of “extracting at least one parameter for at least one of the micro devices in the cartridge; and selecting and arranging the cartridges to populate the system substrate so that the parameter extracted for adjacent cartridges is within a predefined threshold”, in combination with all the remaining limitations in each claim. See also section 4a of the Office action mailed 02 November 2023 in parent application 17/600,905.
b. In claim 2, the steps of “extracting at least a distribution map for one parameter for the micro devices in the cartridge; and selecting and arranging the cartridges to populate the system substrate so that the distribution map for at least one of the parameters forms a continuous map with a step within a defined threshold between the map of the cartridges associated with the corresponding adjacent areas on the system substrate”, in combination with all the remaining limitations in each claim. See also section 4b of the Office action mailed 02 November 2023 in parent application 17/600,905.
c. In claim 3, the steps of “using a micro device position to fetch the cartridge parameters; and using the cartridge parameters along with micro device value to calculate the compensation value”, In combination with all the remaining limitations in the claim. See also section 3a of the Office action mailed 04 September 2025 in parent application 18/430,857.
d. Claim 4 would be allowable based on its dependence from claim 3.
Closing Remarks/Comments
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN DANIELSEN whose telephone number is (571)272-4248. The examiner can normally be reached Monday-Friday 9:00 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick Edouard can be reached at (571) 272-7603. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN DANIELSEN/Primary Examiner, Art Unit 2622
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