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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`11/987, 852
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`12/05/2007
`
`Mitsuharu Tai
`
`Juan Carlos A. Marquez
`Bacon & Thomas PLLC
`625 Slaters Lane
`4th Floor
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`Alexandria, VA 22314-1 176
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
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`RNEYDOCKETNO—
`HITA— 1047
`8184
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`HU’ SHOUXIANG
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`PAPER NUMBER
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`2898
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/26/2015
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`uspto @baconthomas.com
`lniu @ baconthomas.com
`ndesanti @ baconthomas.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 11/987,852 TAI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`StatusNo SHOUXIANG HU 2898
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
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`1)IZI Responsive to communication(s) filed on 3/2/15.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-3 and 5-13 is/are pending in the application.
`5a) Of the above claim(s) 7and 9-11 is/are withdrawn from consideration.
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`6)I:I Claim(s)
`is/are allowed.
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`7)|Z| Claim(s) 1 -3 5 68 12 and 13 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\W¢W.LISI>I‘.0. ov/ atentS/init events/
`
`
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`h/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)IZl All
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`b)|:l Some” c)I:l None of the:
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`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20150317
`
`

`

`Application/Control Number: 11/987,852
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`Page 2
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`Art Unit: 2898
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 1 12
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`1.
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`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
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`IN GEN ERAL.—The specification shall contain a written description of the
`(a)
`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 orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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`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.
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`2.
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`Claim 12, insofar as being supported by the elected species, is rejected under 35
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`U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the
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`written description requirement. The claim(s) contains subject matter which was not
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`described in the specification in such a way as to reasonably convey to one skilled in
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`the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the
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`time the application was filed, had possession of the claimed invention.
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`Claim 12 recites the subject matters that one of the plurality of light sensors
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`overlaps with an electrode layer formed in a same layer as a pixel electrode in a plan
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`

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`Application/Control Number: 11/987,852
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`Page 3
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`Art Unit: 2898
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`view, which may imply that the recited "electrode layer" functions as an electrode over
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`the recited light sensor. However, such subject matters lack a full support in the original
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`disclosure, which never discloses that the conductive layer that is above the light sensor
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`(which is formed from a portion of a conductive layer same as that of the pixel electrode;
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`see the PX layer in Fig. 9C) does function as an electrode; and/or the disclosure lacks
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`an adequate description regarding for which device/element and/or for what function
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`such layer functions as an electrode.
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`3.
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`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.
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`4.
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`Claims 3, 5-7 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`Claim 3 recites the term of "the thin film transistor", but such term lacks a
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`sufficient antecedent basis in the claim.
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`Claim 5 recites the term of "the printed circuit board", but such term lacks a
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`sufficient antecedent basis in the claim.
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`Claim 6 recites the term of “a liquid crystal”, but fails to clarify what is its definite
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`relationship with the term of "liquid crystal" already defined in claim 1.
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`

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`Application/Control Number: 11/987,852
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`Page 4
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`Art Unit: 2898
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`Claim 8 recites the term of “a color filter”, but fails to clarify what is its definite
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`relationship with the term of “color filters” already defined in claim 1.
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`Claim Rejections - 35 USC § 103
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`5.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`6.
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`Claims 1-3, 5-6, 8, 12 and 13, insofar as being in compliance with 35 U.S.C. 112,
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`are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee (US
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`2006/0202947 A1) in view of Sano (US 8,379,005); or, in the alternative, over Sano in
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`view of Lee.
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`Lee discloses an image display apparatus (particularly see Figs. 3, 4, 6, 8, 9
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`and/or 10), comprising: a display panel including a first insulating substrate (110) where
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`a pixel region (DA) is formed by arranging a plurality of pixels each having a thin-film-
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`transistor (TFT) and/or a pixel electrode in a matrix form over the main face thereof, and
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`a second insulating substrate (210) which is opposed and adhered to the main face of
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`the first insulating substrate with a liquid crystal (3) therebetween;
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`a plurality of light sensors (701, 702, 703) for controlling the brightness and/or
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`color of backlight by sensing lights of different wave lengths, wherein the pixel TFTs
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`

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`Application/Control Number: 11/987,852
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`Page 5
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`Art Unit: 2898
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`(Fig. 8) and the light sensors (Figs. 4 and 10) are formed from the same semiconductor
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`layer (154, 150; [0121]);
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`a plurality of color filters (730R, 730G, 730W) formed on the second insulating
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`substrate and overlapping the light sensors, respectively, which a gap therebetween,
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`wherein the gap is a portion of a same gap that is filled with liquid crystal (3) at least in
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`the pixel area (DA).
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`Although Lee does not more explicitly disclose that the gap in the light sensor
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`area can also be filled with the liquid crystal, one of the ordinary skill in the art, as
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`evidenced in Sano (particularly see Figs. 5 and/or 11), would readily recognize that the
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`edges of the liquid crystal layer (14) are commonly defined by a sealing material (60)
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`that is commonly and/or desirably placed between the two substrate at the outer edges
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`of the semiconductor devices/elements (including the light sensors LS1 and/or LS2), so
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`as to provide desired and/or reliable edge sealing, and/or to avoid potential damage to
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`(and/or, potentially adverse effect on) such semiconductor devices/elements (as it
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`would obviously avoid direct contact therebetween when it is positioned at the outer
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`edges).
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`Therefore, it would have been obvious to one of the ordinary skill in the art at the
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`time the invention was made to incorporate the art-well-known structure/feature of
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`sealing the liquid crystal layer at the outer edge of the semiconductor devices/elements,
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`such as that of Sano, so that a liquid crystal display device with the desired, reliable,
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`and/or non-damaging edge sealing would be obtained.
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`Application/Control Number: 11/987,852
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`Page 6
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`Art Unit: 2898
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`Or, in the alternative, it would also have been obvious to one of the ordinary skill
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`in the art at the time the invention was made to incorporate the art-well-known multiple
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`light sensors, such as that of Lee, into the device of Sano, so that a display device with
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`the commonly required and/or desired multiple color control of the backlight would be
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`obtained.
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`Regarding claim 2, it is further noted that one of the ordinary skill in the art would
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`also readily recognize that the commonly required signal processing circuit can also be
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`formed from the same semiconductor layer as that of the pixel thin film transistors, so
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`that a display device with desired further higher degree of integration and/or with
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`desired further simplified process would be obtained.
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`Regarding claim 5, it is further noted that a feedback circuit can be commonly
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`and/or desirably mounted on the printed circuit board for providing the required
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`feedback-circuit connection and/or coupling.
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`Regarding claim 12, insofar as being in compliance with 35 U.S.C. 112, it is
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`further noted that at least the light sensors in Lee (see Fig. 10) overlap with an electrode
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`layer (160a and/or 170) that are formed from a same layer as the electrode in the pixel
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`(165 and/or 175; which naturally functions at least as a part of the pixel electrode that
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`drives the display of such pixel).
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`Regarding claim 13, it is further noted that, as further evidenced in Sano, it is well
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`known the art that the common electrode layer (26) can be commonly and/or desirably
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`extended to the entirety of the second substrate for process simplicity and/or for
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`performing the desired and/or required electrical functionality.
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`

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`Application/Control Number: 11/987,852
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`Page 7
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`Art Unit: 2898
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`Response to Arguments
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`7.
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`Applicant’s arguments with respect to the claims rejected above have been
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`considered but are moot because the arguments do not apply to any of the combined
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`teachings of the references being used in the current rejection.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to SHOUXIANG HU whose telephone number is (571 )272—
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`1654. The examiner can normally be reached on Monday through Friday, 8:30 AM to
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`5:30 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Julio Maldonado can be reached on 571-272—1864. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free).
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`

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`Application/Control Number: 11/987,852
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`Page 8
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`Art Unit: 2898
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`If you would like assistance from a USPTO Customer Service Representative or
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`access to the automated information system, call 800-786-9199 (IN USA OR CANADA)
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`or 571 -272—1000.
`
`/SHOUXIANG HU/
`
`Primary Examiner, Art Unit 2898
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`