`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`12/486,003
`
`06/17/2009
`
`Hideo Sato
`
`1497—50007X00
`
`4282
`
`TYPHA IP LLC
`1819 L Street NW Suite 200
`
`Washington, DC 20036
`
`FRY, MATTHEW A
`
`ART UNIT
`
`2696
`
`MAIL DATE
`
`08/22/2016
`
`PAPER NUIVIBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Applicant(s)
`Application No.
` 12/486,003 SATO ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2696MATTHEW FRY first“
`
`-- 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 0137 CFR 1.136(a).
`after SIX (6) 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
`
`
`1)IXI Responsive to communication(s) filed on 6/22/16.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`2a)IZ| 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
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)|XI Claim(s) 13-6 19 and 20 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| Claim(s) 1,3-6,19-20 is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`
`://www.usoto. ov/ atents/init events"
`h/index.‘s orsend an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`htt
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I 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).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`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.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160819
`
`
`
`Application/Control Number: 12/486,003
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`Page 2
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`Art Unit: 2696
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`1.
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
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`DETAILED ACTION
`
`Response to Arguments
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`2.
`
`Applicant's arguments filed 6/22/16 have been fully considered but they are not
`
`persuasive.
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`3.
`
`Applicant comments (Remarks page 7) that support for the current amendment
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`can be found on page 11, lines 9-13, page 14, line 14-page 15, line 4 and in figures 3
`
`and 8.
`
`The Examiner respectfully disagrees. Page 11 of the specification discusses
`
`capacitances are formed between x electrodes and the third electrode and between the
`
`y electrode and the third electrode. There is no discussion of a coupling capacitance
`
`being formed through the third electrode. Page 14 discusses coupling capacitances, but
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`only in the context of the capacitance with the third electrode. The Examiner is unable to
`
`find any support in the original disclosure for this amendment.
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`4.
`
`Applicant argues (Remarks page 8) that Kasser, lse and Gerpheide fail to teach
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`"wherein a coupling capacitance is formed between the corresponding one of the first
`
`electrodes and the corresponding one of the second electrodes through the third
`
`electrode." Applicant further argues (Remarks page 9) that Kasser separately detects a
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`capacitance between X traces and a ground plane and detects a capacitance between
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`Y traces and a ground plane. Applicant asserts that Kasser cannot be considered to
`
`
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`Application/Control Number: 12/486,003
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`Page 3
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`Art Unit: 2696
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`disclose a coupling capacitance formed between the first and second electrodes
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`through the third electrode. Applicant provides similar arguments on pages 9-10.
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`The Examiner respectfully disagrees. As discussed below Kasser is modified by
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`the driving scheme of Gerpheide. Gerpheide Col 3: 53-67 discusses a coupling
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`capacitance is formed between the corresponding one of the first electrodes and the
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`corresponding one of the second electrodes. Gerpheide and Kasser both discuss a
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`capacitance being formed between X electrodes and the third electrode as well as the Y
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`electrodes and the third electrode. Because both X and Y electrodes are capacitively
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`coupled with the third electrode, the Examiner considers them to be coupled through the
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`third electrode.
`
`Claim Rejections - 35 USC § 1 12
`
`5.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GENERAL—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:
`
`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.
`
`6.
`
`Claims 1, 3-6 and 19-20 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.
`
`
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`Application/Control Number: 12/486,003
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`Page 4
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`Art Unit: 2696
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`The claim(s) contains subject matter which was not described in the specification in
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`such a way as to reasonably convey to one skilled in the relevant art that the inventor or
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`a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
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`possession of the claimed invention.
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`7.
`
`Claims 1 and 6 recite new limitation “wherein a coupling capacitance is formed
`
`between the corresponding one of the first electrodes and the corresponding one of the
`
`second electrodes through the third electrode," which does not appear to have support
`
`in the original disclosure. Applicant proposes that support for the current amendment
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`can be found on page 11, lines 9-13, page 14, line 14-page 15, line 4 and in figures 3
`
`and 8.
`
`The Examiner respectfully disagrees. Page 11 of the specification discusses
`
`capacitances are formed between x electrodes and the third electrode and between the
`
`y electrode and the third electrode. There is no discussion of a coupling capacitance
`
`being formed through the third electrode. Page 14 discusses coupling capacitances, but
`
`only in the context of the capacitance with the third electrode. The Examiner is unable to
`
`find any support in the original disclosure for this amendment. As such this is
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`considered to be new matter.
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`Claims 3-6 and 19-20 are similarly rejected as they are dependent on the above
`
`rejected claims.
`
`8.
`
`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.
`
`
`
`Application/Control Number: 12/486,003
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`Page 5
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`Art Unit: 2696
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`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.
`
`9.
`
`Claims 1, 3-6 and 19-20 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 pre-AIA
`
`the applicant regards as the invention.
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`10.
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`Claims 1 and 6 recite new limitation “wherein a coupling capacitance is formed
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`between the corresponding one of the first electrodes and the corresponding one of the
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`second electrodes through the third electrode." It is unclear what the phrase “through
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`the third electrode” is intended to mean. The original disclosure only discusses a
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`coupling between a X trace and the third electrode and a Y trace with the third
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`electrode. It is unclear if the term “through” is implying that the third electrode is floating
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`allowing charged and current to flow through it. However, figure 4 appears to imply that
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`the electrode is driven, which would not allow current to flow through. Thus “through the
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`third electrode” would describe two capacitances sharing an electrode. As such, the
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`scope of the claim is indefinite.
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`Claims 3-6 and 19-20 are similarly rejected as they are dependent on the above
`
`rejected claims.
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`For the sake of applying prior art, the Examiner has interpreted “through the third
`
`electrode” to mean that the capacitances share the third electrode. That appears to be
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`consistent with figure of the current application.
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`
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`Application/Control Number: 12/486,003
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`Page 6
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`Art Unit: 2696
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`Claim Rejections - 35 USC § 103
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`11.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(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.
`
`12.
`
`Claims 1, 3-6 and 19-20 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Kasser (US 6,002,389) in view of lse (US 5,283,556) and further in
`
`view of Gerpheide et al (US 5,565,658).
`
`13.
`
`In regards to claim 1, Kasser discloses a device with a touch panel, comprising:
`
`and a capacitive touch panel (abstract) which is placed on an observer (figure 3A),
`
`wherein the touch panel includes a first substrate (45) and a second substrate
`
`(15) which are arranged to face each other,
`
`wherein the first substrate includes on a surface thereof, which is opposed to the
`
`second substrate:
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`a plurality of first electrodes (40) which extend in a first direction and are
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`arranged side by side in a second direction intersecting the first direction;
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`and a plurality of second electrodes (30) which extend in the second direction to
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`intersect the plurality of first electrodes and are arranged side by side in
`
`the first direction,
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`wherein the second substrate, which is opposed to the first substrate, includes a
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`planar third electrode (15) which covers the plurality of first electrodes and the plurality
`
`of second electrodes,
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`
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`Application/Control Number: 12/486,003
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`Page 7
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`Art Unit: 2696
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`wherein a coupling capacitance is formed between the corresponding one of the
`
`first electrodes and the corresponding one of the second electrodes through the third
`
`electrodes (Col 3: 36-59; discuss X-ground capacitance and Y-ground capacitance, in
`
`which the capacitances share ground plane 15),
`
`and wherein the device includes a gel-like sheet (20) interposed between the
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`plurality of first electrodes and the plurality of second electrodes, and the third electrode
`
`(figure 1). Col 2, lines 43-59 discusses flexible material to be flexible, which the
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`Examiner considers to be "gel-like". Kasser does not explicitly discuss a display device.
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`lse teaches a capacitive touch screen comprising a driving circuit (102 and 103;
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`lse figure 5); a detecting circuit including a plurality of integration circuits (112-114)
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`including a plurality of integration circuits (105,11-114; lse figure 5); wherein the driving
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`circuit is electrically connected with the first electrode (figure 1) and being placed on the
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`observer side of a display (figure 18; Col 6-28).
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`lse and Kasser both teach a capacitive
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`touch pads. Capacitive touch screen and transparent materials are well known and
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`common in the art. As such, it would have been obvious to one of ordinary skill in the
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`art, to modify Kasser with lse such that Kasser's touch pad is mounted on the front of a
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`display device. Since the display inherently has an outer substrate, Kasser’s ground
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`plane, as modified, would be on the surface of a substrate. Kasser, as modified, does
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`not explicitly discuss the driving of the touch screen.
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`Gerpheide discloses a touch panel (abstract), comprising: a capacitive touch
`
`(abstract) ;
`
`
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`Application/Control Number: 12/486,003
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`Page 8
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`Art Unit: 2696
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`a driving circuit (72-76, figure 4); and
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`a detecting circuit (80-82, figure 4) including a plurality of integration circuits,
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`wherein each integration circuit includes an integration capacitor ( see figure 5 which
`
`shows a plurality of capacitive measurement circuits and figure 6b which shows an
`
`integration circuit),
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`a plurality of first electrodes which extend in a first direction and are arranged
`
`side by side in a second direction intersecting the first direction (Y electrodes, figure 4);
`
`and
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`a plurality of second electrodes which extend in the second direction to intersect
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`the plurality of first electrodes and are arranged side by side in the first direction (X
`
`electrodes, figure 2a),
`
`wherein a coupling capacitance is formed between the corresponding one of the
`
`first electrodes and the corresponding one of the second electrodes through the third
`
`electrodes (Gerpheide Col 3: 53-67 discusses a coupling capacitance is formed
`
`between the corresponding one of the first electrodes and the corresponding one of the
`
`second electrodes),
`
`wherein the driving circuit is configured to electrically connect with the first
`
`electrodes (see figure 4),
`
`wherein each one of the integration circuits is configured to electrically connect
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`with one of the second electrodes (figures 4 and 5 show the x electrodes connection to
`
`capacitive measurement elements),
`
`
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`Application/Control Number: 12/486,003
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`Page 9
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`Art Unit: 2696
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`wherein each of the integration circuits is configured to detect a voltage of one of
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`the second electrodes when a voltage is supplied to one of the first electrodes (figure 6b
`
`gives the equation for the output voltage relative to a driven voltage), and
`
`wherein each of the integration circuits is configured to integrate current that
`
`flows in an adjacent two second electrodes (Gerpheide Col 6, lines 1-18 selects two
`
`electrodes to apply RP and RN) when the voltage supplied to a corresponding one of
`
`the first electrodes changes to output a voltage that is proportional to a capacitance
`
`difference between a coupling capacitance between the corresponding one of the first
`
`electrodes and the corresponding one of the second electrodes(Col 4, lines 1-13
`
`discusses integrating; figure 6b shows an integrating amplifier; Col 5, lines 52-67
`
`discuss measuring the difference between capacitances on the electrode; figure 4
`
`shows applying different polarity driving signals RP and RN which generate the opposite
`
`polarity capacitances on the second electrode).
`
`Kasser and Gerpheide utilize similar structures comprising X and Y electrodes. It
`
`would have been a simple substitution to replace Kasser’s touchscreen driving circuitry
`
`with Gerpheide's. As such, it would have been obvious, for one of ordinary skill in the
`
`art, to modify Kasser (as modified by lse) with Gerpheide such that Gerpheide's
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`detecting circuit is used with Kasser's touchpad and lse's driving circuitry. Such a
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`modification would have been a simple substitution of parts that would provide
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`predictable results.
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`
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`Application/Control Number: 12/486,003
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`Page 10
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`Art Unit: 2696
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`14.
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`In regards to claim 3, Kasser as modified does not explicitly disclose a display
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`device with a touch panel according to claim 1, wherein the first substrate and the
`
`second substrate each comprise a glass substrate. However the Examiner takes
`
`Official Notice that using glass substrates would have been obvious to one of ordinary
`
`skill in the art as they are a well-known substrate. Further, setting the second substrate
`
`to be thinner than the first substrate would have been an obvious design choice for one
`
`of ordinary skill in the art. There are a limited number of relationships between the two
`
`widths (larger, smaller, and equal) thus it would have been obvious to try.
`
`15.
`
`In regards to claim 4, Kasser as modified does not explicitly disclose a display
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`device with a touch panel according to claim 1, wherein the first substrate comprises a
`
`glass substrate, and wherein the second substrate comprises a plastic substrate.
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`However the Examiner takes Official Notice that using glass and plastic substrates
`
`would have been obvious to one of ordinary skill in the art as they are a well-known
`
`substrate. Further, setting one substrate to glass and the other plastic obvious design
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`choice for one of ordinary skill in the art, without affecting functionality of the device.
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`There are a limited number of relationships between the two substrates (both glass,
`
`both plastic, plastic and glass or glass and plastic) thus it would have been obvious to
`
`try.
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`16.
`
`In regards to claim 5, Kasser as modified does not explicitly disclose a display
`
`device with a touch panel according to claim 1, wherein the first substrate and the
`
`second substrate each comprise a plastic substrate. However the Examiner takes
`
`
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`Application/Control Number: 12/486,003
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`Page 11
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`Art Unit: 2696
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`Official Notice that using glass substrates would have been obvious to one of ordinary
`
`skill in the art as they are a well-known substrate.
`
`17.
`
`In regards to claim 6, Kasser as modified discloses a touch panel, further
`
`comprising: a display panel: a capacitive touch panel which is placed on an observer
`
`side of the display panel: a driving circuit: and a detecting circuit including a plurality of
`
`integration circuits, wherein each integration circuit includes an integration capacitor,
`
`wherein the touch panel includes a first substrate and a second substrate which are
`
`arranged to face each other, wherein the first substrate includes on a surface thereof,
`
`which is opposed to the second substrate: a plurality of first electrodes which extend in
`
`a first direction and are arranged side by side in a second direction intersecting the first
`
`direction: and a plurality of second electrodes which extend in the second direction to
`
`intersect the plurality of first electrodes and are arranged side by side in the first
`
`direction, wherein the second substrate includes on a surface thereof, which is opposed
`
`to the first substrate a planar third electrode which covers the plurality of first electrodes
`
`and the plurality of second electrodes, wherein a coupling capacitance is formed
`
`between the corresponding one of the first electrodes and the corresponding one of the
`
`second electrodes through the third electrode, wherein the display device includes a
`
`gel-like sheet interposed between the plurality of first electrodes and the plurality of
`
`second electrodes, and the third electrode, wherein the driving circuit is configured to
`
`electrically connect with the first electrodes, wherein each one of the integration circuits
`
`is configured to electrically connect with one of the second electrodes, wherein each of
`
`the integration circuits is configured to detect a voltage of one of the second electrodes
`
`
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`Application/Control Number: 12/486,003
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`Page 12
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`Art Unit: 2696
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`when a voltage is supplied to one of the first electrodes (see claim 1 explanation), a
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`coordinate position calculating circuit which calculates a touch point at which the touch
`
`panel is touched (Gerpheide 18, figure 1), wherein the driving circuit sequentially selects
`
`two first electrodes that are adjacent to one another among the plurality of first
`
`electrodes to supply a voltage higher in potential than a reference voltage to one of the
`
`selected two first electrodes and supply the reference voltage to the other of the
`
`selected two first electrodes (Gerpheide Col 6, lines 1-18 selects two electrodes to
`
`apply RP and RN; lse figure 2 shows sequential driving), wherein the detecting circuit
`
`detects a capacitance difference between a capacitor A and a capacitor B (A-B), the
`
`capacitor A being provided between a second electrode that is selected among the
`
`plurality of second electrodes and the first electrode to which the voltage higher in
`
`potential is supplied, the capacitor B being provided between the selected second
`
`electrode and the first electrode to which the reference voltage is supplied, and wherein
`
`the coordinate position calculating circuit calculates a touch point at which the touch
`
`panel is touched based on locations of the selected two first electrodes and the selected
`
`second electrode and on the capacitance difference (A-B) (see claim 1 explanation
`
`above).
`
`18.
`
`In regards to claim 19, Kasser as modified discloses a display device with a
`
`touch panel according to claim 6, further comprising switches coupled, respectively, to
`
`each of the first electrodes and a switch control circuit coupled to the switches and the
`
`reference voltage to control the supply of the reference voltage to the first electrodes
`
`
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`Application/Control Number: 12/486,003
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`Page 13
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`Art Unit: 2696
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`(Gerpheide figure 4 shows switching’s controlling application of RP and RN to the Y
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`electrodes).
`
`19.
`
`In regards to claim 20, Kasser as modified discloses a display device with a
`
`touch panel according to claim 1, wherein the integration circuits detect the voltage of
`
`one of the second electrodes when one of the voltage supplied to adjacent two first
`
`electrodes changes from Low level to High level, and other of the voltage supplied to
`
`adjacent two first electrodes changes from High level to Low level (Gerpheide Col 6,
`
`lines 1-18 selects two electrodes to apply RP and RN; Col 4, lines 1-13 discusses
`
`integrating; figure 6b shows an integrating amplifier; Col 5, lines 52-67 discuss
`
`measuring the difference between capacitances on the electrode; figure 4 shows
`
`applying different polarity driving signals RP and RN which generate the opposite
`
`polarity capacitances on the second electrode).
`
`Conclusion
`
`20.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`
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`Application/Control Number: 12/486,003
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`Page 14
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`Art Unit: 2696
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MATTHEW FRY whose telephone number is (303)297-
`
`4769. The examiner can normally be reached on Monday thru Friday, 8:00 AM to 5:00
`
`PM, alternate Fridays, EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Temesghen Ghebretinsae can be reached on 571-272—3017. The fax
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`phone number for the organization where this application or proceeding is assigned is
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`571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
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`/MATTHEW FRY/
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`Primary Examiner, Art Unit 2696
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