`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`12/486,003
`
`06/17/2009
`
`Hideo Sato
`
`1497.50007X00
`
`4282
`
`20457
`
`7590
`
`10/19/2012
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON, VA 22209-3873
`
`FRY, MATTHEW A
`
`2696
`
`MAIL DATE
`
`10/19/2012
`
`PAPER NUMBER
`
`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)
`
`

`

`
`
`Office Action Summary
`
`Application No.
`
`12/486,003
`
`Examiner
`MATTHEW FRY
`
`Applicant(s)
`
`SATO ET AL.
`
`Art Unit
`2696
`
`-- 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 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`In no event however may a reply be timely filed
`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).
`
`Status
`
`1)IZI Responsive to communication(s) filed on 07August 2012.
`
`2a)IZ| This action is FINAL.
`
`2b)I:l This action is non-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)|:l 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZI Claim(s) 1 and 3-6 is/are pending in the application.
`
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`
`6 I:I Claim s) _ is/are allowed.
`
`1,3_-6 is/are rejected.
`
`is/are objected to.
`
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`
`11)|:| The drawing(s) filed on _ is/are: a)|:l accepted or b)I:l 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).
`
`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)I:I AII
`
`b)I:I Some * c)|:l None of:
`
`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 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)
`
`1) I] Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) El Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date _.
`US. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper N°(5 )/Mai| Date. _
`5)I:I Notice of Informal Patent Application
`)6|:| Other:
`
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20121011
`
`
`
`

`

`Application/Control Number: 12/486,003
`
`Page 2
`
`Art Unit: 2696
`
`DETAILED ACTION
`
`Response to Arguments
`
`1.
`
`Applicant's arguments filed 8/7/12 have been fully considered but they are not
`
`persuasive.
`
`Applicant argues (Remarks page 6) that Ise does not teach the integration circuit
`
`being electrically connected to the second electrodes. However, Ise teaches integration
`
`circuit circuits (112-114, figure 5) which are electrically connected with Pens 105 and
`
`111. These pens are capacitively connected with second electrodes (figure 8). As
`
`capacitance is a result of an electric field, the Examiner considers them to be electrically
`
`connected. However, for the sake of completeness, lnoue also teaches integration
`
`circuits 14-16 (figure 3) which are directly connected to electrodes.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`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.
`
`3.
`
`Claims 1 and 3-6 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Kasser (US 6,002,389) in view of Ise (US 5,283,556) and further in view of lnoue et
`
`al (US 6,075,520).
`
`4.
`
`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),
`
`

`

`Application/Control Number: 12/486,003
`
`Page 3
`
`Art Unit: 2696
`
`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:
`
`a plurality of first electrodes (40) 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 (30) 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, which is opposed to the first substrate, includes a
`
`planar third electrode (15) which covers the plurality of first electrodes and the plurality
`
`of second electrodes, and wherein the
`
`device includes a gel-like sheet (20) interposed between the 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 Examiner considers to
`
`be "gel-like". Kasser does not explicitly discuss a display device.
`
`lse teaches a capacitive touch screen comprising a driving circuit (102 and 103;
`
`lse figure 5); a detecting circuit including a plurality of integration circuits (112-114)
`
`including a plurality of integration circuits (105,11-114; lse figure 5); wherein the driving
`
`circuit is electrically connected with the first electrode (figure 1) and being placed on the
`
`observer side of a display (figure 18; Col 6-28).
`
`lse and Kasser both teach a capacitive
`
`touch pad. Capacitive touch screen and transparent materials are well known and
`
`

`

`Application/Control Number: 12/486,003
`
`Page 4
`
`Art Unit: 2696
`
`common in the art. As such, it would have been obvious to one of ordinary skill in the
`
`art, to modify Kasser with lse such that Kasser's touch pad is mounted on the front of a
`
`display device. Further, as Kasser is silent as to the driving of the touchscreen, it would
`
`have been an obvious substitution of parts to use lse’s touchpad driving method on
`
`Kasser touch pad. Since the display inherently has an outer substrate, Kasser’s ground
`
`plane, as modified, would on the surface of a substrate. lse does not explicitly discuss
`
`the integration circuits are configured to electrically connect with one of the second
`
`electrodes.
`
`lse teaches integration circuit circuits (112-114, figure 5) which are electrically
`
`connected with Pens 105 and 111. These pens are capacitively connected with second
`
`electrodes (figure 8). As capacitance is a result of an electric field, the Examiner
`
`considers them to be electrically connected.
`
`Further, lnoue teaches integration circuit (14-16; figure 3) which is electrically
`
`connected to second electrodes. Rather than detecting capacitance between a stylus
`
`and a selected electrode, lnoue detects capacitance between the x and y electrodes.
`
`This has the advantage of working with both stylus and fingers, and reduces the number
`
`of parts requires to use the touch pad, potentially resulting in reduced cost to
`
`manufacture.
`
`It would have been obvious, for one of ordinary skill in the art, to modify
`
`Kasser (as modified by lse) with lnoue such that lnuoe's detecting circuit is used with
`
`Kasser's touchpad and lse's driving circuitry. Such a modification would have been a
`
`simple substitution of parts that would provide predictable results. Thus Kasser, as
`
`

`

`Application/Control Number: 12/486,003
`
`Page 5
`
`Art Unit: 2696
`
`modified by Ise and Inoue teaches Ise’s detection circuitry (including the integration
`
`circuits) directly connected to the second electrodes.
`
`5.
`
`In regards to claim 3, 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 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.
`
`6.
`
`In regards to claim 4, Kasser as modified does not explicitly disclose a display
`
`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.
`
`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
`
`choice for one of ordinary skill in the art, without affecting functionality of the device.
`
`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.
`
`7.
`
`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
`
`

`

`Application/Control Number: 12/486,003
`
`Page 6
`
`Art Unit: 2696
`
`second substrate each comprise a plastic 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.
`
`8.
`
`In regards to claim 6, Kasser as modified discloses a display device with a touch
`
`panel according to claim 1 (lse Col 1, lines 6-10), further comprising:
`
`a coordinate position calculating circuit (107 and 108; lse figure 5) which
`
`calculates a touch point at which the touch panel is touched,
`
`wherein the driving circuit sequentially selects two first electrodes 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
`
`another thereof (figure 2 shows one electrode receiving Py while another electrode
`
`receives ground);,
`
`wherein the detecting circuit detects a capacitance difference between a
`
`capacitor A and a capacitor B (A-B) (figure 5)
`
`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) (lse figure 5;
`
`Col 7, lines 5-35). Kasser as modified by lse does not explicitly discuss the capacitance
`
`between first and second electrodes being measured.
`
`lnoue teaches a capacitive touch pad wherein pairs of electrode are sequentially
`
`selected and coordinates of a touch are detected based on the difference (A-B) wherein
`
`the capacitor A being provided between a second electrode that is selected among the
`
`

`

`Application/Control Number: 12/486,003
`
`Page 7
`
`Art Unit: 2696
`
`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 (figures 1-3;
`
`Col 6, lines 51-67).
`
`Rather than detecting capacitance between a stylus and a selected electrode,
`
`lnoue detects capacitance between the x and y electrodes. This has the advantage of
`
`working with both stylus and fingers, and reduces the number of parts requires to use
`
`the touch pad, potentially resulting in reduced cost to manufacture.
`
`It would have been
`
`obvious, for one of ordinary skill in the art, to modify Kasser (as modified by lse) with
`
`lnoue such that lnuoe's detecting circuit is used with Kasser's touchpad and lse's driving
`
`circuitry. Such a modification would have been a simple substitution of parts that would
`
`provide predictable results.
`
`Conclusion
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MATTHEW FRY whose telephone number is (571 )270-
`
`7355. 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
`
`supervisor, Bipin Shalwala can be reached on (571) 272-7681. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

`

`Application/Control Number: 12/486,003
`
`Page 8
`
`Art Unit: 2696
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/MATTH EW A FRY/
`
`Examiner, Art Unit 2629
`
`/Bipin Shalwala/
`Supervisory Patent Examiner, Art Unit 2696
`
`