`
`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.
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`
`
`
` F ING DATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
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`12/566,773
`
`09/25/2009
`
`Shohei MATSUMOTO
`
`501.50210X00
`
`3005
`
`20457
`
`7590
`
`02/01/2013
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON, VA 22209-3873
`
`INADOMI, MICHAEL J
`
`2871
`
`MAIL DATE
`
`02/01/2013
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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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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`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Office Action Summary
`
`Application No.
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`Applicant(s)
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`12/566,773
`
`Examiner
`Michael Inadomi
`
`MATSUMOTO ET AL.
`
`Art Unit
`2871
`
`-- 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
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`1)IZI Responsive to communication(s) filed on 28 November 2012.
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`2a)IZ| This action is FINAL.
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`2b)I:l This action is non-final.
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`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)|:l 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) 1-20 is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:I Claim(s) _ is/are allowed.
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`7)|Zl Claim(s)_120 Is/are rejected.
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`8)I:I Claim(s) _ is/are objected to.
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`9)I:l Claim((s)
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`are subject to restriction and/or election requirement.
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`* 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
`
`htt
`:/'/www.us to. ovI’Watents/Init eventS/bnh/Indest or send an inquiry to PPeredback usntqt 0v.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`11)|Z| The drawing(s) filed on 25 September 2009 is/are: a)IZI 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).
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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)IZ| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)lX| AII
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`b)I:I Some * c)|:l None of:
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`1.IZI Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. _
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`3.|:I 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)).
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`* 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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`1) I] Notice of References Cited (PTO-892)
`
`2) IX! Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`
`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
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`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20130125
`
`
`
`

`

`Application/Control Number: 12/566,773
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`Page 2
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`Art Unit: 2871
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`DETAILED ACTION
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`Information Disclosure Statement
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`The references cited in the information disclosure statement filed November 28, 2012
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`have been considered.
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`Claim Objections
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`Claims 19 and 20 are objected to because of the following informalities:
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`In line 2 of both claim 19 and claim 20, the recitation “peripheral region” should
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`be amended to read “peripheral portion” in order to provide concordance between claims
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`19 and 20 and the use of the term “peripheral portion” in the independent claims from
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`which they respectively depend. In addition, in line 3 of both claim 19 and claim 20, the
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`recitation “larger in the planar size” should be corrected to read “larger in planar size”.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 USC. 112(b):
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`(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.
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`The following is a quotation of 35 USC. 112 (pre—AIA), second paragraph:
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`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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`Claims 19 and 20 are rejected under 35 USC. 112(b) or 35 USC. 112 (pre—AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`Application/Control Number: 12/566,773
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`Page 3
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`Art Unit: 2871
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`subject matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
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`In claims 19 and 20, the use of the recitation “larger in planar size than the planar size of
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`the first substrate in orthogonal directions thereof” is unclear due to the fact that “planar size”
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`appears to refer to a measurement of area, whereas the aforementioned recitation appears to be
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`meant to pertain to simple one—dimensional measurements of length in orthogonal directions.
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`For the purposes of examination, the examiner will interpret claims 19 and 20 as if the word
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`“planar” were not present, thereby interpreting the claim in accordance with the latter
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`interpretation.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 USC. 103(a) which forms the basis for all
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`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.
`
`Claims 1—7, 10—16, 19, and 20 are rejected under 35 USC. 103(a) as being unpatentable
`
`over Oohira (US PGPub No. 2010/0060601 A1) in view of Shioya et al. (US Patent No.
`
`5,583,681 A) and Iida (US PGPub No. 2009/0207350 A1).
`
`Regarding claims 1 and 10, Oohira teaches a display device comprising a display panel
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`(see Fig. 4) including a first substrate 10 and a second substrate 20, a mold 60 which is arranged
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`on a first substrate side of the display panel, a front panel 200 which is fixed to a second
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`Application/Control Number: 12/566,773
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`Page 4
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`Art Unit: 2871
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`substrate of the display panel, wherein the front panel is larger than the first substrate in planar
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`size (see Fig. 3 and paragraph 50). Oohira further teaches a peripheral portion of the first
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`substrate being disposed on a flat surface of the mold 60 (see Fig. 4) which does not have a
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`sidewall formed thereon.
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`Oohira does not explicitly disclose the presence of an opaque region on a peripheral
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`portion of the front panel or a peripheral portion of the first substrate being fixed to the mold.
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`Shioya et al. teach a peripheral portion of a first substrate 118 of a display panel being
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`fixed to a flat surface of mold 104 via adhesive 105 (see Fig. 2).
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`At the time the invention was made, it would have been obvious to a person having
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`ordinary skill in the art to modify the invention of Oohira by fixing a peripheral portion of the
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`first substrate to the mold via an adhesive as motivated by a desire to inhibit motion of the
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`display panel, thereby preventing damage to the device.
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`Iida teaches a front panel 32 of a display device comprising an opaque region 34 on a
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`peripheral portion thereof (see Fig. 3) for the purpose of preventing a non—display area from
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`being viewed (see paragraph 42). Iida teaches the opaque region as covering a peripheral portion
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`of upper polarizer 14 and being disposed at all edges of the upper polarizer. At the time the
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`invention as made, it would have been obvious to a person having ordinary skill in the art to
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`modify the invention of Oohira as modified by Shioya et al. by forming the front panel so as to
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`include an opaque region on a peripheral portion thereof, the opaque region being provided at all
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`edges of the front panel, in order to prevent non—display areas from being visible by a viewer.
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`

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`Application/Control Number: 12/566,773
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`Page 5
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`Art Unit: 2871
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`Regarding claims 2 and 11, Oohira teaches an upper polarizer 21 arranged on the second
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`substrate 20 (see Fig. 4), and the front panel being fixed to a surface of the upper polarizer by an
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`adhesive material (see paragraphs 51 and 52).
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`Regarding claims 3 and 12, the invention of Oohira as modified by Shioya et al. and lida
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`does not explicitly disclose a peripheral portion of the upper polarizer as being covered with the
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`opaque region formed on the peripheral portion of the front panel. However, Iida teaches
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`formation of the opaque region formed on the peripheral portion of the front panel so as to cover
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`a peripheral portion of the upper polarizer. At the time the invention was made, it would have
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`been obvious to form the upper polarizer and opaque region on the peripheral portion of the front
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`panel of the invention of Oohira as modified by Shioya et al. and Iida such that the opaque
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`region covers a peripheral portion of the upper polarizer as motivated by a desire to ensure
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`coverage of the entirety of the display region by the upper polarizer and to ensure coverage of
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`the entirety of the non—display region by the opaque region on the peripheral portion of the front
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`panel.
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`Regarding claims 4 and 13, Oohira teaches a touch panel 100 being interposed between
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`the front panel 200 and the second substrate 20.
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`Regarding claims 5 and 14, Oohira teaches an upper polarizer 21 being arranged on the
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`second substrate 20, the touch panel 100 being fixed to the upper polarizer 21 by an adhesive
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`material 110, and the front panel being fixed to the touch panel by an adhesive material 210.
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`Regarding claims 6 and 15, the invention of Oohira as modified by Shioya et al. and Iida
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`does not explicitly disclose a peripheral portion of the upper polarizer as being covered with the
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`opaque region formed on the peripheral portion of the front panel. However, Iida teaches
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`Application/Control Number: 12/566,773
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`Page 6
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`Art Unit: 2871
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`formation of the opaque region formed on the peripheral portion of the front panel so as to cover
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`a peripheral portion of the upper polarizer. At the time the invention was made, it would have
`
`been obvious to form the upper polarizer and opaque region on the peripheral portion of the front
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`panel of the invention of Oohira as modified by Shioya et al. and Iida such that the opaque
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`region covers a peripheral portion of the upper polarizer as motivated by a desire to ensure
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`coverage of the entirety of the display region by the upper polarizer and to ensure coverage of
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`the entirety of the non—display region by the opaque region on the peripheral portion of the front
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`panel.
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`Regarding claim 7 and 16, Oohira teaches a peripheral portion of the touch panel as
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`overlapping a non—display region of the display panel. At the time the invention was made, it
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`would have been obvious to modify the invention of Oohira as modified by Shioya et al. and Iida
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`so as to have a peripheral portion of the touch panel covered with the opaque region formed on
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`the peripheral portion of the front panel as motivated by a desire to cover the non—display region
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`of the display panel.
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`Regarding claims 19 and 20, Oohira further teaches the front panel as being larger in size
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`than the size of the first substrate in orthogonal directions thereof (see Fig. 3 and paragraph 50).
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`As discussed in the above rejection of claims 1 and 10, Oohira as modified by Shioya et al. and
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`Iida teaches the opaque region on the peripheral portion of the front panel as being provided at
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`all edges of the front panel.
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`Claims 1—3, 10—12, 19, and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Uehara et al. (US Patent No. 5,659,376 A).
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`Application/Control Number: 12/566,773
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`Page 7
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`Art Unit: 2871
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`Regarding claims 1 and 10, Uehara et al. teach a display device comprising a display
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`panel 306 which includes a first substrate 306b and a second substrate 306a, a mold 305 which is
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`arranged on a first substrate side of the display panel, wherein the front panel is larger than the
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`first substrate in a first dimension (see Fig. 23) and has an opaque region 313 on a peripheral
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`portion thereof. Uehara et al. further teach a peripheral portion of the first substrate as being
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`fixed to the mold via adhesive 307 and a surface of the mold to which the peripheral portion of
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`the first substrate is fixed as being flat (see Fig. 23).
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`Uehara et al. do not explicitly disclose the front panel as being larger than the first
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`substrate in a planar size, the front panel being fixed to a second substrate of the display panel,
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`and a side wall not being formed on a surface of the mold to which the peripheral portion of the
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`first substrate is fixed.
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`Uehara et al. do teach the use of opaque region 313 overlapping the second substrate for
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`blocking the passage of light from a peripheral non—display region 303c (see column 5, lines 10—
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`21). The opaque region 313 is described as a "printed frame", indicating its disposal at all edges
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`of the front panel. Uehara et al. additionally teach bonding of the elastic member 321 to the
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`liquid crystal display panel 306 or to the front panel 303 (see column 15, lines 53—57). Uehara et
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`al. further teach attachment of a peripheral circuit 310 comprising a driver IC to a mold 305
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`lacking side walls via a screw (see Fig. 8 and line 1 of column 5).
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`At the time the invention was made, it would have been obvious to a person having
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`ordinary skill in the art to modify the invention of Uehara et al. by providing the front panel so as
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`to be larger in planar size than the first substrate as well as larger in size than the size of the first
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`substrate in orthogonal directions thereof in order to facilitate masking of the entire peripheral
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`Application/Control Number: 12/566,773
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`Page 8
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`Art Unit: 2871
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`non—display region of the display panel. It would have been further obvious to modify the
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`invention of Uehara et al. by providing the front panel so as to be fixed to a second substrate of
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`the display panel via adhesive provided on the elastic member 321, as motivated by a desire to
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`prevent the front panel 303 from detaching from the display device. It would also have been
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`obvious to modify the invention of Uehara et al. by providing the mold 305 so as to lack side
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`walls and attach the peripheral circuit 310 of Fig. 23 to the mold via a screw, as shown in Figs. 8
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`and 9, as motivated by a desire to use a simple structure for mold 305 and reduce its cost.
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`Regarding claims 2, 3, 11, and 12, Uehara et al. teach the presence of an upper polarizer
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`arranged on the second substrate and a lower polarizer arranged on the first substrate (see
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`column 4, lines 61—63), but does not explicitly disclose the extent to which the polarizers cover
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`the substrates. Uehara et al. do teach upper polarizer 107 as covering substantially the entirety of
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`the upper surface of second substrate 101a in the device shown in Fig. 12. At the time the
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`invention was made, it would have been obvious to a person having ordinary skill in the art to
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`modify the invention of Uehara et al. by providing the upper polarizer so as to cover
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`substantially the entirety of the upper surface of the second substrate as motivated by a desire to
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`ensure that the whole display region is covered by the polarizer. Such a modification would
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`have resulted in the front panel being fixed to a surface of the upper polarizer by the adhesive
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`material provided on elastic member 321 as discussed in the rejection of claims 1 and 10 above,
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`and a peripheral portion of the upper polarizer being covered with the opaque region formed on
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`the peripheral portion of the front panel.
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`Application/Control Number: 12/566,773
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`Page 9
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`Art Unit: 2871
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`Regarding claims 19 and 20, Uehara et al. teach the opaque region on the peripheral
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`region of the front panel as being provided at all edges of the front panel (see column 5, lines 10—
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`21 wherein the opaque region is described as a "printed frame").
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`Claims 8, 9, 17, and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Uehara et al. (US Patent No. 5,659,376 A) as applied to claims 1 and 10 above, and further in
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`view of Pai (US PGPub No. 2004/0027526 A1).
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`Uehara et al. do not explicitly disclose a distance between an edge portion of the first
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`substrate and an edge portion of the mold on two opposing sides of the first substrate and the
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`mold as being not less than a combined total of 0.6 mm. Uehara et al. do teach a peripheral
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`circuit 310 comprising a driver IC being located between an edge portion of the first substrate
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`and an edge portion of the mold on one side of the first substrate and the mold, as well as
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`additional distance between an edge portion of the first substrate and an edge portion of the mold
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`on another, opposing side of the mold (see Fig. 23).
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`Pai teaches a driver IC having a minimum side width of around 1.2 mm. At the time the
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`invention was made, it would have been obvious to a person having ordinary skill in the art to
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`provide the device of Uehara et al. so as to have a distance between an edge portion of the first
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`substrate and an edge portion of the mold on two opposing sides of the first substrate and the
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`mold of not less than a combined total of 0.6 mm as motivated by a desire to keep display device
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`costs low by using a driver IC having conventional dimensions as opposed to a miniaturized
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`driver IC. Such a modification would result in a distance between an edge portion of the first
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`Application/Control Number: l2/566,773
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`Page 10
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`Art Unit: 2871
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`substrate and an edge portion of the mold on at least one side of the first substrate and the mold
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`being not less than 0.3 mm.
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`Claims 1—7, 10—16, 19, and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Morishita et al. (US Patent No. 6,504,587 Bl) in view of Prest et al. (US PGPub No.
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`2009/0174995 Al) and Uehara et al. (US Patent No. 5,659,376 A).
`
`Regarding claims 1 and 10, Morishita et al. teach a display device comprising a display
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`panel (see Fig. 9) which includes a first substrate 1A and a second substrate 1B and a mold 700
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`which is arranged on a first substrate side of the display panel, wherein a peripheral portion of
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`the first substrate is disposed on the mold and a surface of the mold on which the peripheral
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`portion of the first substrate is disposed is flat and has no side walls formed thereon.
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`Morishita et al. do not explicitly disclose fixation of a peripheral portion of the first
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`substrate to a surface of the mold, the presence of a front panel which is fixed to a second
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`substrate of the display panel, and the front panel being larger than the first substrate in a planar
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`size and having an opaque region on a peripheral portion thereof.
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`Prest et al. teach a display device (see Fig. 2) comprising a display panel 13 (see Fig. l), a
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`front panel ll fixed to the upper side of the display panel via adhesive layers 14 and 15, and a
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`touch panel 12 interposed between the display panel and the front panel. Prest et al. further teach
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`fixation of the bottom side of the display panel to a mold 16 (see paragraph 24) via, for example,
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`an adhesive.
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`At the time the invention was made, it would have been obvious to a person having
`
`ordinary skill in the art to modify the device of Morishita et al. so as to comprise a front panel
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`Page 11
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`Art Unit: 2871
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`fixed to the upper side of the display panel via adhesive and the lower surface of the display
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`panel being fixed to the mold as motivated by a desire to prevent movement of the components
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`of the display device relative to each other and thereby improve the durability of the device.
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`Such a modification would result in the front panel being fixed to the second substrate of the
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`display panel and a peripheral portion of the first substrate being fixed to a surface of the mold,
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`as the peripheral portion of the first substrate is the portion of the display panel of Morishita et
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`al. which is disposed on the mold.
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`Uehara et al. teach the use of opaque region 313 of a front panel for blocking the passage
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`of light from a peripheral non—display region 303c (see column 5, lines 10—21), the opaque region
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`being formed at all edges of the front panel as indicated by its description as a "printed frame",
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`and further teach the front panel as being larger than the first substrate in a first dimension (see
`
`Fig. 23).
`
`At the time the invention was made, it would have been obvious to a person having
`
`ordinary skill in the art to modify the invention of Morishita et al. as modified by Prest et al. by
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`providing the front panel with an opaque peripheral portion overlapping the second substrate and
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`being provided at all edges of the front panel in order to block the passage of light from a
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`peripheral non—display region and to provide the first substrate so as to be smaller in planar size
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`than the front panel as well as smaller in size than the size of the front panel in orthogonal
`
`directions thereof in order to facilitate masking of the entire peripheral non—display region of the
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`display panel and to provide space inside the housing of the display device for driver circuitry
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`while still maintaining the appearance of a large screen.
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`

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`Application/Control Number: 12/566,773
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`Page 12
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`Art Unit: 2871
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`Regarding claims 2 and 11, Morishita et al. teach an upper polarizer 26 being arranged
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`on the second substrate 1B (see Figs. 4 and 9). Prest et al. teach fixation of a front panel to an
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`upper surface of a display panel (see Fig. 1) via an adhesive material 15 which is spread across
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`the entire upper surface of the display panel. At the time the invention was made, it would have
`
`been obvious to a person having ordinary skill in the art to modify the invention of Morishita et
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`al. as modified by Prest et al. and Uehara et al. by fixing the front panel to a surface of the upper
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`polarizer by an adhesive material as motivated by a desire to firmly and uniformly attach the
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`front panel to the display panel.
`
`Regarding claims 3 and 12, Uehara et al. teach upper polarizer 107 as covering
`
`substantially the entirety of the upper surface of second substrate 101a in the device shown in
`
`Fig. 12. At the time the invention was made, it would have been obvious to a person having
`
`ordinary skill in the art to modify the invention of Morishita et al. as modified by Prest et al. and
`
`Uehara et al. by providing the upper polarizer so as to cover substantially the entirety of the
`
`upper surface of the second substrate as motivated by a desire to ensure that the whole display
`
`region is covered by the polarizer. Such a modification would have resulted in a peripheral
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`portion of the upper polarizer being covered with the opaque region formed on the peripheral
`
`portion of the front panel, since the opaque region overlaps the second substrate as discussed
`
`above.
`
`Regarding claims 4, 5, 13, and 14, Prest et al. teach disposal of a touch panel interposed
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`between a front panel and a display panel and fixed to the front panel and to the display panel via
`
`adhesive materials. Morishita et al. teach an upper polarizer 26 being arranged on the second
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`substrate 1B (see Figs. 4 and 9). At the time the invention was made, it would have been
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`

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`Application/Control Number: 12/566,773
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`Page 13
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`Art Unit: 2871
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`obvious to a person having ordinary skill in the art to modify the invention of Morishita et al. as
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`modified by Prest et al. and Uehara et al. by providing a touch panel interposed between the front
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`panel and the second substrate of the display panel and fixed to the front panel and second
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`substrate by an adhesive material so as to provide touch sensing capability to the display device.
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`Such a modification would result in the touch panel being fixed to the upper polarizer by an
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`adhesive material
`
`Regarding claims 6 and 15, Uehara et al. teach upper polarizer 107 as covering
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`substantially the entirety of the upper surface of second substrate 101a in the device shown in
`
`Fig. 12. At the time the invention was made, it would have been obvious to a person having
`
`ordinary skill in the art to modify the invention of Morishita et al. as modified by Prest et al. and
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`Uehara et al. by providing the upper polarizer so as to cover substantially the entirety of the
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`upper surface of the second substrate as motivated by a desire to ensure that the whole display
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`region is covered by the polarizer. Such a modification would have resulted in a peripheral
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`portion of the upper polarizer being covered with the opaque region formed on the peripheral
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`portion of the front panel, since the opaque region overlaps the second substrate as discussed
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`above.
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`Regarding claims 7 and 16, Prest et al. teach the touch panel 12 as having a size at least
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`as large as that of the display panel 13 (see Fig. 1). At the time the invention was made, it would
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`have been obvious to a person having ordinary skill in the art to modify the invention of
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`Morishita et al. as modified by Prest et al. and Uehara et al. so as to provide the touch panel with
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`a size at least as large as that of the display panel in order to ensure that the entirety of the
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`display area is touch sensitive. Such a modification would result in a portion of the touch panel
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`Art Unit: 2871
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`being disposed in the non—display region of the display panel and thus being covered with the
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`opaque region formed on the peripheral portion of the front panel.
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`Regarding claims 19 and 20, Morishita et al. as modified by Prest et al. and Uehara et al.
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`teach (see the last paragraph of the rejection of claims 1 and 10) the opaque region on the
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`peripheral portion of the front panel as being provided at all edges of the front panel, and the
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`front panel being larger in size than the size of the first substrate in orthogonal directions thereof.
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`Response to Arguments
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`Applicant's arguments filed October 10, 2012 have been fully considered but they are not
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`persuasive.
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`With regard to the rejection of the claims based upon the combination of Oohira, Shioya
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`et al., and Iida, discussed on pages 7—10 of the Remarks, Applicant argues that the fact that
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`Oohira teaches front panel 200 as being made of a transparent material teaches away from the
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`claimed feature of a front panel having an opaque region on a peripheral portion thereof.
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`However, the mere fact that Oohira teaches a configuration different from the claimed feature
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`discussed above does not constitute a teaching away as Oohira has provided no indication of why
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`modification of the front panel to have an opaque region on a peripheral portion thereof would be
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`detrimental. In addition, Oohira’s teaching that the front panel is generally made of glass does
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`not rule out the use of glass having an opaque region on a peripheral portion thereof; indeed, no
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`statement requiring that the periphery of the front panel be transparent is made. Furthermore,
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`Oohira’s statement that it “As a material of the front window ... it is also possible to use a
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`transparent plastic material...” (see paragraph 48 of Oohira) does not rule out the use of a
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`Art Unit: 2871
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`different material as the front panel. This being the case, it appears to the examiner that Oohira
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`does not teach away from the use of a front panel having an opaque region on a peripheral
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`portion thereof.
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`Applicant further argues on pages 8 and 9 that Shioya et al. teaches away from the feature
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`“the front panel which is fixed to a second substrate of the display panel”. However, it appears
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`that Applicant is failing to consider the rejection based on the combination of the references and
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`is instead looking at the reference individually, a means by which one cannot show
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`nonobviousness. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck &
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`C0., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The examiner further notes that Shioya et
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`al. merely teaches an alternative to the practice of fixing a front panel to a second substrate of the
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`display panel, as opposed to criticizing, discrediting, or otherwise discouraging the practice, and
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`thus Shioya et al.’s teaching fails to constitute teaching away from the claimed limitations.
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`Regarding Applicant’s arguments on pages 9 and 10 regarding lida, Applicant’s
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`statements regarding “planar size in orthogonal directions” are unclear because the term “planar
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`size” connotes area, whereas the recitation “planar size in orthogonal directions” seems to be
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`directed toward simple one—dimensional measures of length taken in orthogonal directions, yet
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`still uses the term “planar size”. Once again, it appears that Applicant is failing to consider the
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`rejection based on the combination of the references and is instead looking at the reference
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`individually, a means by which one cannot show nonobviousness. See In re Keller, 642
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`F.2d 413,208 USPQ 871 (CCPA 1981); In re Merck & C0., 800 F.2d 1091, 231 USPQ 375
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`(Fed. Cir. 1986). Furthermore, alleging that the examiner has engaged in a hindsight
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`reconstruction attempt is not grounds for demonstrating nonobviousness, as “[a]ny judgement on
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`obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long
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`as it takes into account only knowledge which was within the level of ordinary skill in the art at
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`the time the claimed invention was made and does not include knowledge gleaned only from
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`applicant’s disclosure, such a reconstruction is proper.” In re McMughlin 443 F.2d 1392, 1395,
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`170 USPQ 209, 212 (CCPA 1971). Applicant has failed to point out the manner in which the
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`examiner’s reasoning is improper and based on impermissible hindsight.
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`In response to Applicant’s arguments on pages 10 and 11 of the Remarks regarding the
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`rejections based upon Uehara et al. under 35 U.S.C. 103(a), based on line 13 of page 10 of the
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`Remarks it appears that Applicant simply misinterpreted the examiners’ statement in line 7 of
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`page 6 of the office action mailed April, 16, 2012 as reading “Uehara et a1. do not teach. . .”
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`(emphasis added), as opposed to reading “Uehara et al. do teach. . .”, which drastically changes
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`the meaning of the rejection. Applicant’s further arguments regarding fixing the front panel to
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`the second substrate, providing the front panel so as to be larger than the first substrate in planar
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`size, and the non—formation of a sidewall are all based on an anticipation analysis of Uehara et
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`al., likely due to the previously discussed misinterpretation of the rejection. However, the
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`examiner notes that the rejection based upon Uehara et al. was made under 35 U.S.C. 103(a), and
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`a thorough treatment of Applicant's arguments is present on page 6 of the office action mailed
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`April 16