`
`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
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
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`12/702,813
`
`
`
`
` FILING DATE
`
`02/09/2010
`
`nie
`
`Hau
`at
`Hauptman Ham, LLP
`2318 Mill Road
`Suite 1400
`Alexandria, VA 22314
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`Atsuo NAKAGAWA
`
`1497-50561X00
`
`2820
`
`MERLIN,JESSICA M
`
`2871
`
`MAIL DATE
`
`07/13/2016
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
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`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)
`
`

`

`
`Application No.
`Applicant(s)
`
` 12/702,813 NAKAGAWAETAL.
`Examiner
`Art Unit
`AIA (First Inventor toFile)
`Office Action Summary
`
`2871JESSICA M. MERLIN No
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS GOMMUNICATION.
`Extensions of time may be available under the provisions of 37 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, evenif 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
`
`-
`-
`
`
`
`Disposition of Claims*
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`5)K] Claim(s) 1.8.9 and 12-16 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`is/are withdrawn from consideration.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) Claim(s) 1,8,9 and 12-16 is/are rejected.
`8)L] Claim(s)___ is/are objectedto.
`
`9)L] Claim(s)
`are subjectto 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
`2 or send an inquiry to PPHfeedback@uspte.dov. hito-//www.usoto.gov/oatents/init events/poh/index js
`
`Status
`
`1) Responsive to communication(s) filed on March 15, 2016.
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon___
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)KX] The drawing(s)filed on February 9, 2010 is/are: a)X] accepted or b)[_] 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)X] All
`b)[-] Some** c)L] None ofthe:
`1.X] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin 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) X Notice of References Cited (PTO-892)
`.
`.
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) TC Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) L] other:
`.
`
`.
`
`Part of Paper No./Mail Date 20160708
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`

`

`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1,
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`The present application is being examined underthe pre-AJAfirst to invent provisions.
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`Response to Amendment
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`2.
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`Receipt is acknowledged of applicant’s amendmentfiled March 15, 2016. Claims 2-7,
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`10, and 11 have been cancelled without prejudice. Claims 1, 8, 9, and 12-16 are pending and an
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`action on the merits is as follows.
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`Claim Objections
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`3.
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`Claim | is objected to because of the following informalities: In line 12 of claim 1,
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`“layer-covers” should be replaced with “layer covers” in order to correct what appears to be a
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`typographical error. Appropriate correction is required.
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`Claim Rejections - 35 USC § 103
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`4,
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which formsthe basis forall
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`obviousnessrejections set forth in this Office action:
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`(a) A patent may not be obtained though the inventionis not identically disclosed or described as set
`forth in section 102, 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.
`
`5,
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`Claims 1, 9 and 12-16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Tsuji et al. (US 2009/0086123 A1) in view of Hinata (US 2009/0096763
`
`Al).
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`

`

`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 3
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`In regardto claim 1, Tsuji et al. discloses a display device comprising (see e.g. Figure
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`2):
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`a display panel 1;
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`a light transmitting cover 9 which covers a display screen of the display 1;
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`a first layer 10 which is a printed layer between the cover 9 and a secondlayer 11/14; and
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`wherein the second layer 11/14 coversthe first layer 10;
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`wherein the first layer 10 is printed on a surface of the cover 9 facing the display panel1;
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`wherein the first layer 10 surrounds a center portion of the cover 9 in plain view;
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`wherein the second layer covers the first layer 11/14 and the center portion of the cover
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`10 in plain view.
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`Tsuji et al. is silent as to
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`a sheet of a touch panel disposed between the cover and the display panel,
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`wherein a flexible printed circuit board connects with the touch panel;
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`wherein an outside edge portion of the touch panelis inside against an outside edge
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`portion of the first layer in plain view;
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`wherein the flexible printed circuit board extends from the outside portion of the touch
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`panel;
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`wherein the flexible printed circuit board has in integrated circuit chip;
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`wherein the touch panel coversthe first layer;
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`wherein a part of the flexible printed circuit board covers the first layer; and
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`wherein the integrated circuit chip doesn’t coverthefirst layer.
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`However, Hinata discloses (see e.g. Figure 7):
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`

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`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 4
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`a sheet of a touch panel 1 disposed between the cover 91 and the display panel 5,
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`wherein a flexible printed circuit board 33 connects with the touch panel1;
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`wherein an outside edge portion of the touch panel1 is inside against an outside edge
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`portion of the first layer 92 in plain view;
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`wherein the flexible printed circuit board 33 extends from the outside portion of the touch
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`panel 1;
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`wherein the touch panel 1 coversthe first layer 92; and
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`wherein a part of the flexible printed circuit board 33 coversthe first layer 92.
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`Given the teachings of Hinata, it would have been obviousto one of ordinary skill in the
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`art at the time of the invention to modify the display device of Tsuji et al. with a sheet of a touch
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`panel disposed between the cover and the display panel, wherein a flexible printed circuit board
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`connects with the touch panel; wherein an outside edge portion of the touch panelis inside
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`against an outside edge portion ofthe first layer in plain view; wherein the flexible printed circuit
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`board extends from the outside portion of the touch panel; wherein the touch panel covers the
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`first layer; and wherein a part of the flexible printed circuit board coversthe first layer.
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`Doing so would provide a meansfor an external user to input commandsinto the display
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`device.
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`Tsuji et al., in view of Hinata, is silent as to
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`wherein the flexible printed circuit board hasin integrated circuit chip;
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`wherein the integrated circuit chip doesn’t coverthefirst layer.
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`However, one of ordinary skill in the art would recognize integrating the IC
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`driver/circuit chip onto the printed circuit board as art recognized equivalentstructure.
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`

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`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 5
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`Further, one of ordinary skill would recognize " wherein the integrated circuit chip doesn’t
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`coverthe first layer” as obvious to one having ordinary skill in the art at the time the invention, since
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`it has been held that rearranging parts of an invention involves only routine skill in the art (/n re
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`Japikse, 86 USPQ 70).
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`It would have been obvious to one of ordinary skill in the art at the time of the
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`invention to modify the display device of Tsuji et al., in view of Hinata, with wherein the
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`flexible printed circuit board has in integrated circuit chip; wherein the integrated circuit chip
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`doesn’t cover thefirst layer.
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`Doing so would provide a rearrangementof parts that requires only routine skill in the
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`art.
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`In regardto claim 9, Tsuji et al. discloses wherein the second layer 11/14 is a
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`preventing-flaw layer.
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`In regardto claim 12, Tsuji et al. discloses
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`wherein the cover 9 has a plurality of corners in plain view (see e.g. Figures 3-4); and
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`wherein the first layer 10 is printed on all of the plurality of comerin plain view (see e.g.
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`paragraph [0037]]).
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`In regardto claim 13, Tsuji et al. discloses wherein the first layer 10 is a frame shape
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`(see e.g. paragraph [0037]).
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`In regardto claim 14, Tsuji et al. discloses wherein the cover 9 is made ofglass (see e.g.
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`paragraph [0036]]).
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`In regardto claim 15, Tsuji et al. discloses wherein the cover 9 has a base material layer
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`

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`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 6
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`In regardto claim 16, Tsuji et al. discloses wherein the base material layer is an acrylic
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`resin layer (see e.g. paragraph [0036]).
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`6.
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`Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tsuji
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`et al. (US 2009/0086123 A1) in view of Hinata (US 2009/0096763 A1) and further in view of
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`Choet al. (US 2009/0091677 A1).
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`In regardto claim 8, Tsuji et al., in view of Hinata, discloses the limitations as applied
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`to claim | above, but fails to disclose wherein the second layer is made of a material harder than
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`a material of the first layer.
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`However, Choet al. discloses wherein the second layer 211 is made of a material harder
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`than a material of the first layer 201 (see e.g. Figure 4 and paragraph [0038] whereit is noted
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`that the hard coating layer is formed over a black matrix layer in order to provide a protection
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`to the layers internal to the display device. One of ordinary skill in the art would recognize
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`utilizing such a construction between the display and the cover layer in order to provide
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`protection to those externallayers).
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`Giventhe teachings of Choet al., it would have been obviousto one of ordinary skill in
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`the art at the time of the invention to modify the display device of Tsuji et al., in view of Hinata,
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`with wherein the second layer is made of a material harder than a material of the first layer.
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`Doing so would provide a meansfor providing protection to the internal display
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`components.
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`

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`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 7
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`Response to Arguments
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`7.
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`Applicant’s arguments with respect to claims 1, 8, 9, and 12-16 have been considered but
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`are moot because the arguments do not apply to any of the references being used in the current
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`rejection.
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`8.
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`In regard to independent claim 1, applicant’s arguments, on pages 6-9 of the Remarks,
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`that the previously applied priorart fails to disclose all of the limitations of claim 1, have been
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`fully considered and are appreciated. However, the newly cited rejection, necessitated by
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`amendment, disclosesall of the limitations of claim 1, as cited above.
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`Conclusion
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`9.
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`The prior art made of record and notrelied upon is considered pertinent to applicant's
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`disclosure.
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`10.
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`The following references are cited for disclosing related limitations of the applicant’s
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`claimed anddisclosed invention: Kasajima (US 2010/0224424 A1) and Kubota (US
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`2009/0237602 A1).
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`11.
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`Applicant's amendmentnecessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortenedstatutory period for reply to this final action is set to expire THREE
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`MONTHSfrom the mailing date of this action. In the eventafirst reply is filed within TWO
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`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
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`

`

`Application/Control Number: 12/702,813
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`Art Unit: 2871
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`Page 8
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`the end of the THREE-MONTHshortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHSfrom the date of this
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`final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JESSICA M. MERLIN whosetelephone numberis (571)270-
`
`3207. The examiner can normally be reached on Monday-Thursday 6:00AM-4:30 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Edward Glick can be reached on (571) 272-2490. The fax phone numberfor the
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`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe 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.
`
`Jessica M. Merlin
`July 8, 2016
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`

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`Application/Control Number: 12/702,813
`
`Art Unit: 2871
`
`/JESSICA M MERLIN/
`Primary Examiner, Art Unit 2871
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`Page 9
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`