`
`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.
`
`12/761,505
`
`20457
`
`
`
`
` F ING DATE
`
`04/16/2010
`
`7590
`
`04/10/2013
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`Shinji SEKIGUCHI
`
`1497.50720X00
`
`1327
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1 800
`ARLINGTON, VA 22209-3873
`
`SADIO,1NSA
`
`2692
`
`MAIL DATE
`
`04/ 10/2013
`
`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.
`
`Applicant(s)
`
`
` 12/761,505 SEKIGUCHI ET AL.
`Examiner
`Art Unit
`INSA SADIO
`2692
`
`-- 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)|Zl Responsive to communication(s) filed on 27 February 2013.
`
`2a)|:l This action is FINAL.
`
`2b)IXI 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)IXI Claim(s) 1-24 is/are pending in the application.
`
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`
`6)|:| Claim(s) _ is/are allowed.
`
`7)|Xl Claim(s)_124 Is/are rejected.
`
`8)|:| Claim(s) _ is/are objected to.
`
`
`9)I:I Claim((s)
`
`are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`
`httn:,I/www usntq. quwua'ertslanr events/
`h/Indexis or send an inquiry to PPeredback us Emmi.
`
`Application Papers
`
`10)|:| The specification is objected to by the Examiner.
`
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)I:I All
`
`b)|:l Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.|:l Certified copies of the priority documents have been received in Application No. _
`
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`
`
`Attachment(s)
`
`1) IZI Notice of References Cited (PTO-892)
`
`2) D Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
`
`3) I] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20130323
`
`

`

`Application/Control Number: 12/761 ,505
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`Page 2
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`Art Unit: 2692
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`DETAILED ACTION
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`Response to Amendment
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`1.
`
`The amendment filed on 02/27/2013 and the newly added claims have been
`
`considered.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`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.
`
`2. Claims 1-24 are rejected under 35 U.S.C. 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which
`
`applicant regards as the invention.
`
`In claims 1 and 8, the claim limitation wherein no other conductive layer is
`
`provided between the conductive layer and the first substrate. This claimed invention is
`
`not supported (SEE Figs. 2, 6) since Conductive layers(XP1, XP2, YP2) are between
`
`the first substrate(1) and the conductive layer(ZP). The elastic layer 5 is NOT provided
`
`between the second substrate (6) and the conductive layer (ZP)(see Fig. 6).
`
`Claims 2-7, 9-24 are rejected the same since they are dependent on claims 1
`
`and 8.
`
`Claim Rejections - 35 USC § 103
`
`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:
`
`

`

`Application/Control Number: 12/761 ,505
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`Page 3
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`Art Unit: 2692
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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 1-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Miyamoto et al. (US 2004/0217945), hereinafter referenced as Miyamoto, in view of
`
`Chang et al. (US 2009/0188726),hereinafter referenced as Chang, in view of Suzuki
`
`(2003/0043122).
`
`As of claim 1, Miyamoto discloses a Touch sensor, display with touch sensor,
`
`and method for generating position data. Further, Miyamoto teaches wherein said
`
`An electrostatic capacitive coupling-type touch panel comprising: a plurality of
`
`coordinate detection electrodes configured for detecting XY position coordinates
`
`([0147]); a first substrate including the coordinate detection electrodes ([0136], [0137],
`
`fig.10 [91]); and a second substrate disposed to face the first substrate ([0136], [0137],
`
`fig.10 [95]).
`
`Miyamoto does not teach wherein said a conductive layer, a plurality of non-
`
`conductive spacers arranged at intervals in a plane direction of the first and
`
`second substrates, and an elastic layer, that is less rigid than the first substrates,
`
`the second substrate and the spacers, are provided between the first substrate
`
`and the second substrate; wherein one of the plurality of non-conductive spacers and
`
`the elastic layer is provided between the first substrate and the conductive layer, and
`
`the other of the plurality of non-conductive spacers and the elastic layer is provided
`
`between the second substrate and the conductive layer,
`
`

`

`Application/Control Number: 12/761 ,505
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`Page 4
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`Art Unit: 2692
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`However, Chang teaches wherein said a conductive layer, a plurality of non-
`
`conductive spacers arranged at intervals in a plane direction of the first and second
`
`substrates, and an elastic layer, that is less rigid than the first substrates, the second
`
`substrate and the spacers, are provided between the first substrate and the second
`
`substrate ([0023], [0029], [0031], [0033], [0034], please note the elastic insulating layer
`
`on paragraph [0023], [0031]); wherein one of the plurality of non-conductive spacers
`
`(figs.3, 5 [22], the first spacer 22) and the elastic layer [figs.3, 7;
`
`[27 or 478], claim 7,
`
`[0031]) ) is provided between the first substrate (fig.5 [248]) and the conductive layer
`
`(fig.7 |41A|, [0033]), and the other of the plurality of non-conductive spacers (fig.5 [22],
`
`the second spacer 22).
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto’s touch sensor with the teaching of Chang's touch panel's structure
`
`to arrange the layers, because this will help to run the touch panel efficiently.
`
`Miyamoto as modified by Chang does not teach wherein said wherein no other
`
`conductive layer is provided between the conductive layer and the first substrate.
`
`However, Suzuki teaches wherein said and wherein no other conductive layer is
`
`provided between the conductive layer (conductive material in the lower resistance film
`
`fig.5 [22] as taught in [0107]) and the first substrate(fig.5 [4A]).
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto as modified by Chang’s touch sensor with the teaching of Suzuki's
`
`spacers to isolate elements, because this will help to avoid short circuits between
`
`elements.
`
`

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`Application/Control Number: 12/761 ,505
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`Page 5
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`Art Unit: 2692
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`As of claim 2, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Chang teaches wherein said the elastic layer (fig.3 [27]) is
`
`provided between the second substrate (fig.3 [24B]) and the conductive layer (fig.3
`
`[21A]), and wherein the spacers (fig.3 [22]) are provided between the first substrate
`
`(fig.3 [24A]) and the conductive layer (fig.3 [21A]).
`
`As of claim 3, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Chang teaches wherein said the conductive layer and the
`
`elastic layer' are included in_a same layer which comprises an elastic conductive layer
`
`([0023]), and wherein the spacers are provided between the elastic conductive layer
`
`and the first substrate ([0026]).
`
`As of claim 4, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Chang teaches wherein said the elastic layer is provided
`
`between the first substrate and the conductive layer ([0023], [0027], fig.3); and wherein
`
`the spacers are provided between the second substrate and the conductive layer
`
`([0023], [0027], fig.3).
`
`As of claim 5, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 2 above. Further, Chang teaches wherein said a non-conductive layer that is
`
`more rigid than the elastic layer is provided between the conductive layer and the elastic
`
`layer or between the conductive layer and the spacers ([0029], fig.5 [37A, 378]).
`
`As of claim 6, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 2 above. Further, Chang teaches wherein said the thickness of the elastic layer
`
`(fig.3 [27]) is greater than the height of the spacers (fig.3 [22]).
`
`

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`Application/Control Number: 12/761 ,505
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`Page 6
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`Art Unit: 2692
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`As of claim 7, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 2 above. Further, Miyamoto teaches wherein said an insulating film is provided
`
`on the coordinate detection electrodes ([0038], location sensing), and wherein the
`
`spacers are arranged to be able to come into contact with the insulating film ([0147],
`
`fig.3).
`
`As of claim 8, Miyamoto discloses a Touch sensor, display with touch sensor,
`
`and method for generating position data. Further, Miyamoto teaches wherein said
`
`An electrostatic capacitive coupling-type touch panel comprising: a plurality of
`
`coordinate detection electrodes for detecting XY position coordinates ([0147]);
`
`a first substrate including the coordinate detection electrodes ([0136], [0137], fig.10
`
`[91]); and a second substrate disposed to face the first substrate ([0136], [0137], fig.10
`
`[95]), and wherein the spacers are less rigid than the first substrate and the second
`
`substrate and the conductive layer ([0022], [0123], [0029], please note that the layers
`
`can be made of different materials).
`
`Miyamoto does not teach wherein said a conductive layer is provided between
`
`the first substrate and the second substrate, and a plurality of non-conductive
`
`spacers arranged at intervals in a plane direction of the first substrate and the
`
`second substrate is provided between the conductive layer and the first
`
`substrate.
`
`However, Chang teaches wherein said a conductive layer (fig.5 [41A]) is
`
`provided between the first substrate (fig.5 [24A]) and the second substrate (fig.5 [24B]),
`
`and a plurality of non-conductive spacers (fig.5 [22]) arranged at intervals in a plane
`
`

`

`Application/Control Number: 12/761 ,505
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`Page 7
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`Art Unit: 2692
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`direction of the first substrate (fig.5 [24A]) and the second substrate (fig.5 [24B])
`
`is
`
`provided between the conductive layer (fig.5 [41B]) and the first substrate ([0029],
`
`[0031], [0033], [0034]).
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto’s touch sensor with the teaching of Chang's touch panel's structure
`
`to arrange the layers, because this will help to run the touch panel efficiently.
`
`Miyamoto as modified by Chang does not teach wherein said wherein no other
`
`conductive layer is provided between the conductive layer and the first substrate.
`
`However, Suzuki teaches wherein said wherein no other conductive layer is
`
`provided between the conductive layer fig.14A [56]) and the first substrate ([0080],
`
`fig.14A |4B|).
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto as modified by Chang’s touch sensor with the teaching of Suzuki's
`
`conductive layer to drive the electric signals, because this an alternate way to
`
`manufacture a display device.
`
`As of claim 9, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Chang teaches wherein said the spacers are comprised of
`
`beads (fig.3 [22]).
`
`As of claim 10, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Chang teaches wherein said the spacers are comprised of
`
`protrusions which are formed on the first or second substrate (fig.3).
`
`

`

`Application/Control Number: 12/761 ,505
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`Page 8
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`Art Unit: 2692
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`As of claim 11, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Chang teaches wherein said the arrangement pitch of the
`
`spacers is 20 um or more and 1000 um or less (fig.3).
`
`As of claim 12, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above. Further, Miyamoto teaches wherein said a display device including a
`
`display portion; and 5 the electrostatic capacitive coupling-type touch panel according to
`
`claim 1 provided on the display portion ([0029], [0031], [0033], [0034]).
`
`As of claim 13, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 4 above. Further, Miyamoto teaches wherein said a non-conductive layer that is
`
`more rigid than the elastic layer is provided between the conductive layer and the elastic
`
`layer or between the conductive layer and the spacers ([0029], fig.5 [37A, 378]).
`
`As of claim 14, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 3 above. Further, Miyamoto teaches wherein said an insulating film is provided
`
`on the coordinate detection electrodes ([0038], location sensing), and wherein the
`
`spacers are arranged to be able to come into contact with the insulating film ([0147],
`
`fig.3).
`
`4.
`
`Claims 15-24 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Miyamoto, in view of Chang and Suzuki, an further in view of Robrecht et al. (US
`
`2004/0233174),hereinafter referenced as Robrecht.
`
`As of claims 15, 16, 17, and 23, Miyamoto as modified Chang and Suzuki
`
`teaches the limitations of respectively claims 3, 8, 12 above.
`
`

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`Application/Control Number: 12/761 ,505
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`Page 9
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`Art Unit: 2692
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`Miyamoto as modified Chang and Suzuki does not teach wherein said the
`
`conductive layer comprises a Z electrode.
`
`However, Robrecht teaches wherein said the conductive layer comprises a Z
`
`electrode ([0029], [0049]).
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto as modified Chang and Suzuki’s touch sensor with the teaching of
`
`Robrecht 's Z electrode to run the display, because this will help to have a 3D display.
`
`As of claims 18, 19, and 20, Miyamoto as modified Chang and Suzuki teaches
`
`the limitations of respectively claims 15, 16, 17 above.
`
`Miyamoto as modified Chang and Suzuki does not teach wherein said the
`
`conductive layer is transparent.
`
`However, Robrecht teaches wherein said the conductive layer is transparent
`
`QOO4OD.
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto as modified by Chang’s touch sensor with the teaching of Robrecht
`
`'s transparent layer to put in the display, because this will help to see through the
`
`display.
`
`As of claim 21, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above.
`
`Miyamoto as modified Chang and Suzuki does not teach wherein said the
`
`conductive layer and the second substrate are both configured to be deformable,
`
`together with the elastic layer, along a shape of the spacers in response to a
`
`

`

`Application/Control Number: 12/761 ,505
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`Page 10
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`Art Unit: 2692
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`compressive force exerted on the second substrate to thereby activate
`
`coordinate detection of the location of the compressive force.
`
`However, Robrecht teaches wherein said the conductive layer and the second
`
`substrate are both configured to be deformable, together with the elastic layer, along a
`
`shape of the spacers in response to a compressive force exerted on the second
`
`substrate to thereby activate coordinate detection of the location of the compressive
`
`force ([0058]).
`
`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto as modified Chang and Suzuki’s touch sensor with the teaching of
`
`Robrecht 's deformable layer to put in the display, because this will help to input data.
`
`As of claim 22, Miyamoto as modified Chang and Suzuki teaches the limitations
`
`of claim 1 above.
`
`Miyamoto as modified Chang does not teach wherein said the conductive layer
`
`and the second substrate are both configured to be deformable, together with the
`
`spacers, along a shape of the spacers in response to a compressive force exerted
`
`on the second substrate to thereby activate coordinate detection of the location
`
`of the compressive force.
`
`However, Robrecht teaches wherein said the conductive layer and the second
`
`substrate are both configured to be deformable, together with the spacers, along a
`
`shape of the spacers in response to a compressive force exerted on the second
`
`substrate to thereby activate coordinate detection of the location of the compressive
`
`force ([0058]).
`
`

`

`Application/Control Number: 12/761 ,505
`
`Page 11
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`Art Unit: 2692
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`Therefore, it would have been obvious at the time the invention have been to
`
`combine Miyamoto as modified by Chang’s touch sensor with the teaching of Robrecht
`
`'s deformable layer to put in the display, because this will help to input data.
`
`As of claim 24, Miyamoto as modified Chang, Suzuki and Robrecht teaches the
`
`limitations of claim 22 above. Furher, Robrecht teaches wherein said the conductive
`
`layer is transparent ([0040]).
`
`Response to Arguments
`
`5.
`
`Applicant’s arguments with respect to claims 1-24 have been considered
`
`but are moot because the arguments do not apply to any of the references being used
`
`in the current rejection.
`
`Conclusion
`
`6.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to INSA SADIO whose telephone number is (571 )270-
`
`5580. The examiner can normally be reached on MONDAY through FRIDAY 8am to
`
`5pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, LunYi Lao can be reached on 571-272—7671. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571 -273-8300.
`
`

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`Application/Control Number: 12/761 ,505
`
`Page 12
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`Art Unit: 2692
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`
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`
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`
`Status information for unpublished applications is available through Private PAIR only.
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`INSA SADIO
`
`Examiner
`
`Art Unit 2629
`
`/INSA SADIO/
`
`Examiner, Art Unit 2629
`
`/LUN-YI LAO/
`
`Supervisory Patent Examiner, Art Unit 2692
`
`