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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/849,100
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`08/03/2010
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`Yasushi Nakano
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`1497.50985X00
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`7210
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`20457
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`7590
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`01/16/2013
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`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON, VA 22209-3873
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`CONNELLY, MICHELLE R
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`2874
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`MAIL DATE
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`01/16/2013
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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)
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`Office Action Summary
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`Application No.
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`Applicant(s)
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`12/849,100
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`NAKANO ET AL.
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`Examiner
`MICHELLE R. CONNELLY
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`Art Unit
`2874
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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.
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`- 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).
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`Status
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`1)IZI Responsive to communication(s) filed on 01 November 2012.
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`2a)I:l This action is FINAL.
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`2b)IZ| 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) fl is/are pending in the application.
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`5a) Of the above claim(s) 9 and 13 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) 1-8 and 10-12is/are rejected.
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`8)I:I Claim(s)
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`is/are objected to.
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`9)|Zl Claim((s)_1-13 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
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`htt
`:/'/www.us to. om’watents/init events/mnh/inq'exls or send an inquiry to PPeredback usntqt 0v.
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`Application Papers
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`10)IXI The specification is objected to by the Examiner.
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`11)|Z| The drawing(s) filed on 03 August 2010 is/are: a)IZI accepted or b)|:l objected to by the Examiner.
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`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)IZI 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| All
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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) X Notice of References Cited (PTO-892)
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`2) IX! Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date 8/3/10.
`US. Patent and Trademark Office
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`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
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`PTOL-326 (Rev. 09-12)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20130112
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`Application/Control Number: 12/849,100
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`Page 2
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`Art Unit: 2874
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`DETAILED ACTION
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`Election/Restrictions
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`Applicant’s election without traverse of Species C, claims 1, 4-8 and 10-12 in the
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`reply filed on November 1, 2012 is acknowledged. After reviewing the claims, the
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`examiner has found that claims 2 and 3 may also read on the elected Species C,
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`therefore an action on the merits of claims 1-8 and 10-12 follows.
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`Claims 9 and 13 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected species, there being no allowable generic or
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`linking claim.
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`Information Disclosure Statement
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`The prior art documents submitted by applicant in the Information Disclosure
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`Statement filed on August 3, 2010 have all been considered and made of record (note
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`the attached copy of form PTO-1449).
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`Drawings
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`Seven (7) sheets of drawings were filed on August 3, 2010 and have been
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`accepted by the examiner.
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`Specification
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`The disclosure is objected to because of the following informalities: "(Fig. 4D)” in
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`line 5 on page 12 should be — (Fig. 5D) --; and “(Fig. 4E)” in line 8 on page 12 should be
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`— (Fig. 5E)
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`Appropriate correction is required.
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`Application/Control Number: 12/849,100
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`Page 3
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`Art Unit: 2874
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`Applicant's cooperation is requested in correcting any errors of which applicant
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`may become aware in the specification.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
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`Claims 1, 2, 6, 8 and 12 are rejected under 35 U.S.C. 102(b) as being
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`anticipated by lzumi (US 2009/0091693 A1).
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`Regarding claim 1; lzumi discloses a display device (see the title, abstract and
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`Figure 8) having a thin film transistor or a color filter on a glass substrate (TFT glass
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`substrate 102 or CF glass substrate 101, respectively; see paragraph 37), and a
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`polarizing plate (polarizing plates 306a and/or 306b; see paragraph 47) attached to the
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`glass substrate with an adhesive (see paragraph 50), wherein a resin film (5a and/or 5b;
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`see paragraph 45) having no viscosity or adhesion is disposed on the polarizing plate
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`side surface of the glass substrate (see Figure 8).
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`Regarding claim 2; the polarizing plate (5a, 5b) is attached to the resin film with
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`an adhesive (see paragraph 50).
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`Regarding claim 6; the resin film is such that an ultraviolet curable (ultraviolet
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`(UV) curing resin) or heat curable resin (thermosetting resin) is applied as a coating,
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`and thereafter, cured (see paragraph 45).
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`Application/Control Number: 12/849,100
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`Page 4
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`Art Unit: 2874
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`Regarding claim 8; the thickness of the resin film is 100 micrometers or less (see
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`paragraphs 43 and 61 ).
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`Regarding claim 12; the display device is a liquid crystal device (see LC layer
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`104; see paragraph 44).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 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.
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`Claims 5, 7, 10 and 11 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over lzumi (US 2009/0091693 A1).
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`Regarding claim 5; lzumi does not specify that a resin film is formed only in an
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`area close to the perimeter of the glass substrate. However, one of ordinary skill in the
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`art would have found it obvious to form the resin film only in an area close to the
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`perimeter of the glass substrate for the purpose of providing the mechanical
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`strengthening properties (see paragraph 61) in an area close to the perimeter of the
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`glass substrate so that the resulting LCD device is less likely to be damaged during
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`further processing, handling and assembly steps, while eliminating the impact of the
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`resin film on the viewing area of the LCD device.
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`Regarding claim 7; lzumi does not specify a retardation value of the resin film (5a
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`and/or 5b). One of ordinary skill in the art would have found it obvious to have the resin
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`film have any desired retardation value, including a small retardation value of 5 nm or
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`Application/Control Number: 12/849,100
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`Page 5
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`Art Unit: 2874
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`less, for the purpose of minimizing the retardation applied to light passing there-through
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`to obtain desired transmission results, since it has been held that where the general
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`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
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`ranges involves only routine skill in the art (In re Aller, 105 USPQ 233) and that
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`discovering an optimum value of a result effective variable involves only routine skill in
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`the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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`Regarding claims 10 and 11; lzumi does not disclose that the thickness of the
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`glass substrate is 0.15 mm or less, or 0.05 mm or less, however, one of ordinary skill in
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`the art would have found it obvious to make the glass substrate be any desired
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`thickness, including a thickness of 0.15 mm or less, or 0.05 mm or less, for the purpose
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`of minimizing loss and or deflection of light travelling through the glass substrate to
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`obtain desired transmission results, since it has been held that where the general
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`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
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`ranges involves only routine skill in the art (In re Aller, 105 USPQ 233) and that
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`discovering an optimum value of a result effective variable involves only routine skill in
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`the art (In re Boesch, 617 F.2d 272, 205 USPQ 215(CCPA1980).
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`Claims 1-4, 7, 8 and 10-12 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Kim et al. (WO 2009/084832 A2) in view of Sakamoto (US
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`7,177,067 B1) and Matsumori et al. (US 2009/0103018 A1).
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`Regarding claims 1 and 12; Kim et al. discloses a display device (LCD; see the
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`abstract, and paragraphs 14 and 66) having a glass substrate (LCD glass; see
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`paragraph 66) and a polarizing plate (polarizer; see Figure 1 and paragraphs 12-18)
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`Application/Control Number: 12/849,100
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`Page 6
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`attached to the glass substrate with an adhesive (pressure-sensitive adhesive layer; see
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`Figure 1 and paragraph 66), wherein a resin film (antistatic layer; see Figure 1 and
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`paragraph 54) having no viscosity or adhesion is disposed on the polarizing plate
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`(polarizer; see Figure 1) side surface of the glass substrate (the glass substrate of the
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`LCD is disposed on the pressure sensitive adhesive layer in Figure 1 after the release
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`film is removed).
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`Kim et al. does not explicitly state that the display device (LCD) has a thin film
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`transistor or a color filter on the glass substrate. Liquid crystal displays are typically
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`formed by a first glass or plastic substrate having a color filter formed thereon and a
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`second glass or plastic substrate having a TFT filmed thereon with a liquid crystal layer
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`disposed between the first and second substrates. This arrangement is very
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`elementary in the art. For example, Sakamoto discloses a LCD with a TFT glass
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`substrate (3; see Figure 6) and Matsumori et al. disclose a LCD with a TFT glass
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`substrate (101 ; see paragraph 59). One of ordinary skill in the art would have been
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`motivated to use any known LCD with the polarizing film stack disclosed by Kim et al.,
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`including the LCD of Sakamoto and/or Matsumori et al., thereby providing a glass TFT
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`substrate adhered to the film stack in Figure 1 of Kim et al. to prevent any malfunctions
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`of the LCD associated with static electricity (see the abstract of Kim et al.).
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`Regarding claim 2; the polarizing plate (polarizer) is attached to the resin film
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`with an adhesive (polyvinyl alcohol adhesive and pressure sensitive adhesive are used
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`to attach the layers such that the polarizer is attached to the resin film see paragraphs
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`49, 51, 55 and 56 and Figure 1).
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`Application/Control Number: 12/849,100
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`Page 7
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`Art Unit: 2874
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`Regarding claim 3; a plastic substrate (resin film, base film; see Figure 1 and
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`paragraph 50) is attached to the resin film (antistatic layer) with an adhesive (pressure
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`sensitive adhesive; see paragraphs 49 and 55), and furthermore, the polarizing plate
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`(polarizer) is attached to the plastic substrate (resin film, base film) with an adhesive
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`(polyvinyl alcohol adhesive; see paragraphs 51 and 56).
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`Regarding claim 4; Sakamoto discloses a LCD (see Figure 6) comprising a
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`display panel in which a thin film transistor (TFT) is formed on the glass substrate (3;
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`TFT glass substrate), a color filter (CF, including colored layer, 25) is formed on a
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`plastic substrate (5, CF plastic facing substrate), and the glass substrate (3) and the
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`plastic substrate (5) are disposed opposed to each other.
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`Matsumori et al. discloses a LCD (see Figures 1, 2) comprising a display panel in
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`which a thin film transistor is formed on a glass substrate (glass substrate 101 is a TFT
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`substrate; see paragraph 59), a color filter (CF) is formed on a plastic substrate (CF
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`substrate 102 includes a resin film base; see paragraph 59), and the glass substrate
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`and the plastic substrate are disposed opposed to each other.
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`One of ordinary skill in the art would have found it obvious to use the film stack
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`disclosed by Kim et al. with either the LCD of Sakamoto or the LCD of Matsumori et al.
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`by adhering the film stack (see Figure 1 of Kim et al.) to the glass substrate of the LCD
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`of either Sakamoto or Matsumori et al. for the purpose of incorporating a polarizing film
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`stack in the LCDs that prevents a malfunction of the LCD associated with static
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`electricity. Thus, another plastic substrate (resin film, base film; see Figure 1 of Kim et
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`al.) is attached to the resin film (antistatic layer) of the glass substrate (TFT glass
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`Application/Control Number: 12/849,100
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`Page 8
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`Art Unit: 2874
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`substrate of either Sakamoto or Matsumori et al.) with an adhesive (pressure-sensitive
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`adhesive layer of Kim et al.), and furthermore, the polarizing plate (polarizer of Kim et
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`al.) is attached to the other plastic substrate (resin film, base film of Kim et al.) with an
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`adhesive (see paragraphs 51 and 56, polyvinyl alcohol adhesive).
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`Regarding claim 7; Kim et al. does not specify a retardation value of the resin film
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`(5a and/or 5b). One of ordinary skill in the art would have found it obvious to have the
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`resin film have any desired retardation value, including a small retardation value of 5 nm
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`or less, for the purpose of minimizing the retardation applied to light passing there-
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`through to obtain desired transmission results, since it has been held that where the
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`general conditions of a claim are disclosed in the prior art, discovering the optimum or
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`workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 233) and
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`that discovering an optimum value of a result effective variable involves only routine skill
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`in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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`Regarding claim 8; the thickness of the resin film (antistatic film of Kim et al.) is
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`100 micrometers or less (see paragraph 52).
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`Regarding claims 10 and 11; Kim et al., Sakamoto and Matsumori et al. do not
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`disclose that the thickness of the glass substrate is 0.15 mm or less, or 0.05 mm or less,
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`however, one of ordinary skill in the art would have found it obvious to make the glass
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`substrate be any desired thickness, including a thickness of 0.15 mm or less, or 0.05
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`mm or less, for the purpose of minimizing loss and or deflection of light travelling
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`through the glass substrate to obtain desired transmission results, since it has been
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`held that where the general conditions of a claim are disclosed in the prior art,
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`Application/Control Number: 12/849,100
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`Page 9
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`Art Unit: 2874
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`discovering the optimum or workable ranges involves only routine skill in the art (In re
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`Aller, 105 USPQ 233) and that discovering an optimum value of a result effective
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`variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215
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`(CCPA 1980).
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure: Yano (US 5,706,065); Okamoto (US 6,147,738); Yamaoka et al.
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`(US 6,417,904 B1); Hayashi et al. (US 2010/0327737 A1); Sasaki et al. (US
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`2011/0051070 A1); and Nakano et al. (US 2011/0255034 A1).
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`Any inquiry concerning the merits of this communication should be directed to
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`Examiner Michelle R. Connelly at telephone number (571) 272-2345. The examiner
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`can normally be reached 9:00 AM to 7:00 PM, Monday-Thursday.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Uyen-Chau Le can be reached on (571) 272-2397. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
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`Any inquiry of a general or clerical nature should be directed to the Technology
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`Center 2800 receptionist at telephone number (571) 272-1562.
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`/Michelle R. Connelly/
`Primary Patent Examiner
`Art Unit 2874
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