`
`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
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`12/935,944
`
`10/01/2010
`
`Koji Tanabe
`
`MAT—10407US
`
`8680
`
`EXAMINER
`RATNERPRESTIA —
`12’0”“ —
`7590
`52473
`PO. BOX 980
`STERNBANE, LAURENCE I
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`2699
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`12/05/2013
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Applicant(s)
`Application No.
` 12/935,944 TANABE ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`LARRY STERNBANE first“ 2699
`
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 01 October 2010.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`a)I:| This action is 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|XI CIaim(s)1-_12is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s)_ is/are allowed.
`7)IZ| Claim(s) 1-53nd10- 12is/are rejected.
`8)IXI Claim(s)_6-9 is/are objected to.
`
`9)|:l 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
`hit
`://www.usoto. ov/ atents/init events) .h/index.
`
`
`‘3 , or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`
`
`Application Papers
`
`10)IXI The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 01 Oct 2010 is/are: a)lZl 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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4 I:I Other'
`2) E InformatIon DIscIosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 01 October 2010, 24 October 2012, 12 Agril 2013.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20131125
`
`
`
`Application/Control Number: 12/935,944
`
`Page 2
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`Art Unit: 2699
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`DETAILED ACTION
`
`1.
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`Specification & Title
`
`2.
`
`The title of the invention is objected to as not being sufficiently descriptive. A new
`
`title is required that is clearly indicative of the invention to which the claims are directed. For
`
`search and research purposes, the title of an invention should make mention of the inventive
`
`concept.
`
`The following title is suggested: “Touch Panel using Conductive Particles to Mitigate
`
`Newton Rings"
`
`The specification is objected to as follows:
`
`On page 2, line 6, Examiner is uncertain as to what is meant by “frame shape”
`
`On page 3, line 1, “waping” should be "warping"
`
`On page 6, line 18, the phrase "to prepare disperse solution" is awkward
`
`On page 7, line 8, “frame shape” revisited
`
`On page 8, line 18, the phrase “allowing the operator from operating touch panel 1001” is
`
`awkward
`
`On page 10, line 18, the phrase “blown to or printing on” is awkward
`
`
`
`Application/Control Number: 12/935,944
`
`Page 3
`
`Art Unit: 2699
`
`Claim Objections
`
`3.
`
`Claim 4 is objected to for informalities: On line 2, there should be an "a" before "first
`
`and second" as in "a first and second upper electrode". Same for the next limitation. Claims 6-9
`
`are objected to as being exact duplicates of claims 4 & 5. That is, claim 6 recites the same
`
`limitations as does claim 4. Claim 7 recites the same limitations as does claim 5. Ditto for
`
`claims 7 & 8. Applicant is advised that although claims 6—9 are merely objected to (and not
`
`rejected per se) this does n_ot indicate allowable subject matter.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The following is a quotation of the appropriate paragraphs of pre—AIA 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless ,
`
`(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.
`
`5.
`
`Claims 1-3 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by
`
`Okamoto (JP 64—052353, or “Okamoto” hereinafter). Okamoto was listed as a reference on the
`
`IDS filed 12 April 2013. A partial translation was provided by Applicant. Examiner also makes
`
`use of the abstract provided by the Patent Aspects of Japan (PAJ). When referring to said
`
`abstract, Examiner will state as such. Otherwise, reference is being made to the partial
`
`translation as provided by Applicant. Note that the figure referenced on the abstract is figure 1,
`
`which is viewable on the Japanese version of the document (also provided).
`
`Regarding claim 1, Okamoto discloses a touch panel (see line 4, where Okamoto teaches
`
`a transparent touch panel). Okamoto discloses the panel comprises a 1ight—transmittab1e upper
`
`
`
`Application/Control Number: 12/935,944
`
`Page 4
`
`Art Unit: 2699
`
`board (see lines 6—7, where Okamoto teaches an upper glass plate 2); a light—transmittable upper
`
`resistive layer provided on a lower surface of the upper board (see line 7, where Okamoto
`
`teaches upper electrode 1); a light—transmittable lower resistive layer having an upper surface
`
`facing a lower surface of the upper resistive layer with a predetermined gap between the lower
`
`resistive layer and the lower surface of the upper resistive layer (see lines 7—8, where Okamoto
`
`teaches lower glass plate 4 having lower electrode 3; see also figure 1 on abstract, which depicts
`
`upper glass plate 2 and lower glass plate 4 with a defined gap in between, said gap predetermined
`
`by spacer 5, as described on line 8). Figure 1 further depicts upper electrode 1 and lower
`
`electrode 3 disposed on facing surfaces of upper glass plate 2 and lower glass plate 4.
`
`Okamoto further discloses a light—transmittable lower board provided on a lower surface
`
`of the lower resistive layer (see line 7, lower glass plate); a plurality of first conductive particles
`
`provided on at least one of the lower surface of the upper resistive layer and the upper surface of
`
`the lower resistive layer (see lines 11—13, where Okamoto teaches second spacer particles with a
`
`conductive surface); and a transparent resin portion for fixing the plurality of first conductive
`
`particles to the at least one of the lower surface of the upper resistive layer and the upper surface
`
`of the lower resistive layer (see lines 15—18, where Okamoto teaches the particles are mixed in a
`
`transparent resin and provided on one or the other of the glass plates).
`
`Regarding claim 2, Okamoto discloses the touch panel of claim 1. Okamoto further
`
`discloses a plurality of transparent particles dispersed in the transparent resin portion, the
`
`plurality of transparent particles having diameters smaller than diameters of the plurality of first
`
`conductive particles (see lines 13—15, where Okamoto teaches third spacer particles 9 having a
`
`
`
`Application/Control Number: 12/935,944
`
`Page 5
`
`Art Unit: 2699
`
`smaller diameter —— the smallest diameter — thus smaller than the second conductive spacer
`
`particles; the third spacer particles made of glass or glass fiber, thus transparent).
`
`Regarding claim 3, Okamoto discloses the touch panel of claim 1. Okamoto further
`
`discloses a plurality of second conductive particles provided on at least one of the lower surface
`
`of the upper resistive layer and the upper surface of the lower resistive layer, the plurality of
`
`second conductive particles having diameters smaller than diameters of the plurality of first
`
`conductive particles (see lines 13—15, where Okamoto teaches third spacer particles 9 having a
`
`smaller diameter — the smallest diameter — thus smaller than the second conductive spacer
`
`particles; the third spacer particles made of glass or glass fiber, known to have conductive
`
`properties).
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`The following is a quotation of pre—AIA 35 USC. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`7.
`
`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148 USPQ 459
`
`(1966), that are applied for establishing a background for determining obviousness under pre—
`
`AIA 35 USC. 103(a) are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`
`
`Application/Control Number: 12/935,944
`
`Page 6
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`Art Unit: 2699
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`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`8.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre—AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the
`
`various claims was commonly owned at the time any inventions covered therein were made
`
`absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and invention dates of each claim that was not commonly owned at the
`
`time a later invention was made in order for the examiner to consider the applicability of pre—
`
`AIA 35 U.S.C. 103(c) and potential pre—AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre—AIA
`
`35 U.S.C. 103(a).
`
`9.
`
`Claims 4 & 5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Okamoto, as applied to claim 1 above, in view of Divigalpitiya et al. (US PGPUB 2003/0205450
`
`A1, or "Divigalpitiya" hereinafter).
`
`Regarding claim 4, Okamoto discloses the touch panel of claim 1. Okamoto further
`
`discloses first and second [sic] upper electrode provided at both ends of the upper resistive layer
`
`(see abstract, figure 1, where Okamoto depicts a pair of upper electrodes 1 provided at both ends
`
`of the underside of upper glass plate 2); first and second [sic] lower electrode provided at both
`
`ends of the lower resistive layer (see abstract, figure 1, where Okamoto depicts a pair of lower
`
`electrodes provided at both ends of the top side of lower glass plate 4).
`
`
`
`Application/Control Number: 12/935,944
`
`Page 7
`
`Art Unit: 2699
`
`Okamoto does not appear to explicitly disclose a circuit connected to the first and second
`
`upper electrode and the first and second lower electrode, the electronic circuit being operable to
`
`detect a voltage of one of the second upper electrode and the second lower electrode while
`
`applying a voltage between the first upper electrode and the first lower electrode while a portion
`
`of the upper board is depressed, and execute a predetermined operation when the detected
`
`voltage becomes a predetermined voltage. However, in a similar field of endeavor, Divigalpitiya
`
`discloses a pressure—activated switch and touch panel; at ‘][44, Divigalpitiya teaches:
`
`
`some
`[0044]
`In
`
`
`
`preferable 'fimc
`
`to
`
`be
`
`relatively
`
`embodiments,
`
`it
`
`may
`
`be
`
`some
`
`the jparticle size distribution
`
`and
`narrow,
`in
`
`
`circumstances it may be preferab'e that all the
`
`In
`
`particles are substantially the same size.
`
`some embodiments, it may be desirable to have a
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`For
`
`two
`
`
`
`bi-modal distribution of partic'e sizes.
`
`example,
`it may
`
`
`
`di""erent
`
`be desirable
`
`to
`
`have
`
`
`types of particles,
`
`larger particles
`
`ard
`
`smaller
`
`particles,
`
`dispersed
`
`in
`
`the
`
`
`
`composite material.
`
`embodiment
`
`ircludes a bimodal distribution (If particles,
`
`
`the larger particles car be of "ow conductivity
`
`In one
`
`that
`
`ard the
`
`smaller particles
`
`car
`
`be of higher
`
`and the particles distributed in
`condactivity,
`
`SLCl’l
`a manner
`that
`low force
`touches
`cause
`
`higl“
`ard
`e' eCtri ca'
`
`e'eCtrica' connections via the 'arger partic'es
`
`
`cause
`touches
`additional
`force
`via
`smaller
`connections
`the
`
`
`Signals from the low force touches
`
`from the
`
`particles.
`
`would
`
`thus
`
`generated by higher
`
`be distinct
`
`force touches.
`
`signals
`
`A touch
`
`sensor using a composite material with such a
`
`bimodal particle distribution might be used to
`
`be able to highlight an icon,
`
`forces
`
`low touch
`
`
`
`represented tux
`the ixxni by applying ea higher
`
`touch
`force
`at
`the
`same
`location,
`thus
`
`
`performing a kird of double-click operation by
`
`force at
`
`simply' applying' additional
`location.
`
`the same
`
`and
`
`to
`
`open
`
`the
`
`program
`
`for example, at
`
`
`
`
`
`Application/Control Number: 12/935,944
`
`Page 8
`
`Art Unit: 2699
`
`Thus Divigalpitiya teaches detecting a plurality of electrical connections between pairs of
`
`facing electrodes, the electrodes being electrically separated from each other when no pressure is
`
`exerted upon the touch screen, but an electrical connection being made when pressure is applied.
`
`Divigalpitiya further teaches that the signals resulting from varying degrees of pressure would be
`
`different, thus ability to detect different voltages, thus a voltage applied between the first upper
`
`electrode and first lower electrode while a portion of the upper board is depressed. Divigalpitiya
`
`further teaches varying output (highlighting an icon vs. double clicking on same icon) based on
`
`the differing amount of pressure exerted upon the touch screen, thus a circuit for performing a
`
`predetermined operation when a detected voltage becomes a predetermined voltage, as a larger
`
`amount of applied pressure will cause more electrical connections to be made, thus increasing
`
`the detected voltage.
`
`At the time of the invention, it would have been obvious to one of ordinary skill in the art
`
`to apply the teaching of Divigalpitiya to the touch screen of Okamoto. The rationale to combine
`
`would have been to improve the functionality of the device by incorporating force sensitive
`
`resistance. Okamoto teaches a “base” device to determine positional resolution of a transparent
`
`touch switch (abstract), which the claimed invention can be seen as an "improvement" in that
`
`differential pressure is detected through differential voltage. Divigalpitiya's known teaching of
`
`using different—sized spacer particles to detect light vs. heavy pressure on a touch screen would
`
`have been recognized by one of ordinary skill in the art as applicable to the device of Okamoto.
`
`The result would have been a touch screen that could be used not only for positional resolution,
`
`but also for multi—function switching based on the amount of pressure detected at a certain point
`
`
`
`Application/Control Number: 12/935,944
`
`Page 9
`
`Art Unit: 2699
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`(using force sensitive resistance) which makes for an improved, more useful device.
`
`Furthermore, given that both Divigalpitiya and Okamoto use and disclose similar technology, the
`
`combination could have been more easily made without undue experimentation and with a
`
`reasonable expectation of success with predictable results. Therefore, the claimed subject matter
`
`would have been obvious to one of ordinary skill in the art at the time the invention was made.
`
`Regarding claim 5, the combination of Okamoto and Divigalpitiya discloses the touch
`
`panel of claim 4. The combination further discloses the electronic circuit is operable to detect
`
`the depressed portion of the upper board when the detected voltage becomes the predetermined
`
`voltage (see Okamoto @ abstract, last line, where Okamoto teaches positional resolution of a
`
`transparent touch switch, thus determining the depressed portion of the upper glass plate; see
`
`also Divigalpitiya @ ‘][44, where Divigalpitiya teaches two different switching actions, thus a
`
`detected voltage becoming a predetermined voltage).
`
`10.
`
`Claims 10-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Okamoto, as applied to claim 1 above, in view of Arakawa et al. (US PGPUB 2003/0071794 Al,
`
`or “Arakawa” hereinafter).
`
`Regarding claim 10, Okamoto discloses the touch panel of claim 1. Okamoto does not
`
`appear to explicitly disclose the transparent resin portion has a refractive index smaller than a
`
`refractive index of the upper resistive layer. However, in a similar field of endeavor, Arakawa
`
`teaches a transparent conductive film; at ‘][70, Arakawa teaches resin films are preferred due to
`
`high transparency and low refractive index. At ‘fllOZ, Arakawa teaches that resins are used to
`
`form low—refractive—index layers, after teaching that known anti—reflection multi—layer types are
`
`
`
`Application/Control Number: 12/935,944
`
`Page 10
`
`Art Unit: 2699
`
`comprised of alternate high—refractive—index layers and low—refractive—index layers. Thus, in
`
`order to inhibit reflection between adjacent layers, a resin layer adjacent to an upper resistive
`
`layer would have a lower refractive index.
`
`At the time of the invention, it would have been obvious to one of ordinary skill in the art
`
`to combine the teaching of Arakawa with the touch panel of Okamoto. The rationale to combine
`
`would have been to apply a known method of reflection mitigation to the device of Okamoto,
`
`which would have resulted in an improved product. Furthermore, given that both Arakawa and
`
`Okamoto use and disclose similar technology, the combination could have been more easily
`
`made without undue experimentation and with a reasonable expectation of success with
`
`predictable results. Therefore, the claimed subject matter would have been obvious to one of
`
`ordinary skill in the art at the time the invention was made.
`
`Regarding claim 11, the combination of Okamoto and Arakawa discloses the touch
`
`panel of claim 10. The combination further discloses the transparent resin portion has the
`
`refractive index smaller than a refractive index of the lower resistive layer (given that Arakawa
`
`teaches that adjacent layers should have alternating high— and low—refractive—indices, and given
`
`that the resin layer of Okamoto is adjacent to both the upper and the lower resistive layer, the
`
`resin layer of the combination would inherently have a lower refractive index than both the upper
`
`and the lower resistive layer).
`
`Regarding claim 12, Okamoto discloses the touch panel of claim 1. Okamoto does not
`
`appear to explicitly disclose the transparent resin portion has a refractive index smaller than a
`
`refractive index of the lower resistive layer. However, in a similar field of endeavor, Arakawa
`
`teaches a transparent conductive film; at ‘][70, Arakawa teaches resin films are preferred due to
`
`
`
`Application/Control Number: 12/935,944
`
`Page ll
`
`Art Unit: 2699
`
`high transparency and low refractive index. At ‘fllOZ, Arakawa teaches that resins are used to
`
`form low—refractive—index layers, after teaching that known anti—reflection multi—layer types are
`
`comprised of alternate high—refractive—index layers and low—refractive—index layers. Thus, in
`
`order to inhibit reflection between adjacent layers, a resin layer adjacent to a lower resistive layer
`
`would have a lower refractive index.
`
`At the time of the invention, it would have been obvious to one of ordinary skill in the art
`
`to combine the teaching of Arakawa with the touch panel of Okamoto. The rationale to combine
`
`would have been to apply a known method of reflection mitigation to the device of Okamoto,
`
`which would have resulted in an improved product. Furthermore, given that both Arakawa and
`
`Okamoto use and disclose similar technology, the combination could have been more easily
`
`made without undue experimentation and with a reasonable expectation of success with
`
`predictable results. Therefore, the claimed subject matter would have been obvious to one of
`
`ordinary skill in the art at the time the invention was made.
`
`Conclusion
`
`ll.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure:
`
`0
`
`Kono et al. (US PGPUB 2001/0043291 Al) discloses a screen
`
`input type display device; at figure 20 & ‘][l6—‘][l9 Kono teaches separating
`
`the top and bottom substrates of a touch screen by using metal particles in
`
`epoxy.
`
`0
`
`Saito et al.
`
`(US PGPUB 2007/0184260 Al) discloses an anti—
`
`newton ring sheet and touch panel using the same; at abstract, Saito
`
`
`
`Application/Control Number: 12/935,944
`
`Page 12
`
`Art Unit: 2699
`
`teaches an anti—newton ring sheet using hybrid organic—inorganic resin and
`
`fine particles on one surface of a transparent substrate.
`
`0
`
`Jin et al. (US Patent 4,644,101) discloses a pressure—responsive
`
`position sensor; at column 2, lines 52—64, Jin teaches a composite medium
`
`with two conductor assemblies;
`
`the composite medium consisting of
`
`conductive particles surrounded by resin.
`
`0
`
`Nashiki et al. (US Patent 8,182,898 B2) discloses a touch panel; at
`
`claim 10, Nashiki teaches a resin layer with minute particles.
`
`0
`
`Tanabe et al. (US Patent 7,830,366 B2) discloses a touch panel; at
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`column 2, lines 3—12, Tanabe teaches conductive particles dispersed in
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`synthetic resin.
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`Any inquiry concerning this communication or earlier communications from the
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`Application/Control Number: 12/935,944
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`Page 13
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`Art Unit: 2699
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`a USPTO Customer Service Representative or access to the automated information system, call
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`/Larry Stembane
`Examiner
`Art Unit 2699
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`/Dwayne Bost/
`Supervisory Patent Examiner,
`Art Unit 2699
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`