`
`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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`13/014,088
`
`20457
`
`
`
`
` FILING DATE
`
`
`01/26/2011
`
`7590
`
`03/27/2013
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`
`Shinji SEKIGUCHI
`
`1497.51382X00
`
`9943
`
`ANTONELLI, TERRY, STOUT & KRAUS, LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON,VA 22209-3873
`
`GONZALEZ, IRASEMA
`
`2697
`
`MAIL DATE
`
`03/27/2013
`
`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)
`
`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`
` 13/014,088 SEKIGUCHI, SHINJI
`Examiner
`Art Unit
`lrasema Gonzalez
`2697
`
`-- 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 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 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`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).
`
`Status
`
`1)X] Responsive to communication(s)filed on 26 January 2011.
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L]
`Anelection was made bythe applicant in responseto a restriction requirementset forth during the interview on
`___; the restriction requirement and election have beenincorporated into this action.
`4)L] Sincethis 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)X] Claim(s) 1-74 is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claims)
`is/are allowed.
`7)X] Claim(s) 1-14 is/are rejected.
`8)L] Claim(s) ___ 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 beeligible to benefit from the Patent Prosecution Highway
`program ata participating intellectual property office for the corresponding application. For more information, please see
`http/www.usoto.qov/patents/init events/pph/index isp or send an inquiry to PPHfeedback@uspto.qov.
`
`Application Papers
`
`10)L] The specification is objected to by the Examiner.
`
`11) The drawing(s)filed on
`is/are: a)[_] 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)] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)XJ All
`b)L] Some * c)L] None of:
`1.X] Certified copiesof the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copiesof 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) x Notice of References Cited (PTO-892)
`
`2) X Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) | Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) Cc] Other:
`
`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130314
`
`

`

`Application/Control Number: 13/014,088
`Art Unit: 2697
`
`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`1.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousnessrejections setforth 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 thistitle, 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.
`
`2.
`
`Claim 1 — 3, 5-8, 10, 12-14 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Hsu et al US 7,030, 860, henceforth known as Hsu and Tanabe US,
`
`7,014,916, henceforth known as Tanabe.
`
`In regards with claim 1, Hsu discloses a capacitive coupling type touch panel,
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`comprising (See Fig. 1): a plurality of coordinate detection electrodes for detecting X-Y
`
`position coordinates (See Fig. 9; 64 and 70); a first substrate including the plurality of
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`coordinate detection electrodes (See Fig. 9; 62); and a second substrate disposed to be
`
`opposedto the first substrate (See fig. 9; 80), wherein the capacitive coupling type
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`touch panelfurther comprises, betweenthe first substrate and the second substrate: a
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`conductive layer having conductivity (See Fig. 9; 78); a nonconductive layer supporting
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`the conductive layer (See Fig. 9; 74).
`
`Hsufails to disclose a plurality of nonconductive spacers that are formed at
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`intervals in a plane direction of the first substrate and the second substrate; and an
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`elastic layer that is lowerin rigidity than the first substrate, the second substrate, and
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`the plurality of nonconductive spacers.
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`

`

`Application/Control Number: 13/014,088
`Art Unit: 2697
`
`Page 3
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`However, Tanabe discloses a plurality of nonconductive spacers that are formed
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`at intervals in a plane direction of the first substrate and the second substrate (See Fig.
`
`1; 31); and an elastic layer that is lowerin rigidity than the first substrate (See Fig.1; 23),
`
`the second substrate, and the plurality of nonconductive spacers.
`
`At the time the invention was made, it would have been obvious to one of
`
`ordinary skill in the art to modify Hsu’s capacitive touch panel to include Tanabe’s
`
`nonconductive spacers and elastic layer because such a modification is the result of
`
`combining prior art elements according to known methods to yield predictable results.
`
`More specifically, Hsu’s capacitive touch panel as modified by Tanabe’s nonconductive
`
`spacers and elastic layer can yield a predictable result of having a touch panel with
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`nonconductive spacers and an elastic layer Thus, a person of ordinary skill would have
`
`appreciated including in Hsu’s capacitive touch panel the ability to do Tanabe’s
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`nonconductive spacers and elastic layer since the claimed invention is merely a
`
`combination of old elements, and in the combination each element merely would have
`
`performed the same function asit did separately, and one of ordinary skill in the art
`
`would have recognizedthat the results of the combination were predictable.
`
`In regards with claim 2, Hsu as modified by Tanabe disclose the capacitive
`
`coupling type touch panel according to claim 1. Hsu disclosesafirst substrate (See Fig.
`
`9, 62), a second substrate (See Fig. 9; 80) a conductive layer (See Fig. 9; 78), anda
`
`nonconductive layer (See Fig. 9; 74). Tanabe further discloses the elastic layer is
`
`formed between a substrate (See Fig. 1; 28) and a conductive layer (See Fig. 1; 25)
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`supported a nonconductive layer (See Fig. 1; 21), and wherein the plurality of
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`

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`Application/Control Number: 13/014,088
`Art Unit: 2697
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`Page 4
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`nonconductive spacers (See Fig. 1; 31) are formed between a substrate (See Fig. 1; 26)
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`and a conductive layer (See Fig. 1; where 31 is between a substrate 26 and a
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`conductive layer 25).
`
`In regards with claim 3, Hsu as modified by Tanabe disclose the capacitive
`
`coupling type touch panel according to claim 1. Hsu further disclosesafirst substrate
`
`(See Fig. 9; 64), a conductive layer (Seefig. 9; 78), and a second substrate (See Fig. 9;
`
`80). Tanabe disclosesthe elastic layer is formed between a substrate (See Fig 1; 26)
`
`and the conductive layer (See Fig. 1; 25) supported by the nonconductive layer (See
`
`Fig. 1; 21), and wherein the plurality of nonconductive spacers (See Fig. 1; 31) are
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`formed between the second substrate and the conductive layer (See Fig. 1 where 31 is
`
`between 28 and a conductive layer 25)
`
`In regards with claim 5, Hsu as modified by Tanabe disclose the capacitive
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`coupling type touch panel according to claim 2, wherein the elastic layer is formed in a
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`thicknessthat is larger than a height of each of the plurality of nonconductive spacers
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`(See Fig. 2; where 23 is thicker than 31).
`
`In regards with claim 6, Hsu as modified by Tanabe disclose the capacitive
`
`coupling type touch panel according to claim 2. Hsu further discloses an insulating film
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`formed on the plurality of coordinate detection electrodes (See Fig. 9; 74). Tanabe
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`further discloses a plurality of nonconductive spacers (See Fig. 1; 31).
`
`Hsu discloses the claimed invention except for the plurality of nonconductive
`
`spacers. It would have been obvious to one having ordinary skill in the art at the time
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`the invention was madeto placethe plurality of nonconductive spacers contacting the
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`

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`Application/Control Number: 13/014,088
`Art Unit: 2697
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`Page 5
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`insulating film, since it has been held that rearranging parts of an invention involves only
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`routine skill in the art. In re Japikse, 86 USPQ 70.
`
`In regards with claim 7, Hsu as modified by Tanabe disclose the capacitive
`
`coupling type touch panel according to claim 1. Tanabefurther discloses the plurality of
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`nonconductive spacers comprise beads (See Fig. 1; 31 Col 3 55-58).
`
`In regards with claim 8, Hsu as modified by Tanabe disclose The capacitive
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`coupling type touch panel according to claim 1, wherein the plurality of nonconductive
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`spacers comprise protrusions protruding from one ofthe first substrate side and the
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`second substrate side (See Fig. 1; 31).
`
`In regards with claim 10 Hsu as modified by Tanabe disclose the capacitive
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`coupling type touch panel according to claim 1. Hsu further discloses a display device
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`with a touch panel, comprising: a display device including a display portion; and the
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`capacitive coupling type touch panel is disposed on the display portion (Col. 9 Il. 33-
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`48).
`
`Claims 12-14 havelimitations similar to those in claim 5 treated in the above
`
`rejection, and are metby the references as discussed above.
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`3.
`
`Claim 4 and 11 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Hsuin view of Tanabe, and further view of Miyazaki et al. WO2009/150899.
`
`In regards with claim 4, Hsu as modified by Tanabe disclose the capacitive
`
`coupling type touch panel according to claim 2. Hsu as modified by Tanabefail to
`
`disclose the elastic layer comprises three layers including an intermediate layer and two
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`

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`Application/Control Number: 13/014,088
`Art Unit: 2697
`
`Page 6
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`layers sandwiching the intermediate layer, and wherein the intermediate layer is higher
`
`in rigidity than the two layers sandwiching the intermediate layer.
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`However, Miyazaki discloses an elastic layer comprising three layers including an
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`intermediate layer (See Fig. 1; 506), and two layers sandwiching the intermediate layer
`
`(See Fig. 1 50a and 50c).
`
`Miyazaki discloses the claimed invention exceptfor the intermediate layer being
`
`higher in rigidity than the two layers sandwiching the intermediate layer. It would have
`
`been an obvious matter of design choice to place an intermediate layer higherin rigidity
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`than the two layers sandwiching the intermediate layer, since applicant has not
`
`disclosed that placing an intermediate layer higher in rigidity than the two layers
`
`sandwiching the intermediate layer solves any stated problem or is for any particular
`
`purposeand it appears that the invention would perform equally well with an elastic
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`layer comprising three elastic layers.
`
`Claim 11 has limitations similar to those in claim 4 treated in the aboverejection,
`
`and are metby the references as discussed above.
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`4.
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`Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Hsuin
`
`view of Tanabe, and further view of Cok et al. US 7,081,888.
`
`In regards with claim 9 Hsu as modified by Tanabe disclose the capacitive
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`coupling type touch panel according to claim 1. Hsu as modified by Tanabefail to
`
`disclose the plurality of nonconductive spacers are disposed at intervals of equal to or
`
`larger than 20 um and equal to or smaller than 10,000 um.
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`

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`Application/Control Number: 13/014,088
`Art Unit: 2697
`
`Page 7
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`However Cok discloses wherein the plurality of nonconductive spacers are
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`disposed atintervals of equal to or larger than 20 um and equal to or smaller than
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`10,000 um (Col. 5 Il. 44-46).
`
`At the time the invention was made, it would have been obvious to one of
`
`ordinary skill in the art to modify Hsu as modified by Tanabe touch panel to include
`
`Cok’s intervals because such a modification is the result of combining prior art elements
`
`according to known methodsto yield predictable results. More specifically, Hsu as
`
`modified by Tanabe touch panel as modified by Cok’s intervals can yield a predictable
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`result of obtaining elastic deformation and transition temperature improvements so the
`
`touch screen maintains high accuracy and providesclarity. Thus, a person of ordinary
`
`skill would have appreciated including in Hsu as modified by Tanabe touch panel the
`
`ability to do Cok’s intervals since the claimed invention is merely a combination of old
`
`elements, and in the combination each element merely would have performed the same
`
`function as it did separately, and oneof ordinary skill in the art would have recognized
`
`that the results of the combination werepredictable.
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Irasema Gonzalez whose telephone numberis
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`(571)272-8208. The examiner can normally be reached on Mondaythrough Friday 8:00
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`AM - 5:00 PM EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Alexander Eisen can be reached on (571) 272-7687. The fax phone
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`

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`Application/Control Number: 13/014,088
`Art Unit: 2697
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`Page 8
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`numberfor the organization where this application or proceeding is assignedis 571 -
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`273-8300.
`
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`
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`
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`
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`
`/lrasema Gonzalez/
`Examiner, Art Unit 2697
`
`/Alexander Eisen/
`Supervisory Patent Examiner, Art Unit 2697
`
`