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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: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
`
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`15/052,224
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`02/24/2016
`
`Takahiro NAGAMI
`
`1497—503 02CX2
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`5891
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`TYPHA IP LLC
`1819 L Street NW Suite 200
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`Washington, DC 20036
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`NGUYEN, HOAN C
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`ART UNIT
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`2871
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`MAIL DATE
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`01/18/2017
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`PAPER NUIVIBER
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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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`

`

`
`
`Applicant(s)
`Application No.
` 15/052,224 NAGAMI, TAKAHIRO
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`HOAN c. NGUYEN its“ 2871
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 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).
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`In no event, however, may a reply be timely filed
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`Status
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`1)|:I Responsive to communication(s) filed on
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l 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
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| 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) 1-17is/are pending in the application.
`5a) Of the above claim(s) 8-17is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-7is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`hit
`I/'/\WIIW.USOI.O. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l 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).
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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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)IZl All
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`b)|:l Some” c)I:l None of the:
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`1.IXI Certified copies of the priority documents have been received.
`2.IZI Certified copies of the priority documents have been received in Application No. 14/637,856.
`3.|:| 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)).
`** 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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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20170109
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`

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`Application/Control Number: 15/052,224
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`Page 2
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`Art Unit: 2871
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`DETAILED ACTION
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`The present application is being examined under the pre-AIA first to invent provisions.
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`Election/Restrictions
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`Applicant’s election without traverse of Species 1, claims 1-7 in the reply filed on
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`01/04/2017 is acknowledged.
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`This instant application 15/052224 is continuation of 13/749161 that is continuation of
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`12/637856.
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`Drawings
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
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`every feature of the invention specified in the claims. Therefore, the feature of “an
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`organic film on the first substrate, an inorganic film on the organic film” in claim 1 must
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`be shown or the feature(s) canceled from the claim(s). No new matter should be
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`entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in
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`reply to the Office action to avoid abandonment of the application. Any amended
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`replacement drawing sheet should include all of the figures appearing on the immediate
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`prior version of the sheet, even if only one figure is being amended. The figure or figure
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`number of an amended drawing should not be labeled as “amended.” If a drawing figure
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`is to be canceled, the appropriate figure must be removed from the replacement sheet,
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`Application/Control Number: 15/052,224
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`Page 3
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`Art Unit: 2871
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes made to the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New
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`Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
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`the applicant will be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
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`IN GEN ERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
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`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
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`Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
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`paragraph, as failing to comply with the written description requirement. The claim(s)
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`contains subject matter which was not described in the specification in such a way as to
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`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
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`Application/Control Number: 15/052,224
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`Page 4
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`Art Unit: 2871
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`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
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`the claimed invention.
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`Claim 1 cites “an organic film on the first substrate, an inorganic film on the organic
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`film”. However, the instant application 15/052224 disclose only “an organic passivation
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`film 108 is formed so as to cover the inorganic passivation film 107” as Figs. 2-9 shown:
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`An gm film 108% the inorganic film 107. This is not disclose in the parent
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`application and instant application.
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`Applicant should file this application as Continuation In Part (CIP) for this instant
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`application due to new matter, which do not disclose before in the parent cases.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure: Kurosaki (US6104462), Hatakeyama (US 9395585), Matsui (US 8427624).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HOAN C. NGUYEN whose telephone number is
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`(571 )272-2296. The examiner can normally be reached on MONDAY-
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`THURSDAY:8:00AM-4:30PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Edward Glick can be reached on (571) 272-2490. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
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`Application/Control Number: 15/052,224
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`Page 5
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`Art Unit: 2871
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
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`/HOAN C NGUYEN/
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`Primary Examiner, Art Unit 2871
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