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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/769,652
`
`06/04/2020
`
`KOJI OBATA
`
`083710-3116
`
`4447
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`WANG,JACK K
`
`2687
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/18/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-22 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-22 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 6/4/2020 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 6/4/2020.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220712
`
`Application No.
`Applicant(s)
`16/769,652
`OBATAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JACK K WANG
`2687
`Yes
`
`
`
`-- 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 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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) Responsive to communication(s)filed on 6/4/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventorto file provisions of the AJA.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`3.
`
`The following is a quotation of the appropriate paragraphsof 35 U.S.C. 102 that form the
`
`basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(2) the claimed invention wasdescribed in a patent issued under section 151, or in an application for
`patent published or deemed published under section 122(b), in which the patent or application, as the
`case may be, names another inventor and waseffectively filed before the effective filing date of the
`claimed invention.
`
`4.
`
`Claims 1, 3-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yukawaet
`
`al. (Pub # US 2009/0140231 A1).
`
`Consider claim 1, Yukawa et al. clearly show and disclose a wireless communication
`
`semiconductor device comprising: a circuit board (2703, Fig, 12B); a semiconductor chip (716,
`
`Fig. 3) mounted on the circuit board; a thin film transistor (722, Fig. 3) provided on the circuit
`
`board; and an antenna providedon the circuit board [0107 and 0149].
`
`Consider claim 3, Yukawaet al. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the semiconductor chip is a silicon chip [0003].
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 3
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`Consider claim 4, Yukawaet al. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the thin film transistor is an organic thin film transistor [0003].
`
`Consider claim 5, Yukawaet al. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the organic thin film transistor is a printed component[0062].
`
`Consider claim 6, Yukawaet al. clearly show and disclose the wireless communication
`
`semiconductor device, further comprising: a radio circuit unit configured to process a reception
`
`wave signal received by the antennaso as to generate a reception signal and to generate a
`
`transmission wavesignal to be transmitted by the antenna; and a memory unit configured to store
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`unique [D-related information related to a unique ID andatleast one of the reception signal and
`
`the transmission signal, wherein the radio circuit unit is provided on the semiconductor chip, and
`
`at least a part of the memory unit is provided in the thin film transistor [002 and 0148-0149].
`
`Consider claim 7, Yukawaet al. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the memoryunit includes: a unique ID memory unit (inherent in
`
`RFID tag) configured to store the unique ID; and another memoryunit configured to store
`
`information other than the unique ID, wherein the unique ID memoryunit is provided in the thin
`
`film transistor, and the another memoryunit is provided in the semiconductorchip or the thin
`
`film transistor [0003 and 0107].
`
`Consider claim 8, Yukawaet al. clearly show and disclose the wireless communication
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`semiconductor device, further comprising a protection (insulator) layer, wherein the circuit board
`
`includes a formation surface having the semiconductorchip and the thin film transistor formed
`
`thereon, the protection layer covers the semiconductor chip, the thin film transistor, and the
`
`formation surface of the circuit board, the thin film transistor includes: a connected thin film
`
`transistor electrically connected to the semiconductor chip by a wiring between the protection
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 4
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`layer and the circuit board; and a non-connected thin film transistor that is not electrically
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`connected to the semiconductor chip by any wiring between the protection layer and the circuit
`
`board, and the non-connected thin film transistor or the semiconductor chip includes an exposed
`
`terminal having an exposed surface exposed from the protection layer [0011-0012].
`
`Consider claim 9, Yukawaet al. clearly show and disclose the wireless communication
`
`semiconductor device, wherein in a case that the non-connected thin film transistor (conductive
`
`layer) includes the exposed terminal, the non-connected thin film transistoris electrically
`
`connectable to the semiconductor chip by a wiring provided on the protection layer on the
`
`exposed surface of the exposed terminal, and in a case that the semiconductorchip includes the
`
`exposed terminal, the semiconductor chip is electrically connectable to the non-connectedthin
`
`film transistor by a wiring provided on the protection layer on the exposed surface of the exposed
`
`terminal [0018].
`
`Consider claim 10, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, further comprising a protection layer (insulator), wherein the circuit board
`
`includes a formation surface having the semiconductorchip and the thin film transistor formed
`
`thereon, the protection layer covers the semiconductor chip, the thin film transistor, and the
`
`formation surface of the circuit board, the thin film transistor includes a connected thin film
`
`transistor electrically connected to the semiconductor chip by a wiring below the protection
`
`layer, the connected thin film transistor being located between the protection layer and the circuit
`
`board, and at least one of the semiconductor chip and the connected thin film transistor includes
`
`an exposed terminal having an exposed surface exposed from the protection layer [0020].
`
`Consider claim 11, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein a thin film transistor electrically connected to the at least one of
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
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`Page 5
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`the semiconductor chip (memory) and the connected thin film transistor on the exposed surface
`
`of the exposed terminalis able to be additionally formed [0020].
`
`Consider claim 12, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the exposed terminal includes a metal oxide layer provided on
`
`the exposed surface [0017].
`
`Consider claim 13, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the exposed terminal is a silver terminal [0069-0071].
`
`Consider claim 14, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, further comprising: a power supply circuit unit configured to generate
`
`driving powerto drive the wireless communication semiconductor device; and a controlcircuit
`
`unit configured to cause the memoryunit to store the unique ID-related information andthe at
`
`least one of the reception signal and the transmission signal, and cause the radio circuit unit to
`
`generate the reception signal and the transmission signal, wherein the power supply circuit unit is
`
`provided on the semiconductor chip, and the control circuit unit is provided in the semiconductor
`
`chip or the thin film transistor [0195].
`
`Consider claim 15, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the control circuit unit includes: a memorycontrol circuit unit
`
`configures to cause the memory unit to store the unique ID- related information and the at least
`
`one of the reception signal and the transmission signal, and another control circuit unit
`
`configured to cause the radio circuit unit to generate the reception signal and the transmission
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`signal, and the memory control circuit unit and the another control circuit unit are independently
`
`provided in the semiconductorchip or the thin film transistor [0194-0195].
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 6
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`Consider claim 16, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the wireless communication semiconductor device is configured
`
`to receive driving powerfrom an external reader device and to return unique [D-related
`
`information stored in the memory unit to the external reader device [0195].
`
`Consider claim 17, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, further comprising a key, wherein the wireless communication
`
`semiconductor device is configured to store encrypted information including the unique ID-
`
`related information, and the key is for decrypting the encrypted information [0195 and 0208].
`
`Consider claim 18, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the key (code) is able to be input to an external reader device, in
`
`a case that the key is input to an external reader device, the external reader device is able to
`
`decrypt the encrypted information, and in a case that the key is not input to the external reader
`
`device, the external reader device is not able to decrypt the encrypted information [0195].
`
`Consider claim 19, Yukawaetal. clearly show and disclose a method for manufacturing a
`
`wireless communication semiconductor device, comprising: mounting a semiconductor chip on a
`
`circuit board [0200]; and forming a thin film transistor [0003], an antenna [0003], and a wiring
`
`on the circuit board by printing [0201].
`
`Consider claim 20, Yukawaet al. clearly show and disclose the method, wherein the
`
`wireless communication semiconductor device configured to store encrypted information, the
`
`method further comprising forming a key for decrypting the encrypted information in the
`
`wireless communication semiconductor device by printing [0195].
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 7
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`Consider claim 21, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the exposed terminal includes a metal oxide layer provided on
`
`the exposed surface [0111].
`
`Consider claim 22, Yukawaetal. clearly show and disclose the wireless communication
`
`semiconductor device, wherein the exposed terminalis a silver terminal [0165 and 0173).
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, if the differences between the claimed invention and the
`prior art are such that the claimed invention as a whole would have been obviousbefore the effective
`filing date of the claimed invention to a person having ordinary skill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the mannerin which the invention was made.
`
`7.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yukawaetal. (Pub #
`
`US 2009/0140231 A1) as applied to claim 1 above, and further in view of Lianget al. (Pub # US
`
`2021/0223035 A1).
`
`Consider claim 2, Yukawaet al. teaches similar invention.
`
`Yukawaet al. does not teach the wireless communication semiconductor device, wherein
`
`an operation frequency of the semiconductor chip is higher than an operation frequency of the
`
`thin film transistor.
`
`In the same field of endeavor, Liang et al. teaches the wireless communication
`
`semiconductor device, wherein an operation frequency of the semiconductorchip is higher than
`
`

`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 8
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`an operation frequency of the thin film transistor [0080] for the benefit of providing higher speed
`
`transmission.
`
`Therefore, it would have been obvious to a person of ordinary skill in the art before the
`
`effective filing date of the claimed invention to include the wireless communication
`
`semiconductor device, wherein an operation frequency of the semiconductorchip is higher than
`
`an operation frequency of the thin film transistor as shownin Lianget al., in Yukawa et al.
`
`device for the benefit of providing higher speed transmission.
`
`Conclusion
`
`8.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JACK K WANGwhosetelephone numberis (571)272-1938. The
`
`examiner can normally be reached M-F 9AM - 5PM.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Curtis Kuntz can be reached on 571-272-7499. The fax phone numberfor the
`
`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
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`

`Application/Control Number: 16/769,652
`Art Unit: 2687
`
`Page 9
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`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)
`
`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`JACK K WANG/
`Primary Examiner, Art Unit 2687
`
`