`
`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.
`
`
`
`
` FILING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`
`12/237,434
`
`09/25/2008
`
`Yasuyuki Mishima
`
`1497.49202X00
`
`9794
`
`20457
`
`7590
`
`09/20/2012
`
`ANTONELLI, TERRY, STOUT & KRAUS, LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON,VA 22209-3873
`
`CRAWLEY, KEITH L
`
`2629
`
`MAIL DATE
`
`09/20/2012
`
`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
`
`12/237 ,434
`Examiner
`KEITH CRAWLEY
`
`MISHIMA ET AL.
`Art Unit
`2629
`
`-- 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 underthe 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).
`Anyreply 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 13 June 2012.
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] An election was made bythe 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)_] Sincethis application is in condition for allowance exceptfor 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) 1-10 and 12 is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-10 and 12 is/are rejected.
`8)L] Claim(s) ___is/are objectedto.
`9)L] Claim(s)___ are subjectto restriction and/or election requirement.
`
`Application Papers
`
`10) The specification is objected to by the Examiner.
`11) The drawing(s)filed on 13 June 2012 is/are: a)[X] 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).
`12)[] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)[] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)L] All
`)LJ Some * c)L] None of:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.0] 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) Xx Notice of References Cited (PTO-892)
`2) [_] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) [J Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`4) CT] Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __
`5) L] Notice of Informal Patent Application
`6) Cc Other:
`
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20120918
`
`
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2629
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`Page 2
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`DETAILED ACTION
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`Drawings
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`1.
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`The drawings were received on 6/13/12. These drawings are acceptable, and
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`the objection to figs. 10-13 is withdrawn.
`
`Claim Objections
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`In light of the amendmentfiled 6/13/12, the objections to claims 1, 9, and 11 for
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`informalities are withdrawn.
`
`Claim Rejections - 35 USC § 112
`
`In light of the amendmentfiled 6/13/12, the rejection of claims 1-12 under 35
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`U.S.C. 112, second paragraph, is withdrawn.
`
`Claim Rejections - 35 USC § 103
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`2.
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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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`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 102ofthis 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 obviousat 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.
`
`3.
`
`Claims 1-5, 7-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishikawa (WO 2006/095684) in view of Applicant’s Admitted Prior Art (AAPA). Please
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
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`Page 3
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`note: Nishikawa (US 2008/0136788) will be used as an English translation of WO
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`2006/095684.
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`Regarding independent claim 1, Nishikawa discloses a display comprising a
`
`touch panel and a display panel, the touch panel being mounted on a display panel
`
`(Nishikawa: FIG. 1A, paras. 51 and 70; touch panel 4, display panel 60.), wherein;
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`the touch panel includes an uppertransparent-electrode-attached film and a
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`lower transparent-electrode-attachedfilm (Nishikawa: FIG. 1B; para. 52; upper
`
`transparent-electrode-attachedfilm 1 and a lower transparent-electrode-attached film
`
`2.),
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`a gap is formed between the uppertransparent-electrode-attached film and the
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`lower transparent-electrode-attachedfilm (Nishikawa: FIG. 1B; para. 76; gap 19.),
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`the touch panel is adhered to a display region of the display panel (Nishikawa:
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`fig. 9A, § 93-95, touch panel 4 adhered to display region of display panel 60 via
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`adhesive 7; see also ¥ 72),
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`and an air hole is formed in the lower transparent-electrode-attachedfilm of the
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`touch panel, said air hole being formed to face an outside of the display region of the
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`display panel (Nishikawa: FIG. 1B; para. 79 air holes 121; see also fig. 10 and § 95).
`
`Nishikawafails to disclose adhering using UV curing resin.
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`AAPAteaches adhering using UV curing resin (AAPA, instant Application, figs.
`
`11-12, | 7-10, UV curing resin 9 is provided to adhere touch panel 23 to display 24).
`
`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
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`Page 4
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`Nishikawa and AAPAareboth directed to display devices having a touch panel.
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`Nishikawa discloses a device whichdiffers from the claimed invention by the
`
`substitution of a general adhesivelayer for a UV curing resin. AAPA teaches the
`
`substituted element of a UV curing resin andits function is well knownin the art for
`
`adhering a touch panel to a display panel. The general adhesive of Nishikawa could
`
`have been substituted with the UV curing resin of AAPA andthe results would have
`
`been predictable and resulted in adhering a touch panel to a display panel with a UV
`
`curing resin. Therefore, the claimed subject matter would have been obvious to a
`
`person having ordinary skill in the art at the time the invention was made.
`
`Regarding claim 2, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa discloses a light blocking film is formed outside
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`a display region of the touch panel so as to cover the air hole with the light blocking film.
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`(Nishikawa: FIG. 1B; paras. 66, 67; light blocking film 5c.)
`
`Regarding claim 3, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa discloses a plurality of air holes is formed in the
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`lower transparent-electrode-attachedfilm facing an outside of the display region.
`
`(Nishikawa: FIG. 1B; para. 79 air holes 121; see also fig. 10 and 4 95)
`
`Regarding claim 4, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa disclosesair holes 122 of FIG. 1B are formed at
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
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`Page 5
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`outer edgesof the touch panel near components 9 forming the edge of the display "on a
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`side where no connection terminal is formed”.
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`(Nishikawa: FIG. 1B; para. 73 and 77;
`
`see also fig. 10 and § 95).
`
`Nishikawafails to disclose details of the display panel 60 of FIG. 1B and
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`therefore fails to disclose a flexible printed circuit board is mounted on a TFT substrate
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`of the display panel and that the air hole is formedin a short side of the touch panel.
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`However AAPAteachesto improve a display device having a touch panel
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`mounted on a display panel by providing a flexible printed circuit board is mounted on a
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`TFT substrate of the display panel and the touch panel includes a short side of the
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`touch panel (AAPA: FIG. 11. A flexible printed circuit board 2 is mounted on a TFT
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`substrate 4 opposite a short side of display panel 23 that overhangs the TFT substrate
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`for the purposesof providing transistors for controlling states of pixels of the display
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`panel, providing means for conveying signals from external driver circuits to those
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`transistors and providing non-transparent structural components 13 of the touch panel
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`23 positioned outside the display, to avoid blocking the display.)
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`It therefore would have been obvious to one of ordinary skill in the art at the time
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`the invention was madeto adapt Nishikawa's display device to provide a flexible printed
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`circuit board is mounted on a TFT substrate of the display panel andthatthe air hole is
`
`formed in a short side of the touch panel to achieve the predictable result of providing
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`transistors for controlling states of pixels of the display panel, providing means for
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`conveying signals from external driver circuits to those transistors and providing non-
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
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`Page 6
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`transparentstructural components of the touch panel positioned outside the display, to
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`avoid blocking the display.
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`Regarding claim 5, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa discloses the air hole is closed.
`
`(Nishikawa:
`
`FIG. 1A: para. 78. The air hole 121 is closed with UV-curable resin 122.)
`
`Regarding claim 7, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa discloses the air hole is closed with a resin.
`
`(Nishikawa: FIG. 1A: para. 78. The air hole 121 is closed with UV-curable resin 122.)
`
`Regarding claim 8, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa discloses the display panel and the touch panel
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`are arrangedin the inside of a mold the air hole formed in the lower transparent-
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`electrode-attached film of the touch panelis closed with an adhesive layer which
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`adheres the mold and the touch panel to each other. (Nishikawa: FlGs.1B and 6; paras
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`84 and 85. An adhesiveresin layer 6, 122 adheres the touch panel to a mold 5a in
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`which the touch panel 4 and display panel 60 reside and which closes air hole 121.).
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`4.
`
`Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Nishikawain view of AAPAasapplied to claim 1 above, andfurther in view of
`
`Kawashima (US 2005/0106291).
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 7
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`Regarding claim 6, Nishikawa discloses everything claimed as applied above
`
`(see claim 1) and in addition Nishikawa discloses the air hole is closed with a resin.
`
`(Nishikawa: FIG. 1A: para. 78. The air hole 121 is closed with UV-curable resin 122.)
`
`Nishikawafails to disclose the air hole mayalternatively be closed with a sealing
`
`tape, rather than by resin.
`
`However Kawashima teachesthat it was knownto thoseofskill in the art of
`
`manufacturing devices having gasfilled spaces, that when providing a hole in the
`
`device to permit gas be introduced into an enclosed spacewithin the device to
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`subsequently to provide sealing tape over the hole and any other apertures for the
`
`purposeof enclosing the spaceto prevent the gas from thereafter entering or leaving
`
`the space.
`
`(Kawashima: FIG. 9C; para. 105.)
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`It therefore would have been obvious to one of ordinary skill in the art at the time
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`the invention was madeto adapt Nishikawa's display device to provide the air hole may
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`alternatively be closed with a sealing tape, rather than by resin to achieve the
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`predictable result preventing the air from thereafter entering or leaving the space within
`
`the touch panel.
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`5.
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`Claims 9 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Nishikawain view of AAPA,and further in view of Mikoshiba (US 6,689,458).
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 8
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`Regarding independent claim 9 and claim 10, Nishikawa discloses a display
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`device comprising a touch panel and a display panel, the touch panel being mounted on
`
`a display panel (Nishikawa: FIG. 1A, paras. 51 and 70; touch panel 4, display panel
`
`60.), wherein
`
`the touch panelincludes an uppertransparent-electrode-attachedfilm and a
`
`lower transparent-electrode-attachedfilm (Nishikawa: FIG. 1B; para. 52; upper
`
`transparent-electrode-attachedfilm 1 and a lower transparent-electrode-attached film
`
`2.),
`
`a gap is formed between the uppertransparent-electrode-attached film and the
`
`lower transparent-electrode-attachedfilm (Nishikawa: FIG. 1B; para. 76; gap 19.),
`
`the touch panel is adhered to a display region of the display panel (Nishikawa:
`
`fig. 9A, § 93-95, touch panel 4 adhered to display region of display panel 60 via
`
`adhesive 7; see also { 72),
`
`and an air hole is formed in the lower transparent-electrode-attachedfilm of the
`
`touch panel, said air hole being formed to face an outside of the display region of the
`
`display panel. (Nishikawa: FIG. 1B; para. 79 air hole 121; see also fig. 10 and
`
`95)
`
`Nishikawafails to disclose adhering using UV curing resin.
`
`AAPAteachesadhering using UV curing resin (AAPA,instant Application, figs.
`
`11-12, | 7-10, UV curing resin 9 is provided to adhere touch panel 23 to display 24).
`
`Nishikawa and AAPAareboth directed to display devices having a touch panel.
`
`Nishikawa discloses a device whichdiffers from the claimed invention by the
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 9
`
`substitution of a general adhesivelayer for a UV curing resin. AAPA teaches the
`
`substituted element of a UV curing resin andits function is well knownin the art for
`
`adhering a touch panel to a display panel. The general adhesive of Nishikawa could
`
`have been substituted with the UV curing resin of AAPA andthe results would have
`
`been predictable and resulted in adhering a touch panel to a display panel with a UV
`
`curing resin. Therefore, the claimed subject matter would have been obvious to a
`
`person having ordinary skill in the art at the time the invention was made.
`
`Nishikawafails to disclose unevenness is formed on a surface of a transparent
`
`electrode formed on an inner side of the upper transparent-electrode-attachedfilm or on
`
`a surface of a transparent electrode formed on an inner side of the lower transparent-
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`electrode-attachedfilm [claim 9], and the unevennessis formed on the surface of the
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`transparent electrode formed on the inner side of the upper transparent-electrode-
`
`attached film and on the surface of the transparent electrode formed on the inner side of
`
`the lowertransparent-electrode-attachedfilm [claim 10].
`
`However Mikoshiba teaches to improve a touch panel having upper and lower
`
`transparent electrode by providing the unevenness is formed on the surface of the
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`transparent electrode formed on the inner side of the upper transparent-electrode-
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`attached film and on the surface of the transparent electrode formed on the inner side of
`
`the lower transparent-electrode-attached film for the purpose of suppressing
`
`interference fringes and reducing mutual adhesion.
`
`(Mikoshiba: col. 1, line 33 - col. 2,
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`line 9 and col. 5, line 38 - col. 6, line 37.)
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 10
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`It therefore would have been obvious to one ofordinary skill in the art at the
`
`time the invention was made to adapt Nishikawa's display device to provide the
`
`unevennessis formed on the surface of the transparent electrode formed on the inner
`
`side of the upper transparent-electrode-attached film and /or on the surface of the
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`transparent electrode formed on the inner side of the lower transparent-electrode-
`
`attached film to achieve the predictable result of suppressing interference fringes and
`
`reducing mutual adhesion.
`
`6.
`
`Claim 12 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishikawain view of AAPAasapplied to claim 1 above, andfurther in view of Sakamoto
`
`(US 2005/0213004).
`
`Regarding claim 12, Nishikawa fails to disclose wherein beads having refractive
`
`index different from refractive index of the UV curing resin are dispersed in the UV
`
`curing resin.
`
`Sakamoto teachesto disperse beads having a refractive index different from
`
`the refractive index of transparent resin provided between a touch panel and a display
`
`panel
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`for the purpose of scattering and suppressing undesirable reflections of ambient
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`light passing through the touch panel.
`
`(Sakamoto: FIG. 5; para. 62. The transparent
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`resin layer 23 is provided between a touch panel 26 and lower layers 30, 40, 50
`
`forming a display panel.)
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`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 11
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`It therefore would have been obvious to one ofordinary skill in the art at the
`
`time the invention was madeto adapt the transparent UV curing resin 9 of AAPA FIG.
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`12C to provide that its specific reflectance is achieved by dispersing beads having a
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`refractive index different from the refractive index of the UV curing resin provided
`
`between a touch panel and a display panel to achieve the predictable result of
`
`scattering and therefore suppressing undesirable reflections of ambientlight passing
`
`though touch panel 23.
`
`Response to Arguments
`
`7.
`
`Applicant's argumentsfiled 6/13/12 have beenfully considered but they are not
`
`persuasive. Regarding claims 1 and 9, Applicant argues that the claim structure differs
`
`significantly from Nishikawa, specifically “the panel is adhered to the display panel using
`
`a UV curing resin.” However, as cited in the aboverejection, AAPAis relied upon to
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`disclose the claimed UV curing resin. Further, as is clearly shownin fig. 9A and ¥ 93-95
`
`of Nishikawa, touch panel 4 is adhered to display region of display panel 60 via
`
`adhesive 7, and none of support plate 6 is disposed between where touch panel 4 and
`
`display panel 60 are joined. Thus, Nishikawa in view of AAPAdisclosesthe limitation
`
`“the touch panel is adhered to a display region of the display panel using UV curing
`
`resin," as is recited in claims 1 and 9, and the rejection of claims 1-10 and 12 is
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`maintained.
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`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 12
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`Conclusion
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`8.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the eventa first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
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`shortenedstatutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however,will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KEITH CRAWLEYwhosetelephone numberis
`
`(571)270-7616. The examiner can normally be reached on M-F, 7:30-5:00 EST,
`
`alternate Fri. off.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Bipin Shalwala can be reached on (571)272-7681. The fax phone number
`
`for the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2629
`
`Page 13
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/KEITH CRAWLEY/
`Examiner, Art Unit 2629
`/Bipin Shalwala/
`Supervisory Patent Examiner, Art Unit 2629
`
`