`
`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
`
`02/20/2014
`
`ANTONELLI, TERRY, STOUT & KRAUS, LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON,VA 22209-3873
`
`CRAWLEY, KEITH L
`
`2696
`
`MAIL DATE
`
`02/20/2014
`
`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)
`
`

`

`
`
`Status
`1)X] Responsive to communication(s)filed on 12/16/13.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`___} the restriction requirement and election have been incorporated into this action.
`4)[] Since this 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) 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`is/are withdrawn from consideration.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 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
`
`nito/www. uspte.gov/natenis/init events/poh/index.isp
`
`or send an inquiry to PPHieedback@uspte.aov.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`
`11)L] The drawing(s)filed on
`is/are: a)L_] accepted or b)L_] 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:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`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.L] 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.
`
`
`
`Applicant(s)
`Application No.
` 12/237,434 MISHIMA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2696KEITH CRAWLEY Na
`
`-- 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).
`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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply betimely filed
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4) Ol Other:
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20140212
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 2
`
`1.
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections 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 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.
`
`3.
`
`Claims 1-5, 7 and 8 are rejected underpre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Nishikawa (WO 2006/095684) in view of Applicant's Admitted Prior
`
`Art (AAPA) and Chang et al. (US 2008/0068342). Please note: Nishikawa (US
`
`2008/0136788) will be used as an English translation of WO 2006/095684.
`
`Regarding independent claim 1, Nishikawa discloses a display 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 panel4, display panel 60.),
`
`wherein;
`
`the touch panel includes an uppertransparent-electrode-attached film and a
`
`lower transparent-electrode-attachedfilm (Nishikawa: FIG. 1B; para. 52; upper
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 3
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`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
`
`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 outside of the display panel in a plan
`
`view (Nishikawa: FIG. 1B; para. 79 air holes 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 AAPAare both directed to display devices having a touch panel.
`
`Nishikawa discloses a device which differs 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.
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 4
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`Nishikawafails to disclose an air hole being formedto be outside of the UV
`
`curing resin and outside of the display region of the display panelin the plan view.
`
`Chang teaches anair hole being formed to be outside of the UV curing resin and
`
`outside of the display region of the display panelin the plan view (figs. 5-6, { 74,
`
`portions of the adhesive part 451 are removed to form airing portions 455 disposed in a
`
`peripheral area PA; see also { 46).
`
`Nishikawa and Changare both directed to display devices having a touch panel.
`
`Therefore, it would have been obvious to one ofordinary skill in the art at the time the
`
`invention was madeto combinethe device of Nishikawa with the peripheral air holes of
`
`Chang since such a modification provides dynamic stability of the touch panel so that
`
`the touch maybeeasily restored to its former state (Chang, § 59) and prevents a
`
`display error (Chang, abstract).
`
`Regarding claim 2, Nishikawa discloses a light blocking film is formed outside a
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`display region of the touch panel so as to coverthe air hole with the light blocking film.
`
`(Nishikawa: FIG. 1B; paras. 66, 67; light blocking film 5c.)
`
`Regarding claim 3, Nishikawa discloses a plurality of air holes is formed in the
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`lower transparent-electrode-attachedfilm facing outside of the display panelin the plan
`
`view (Nishikawa: FIG. 1B; para. 79 air holes 121; see also fig. 10 and { 95).
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 5
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`Chang further teachesa plurality of air holes are formedto be outside of the
`
`display region of the display panelin the plan view (figs. 1-3, airing portions 55, see
`
`51-59, airing portions disposed in a peripheral area PA; see also { 46).
`
`Regarding claim 4, Nishikawadiscloses air holes 122 of FIG. 1B are formed at
`
`outer edgesof the touch panel near components 9 forming the edge of the display "on a
`
`side where no connection terminal is formed”. (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
`
`therefore fails to disclose a flexible printed circuit board is mounted on a TFT substrate
`
`of the display panel andthat the air hole is formedin a short side of the touch panel.
`
`However AAPAteachesto improve a display device having a touch panel
`
`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
`
`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.)
`
`It therefore would have been obvious to one of ordinary skill in the art at the time
`
`the invention was madeto adapt Nishikawa's display device to provide a flexible printed
`
`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 6
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`circuit board is mounted on a TFT substrate of the display panel andthatthe air hole is
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`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
`
`conveying signals from external driver circuits to those transistors and providing non-
`
`transparentstructural components of the touch panel positioned outside the display, to
`
`avoid blocking the display.
`
`Regarding claim 5, 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 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 the display panel and the touch panel
`
`are arrangedin the inside of a mold the air hole formed in the lower transparent-
`
`electrode-attached film of the touch panelis closed with an adhesive layer which
`
`adheres the mold and the touch panel to each other. (Nishikawa: FlGs.1B and 6; paras
`
`84 and 85. An adhesiveresin layer 6, 122 adheres the touch panel to a mold 5a in
`
`which the touch panel 4 and display panel 60 reside and which closes air hole 121).
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 7
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`4.
`
`Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishikawa in view of AAPA and Chang as applied to claim 1 above, and furtherin view
`
`of Kawashima (US 2005/0106291).
`
`Regarding claim 6, 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
`
`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.)
`
`It therefore would have been obvious to one of ordinary skill in the art at the time
`
`the invention was madeto adapt Nishikawa's display device to provide the air hole may
`
`alternatively be closed with a sealing tape, rather than by resin to achieve the
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`predictable result of preventing the air from thereafter entering or leaving the space
`
`within the touch panel.
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 8
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`5.
`
`Claims 9 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishikawa in view of AAPA and Chang, and further in view of Mikoshiba (US
`
`6,689,458).
`
`Regarding independent claim 9 and claim 10, Nishikawa discloses a display
`
`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 formedto face outside of the display panel in a plan
`
`view. (Nishikawa: FIG. 1B; para. 79 air hole 121; see also fig. 10 and § 95)
`
`Nishikawafails to disclose adhering using UV curing resin.
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 9
`
`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 which differs from the claimed invention by the
`
`substitution of a general adhesive layer 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 an air hole being formedto be outside of the UV
`
`curing resin and outside of the display region of the display panelin the plan view.
`
`Chang teaches anair hole being formed to be outside of the UV curing resin and
`
`outside of the display region of the display panelin the plan view (figs. 5-6, { 74,
`
`portions of the adhesive part 451 are removedto form airing portions 455 disposed ina
`
`peripheral area PA; see also { 46).
`
`Nishikawa and Changare both directed to display devices having a touch panel.
`
`Therefore, it would have been obvious to one ofordinary skill in the art at the time the
`
`invention was made to combinethe device of Nishikawa with the peripheral air holes of
`
`Chang since such a modification provides dynamic stability of the touch panel so that
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 10
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`the touch maybeeasily restored to its former state (Chang, § 59) and prevents a
`
`display error (Chang, abstract).
`
`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-
`
`electrode-attachedfilm [claim 9], and the unevennessis formed on the surface of the
`
`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
`
`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
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`the lower transparent-electrode-attached film for the purpose of suppressing
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`interference fringes and reducing mutual adhesion.
`
`(Mikoshiba: col. 1, line 33 - col. 2,
`
`line 9 and col. 5, line 38 - col. 6, line 37.)
`
`Therefore it would have been obvious to one ofordinary skill in the art at the time
`
`the invention was madeto adapt Nishikawa's display device to provide the unevenness
`
`is 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 transparent
`
`electrode formed on the inner side of the lower transparent-electrode-attached film to
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 11
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`achieve the predictable result of suppressing interference fringes and reducing mutual
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`adhesion.
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`6.
`
`Claim 12 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishikawa in view of AAPA and Chang as applied to claim 1 above, and further in view
`
`of Sakamoto (US 2005/0213004).
`
`Regarding claim 12, Nishikawafails to disclose wherein beads having
`
`refractive index different from refractive index of the UV curing resin are dispersedin 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
`
`for the purpose of scattering and suppressing undesirable reflections of ambient
`
`light passing through the touch panel.
`
`(Sakamoto: FIG. 5; para. 62. The transparent
`
`resin layer 23 is provided between a touch panel 26 and lower layers 30, 40, 50
`
`forming a display panel.)
`
`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.
`
`12C to provide that its specific reflectance is achieved by dispersing beads having a
`
`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
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 12
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`scattering and therefore suppressing undesirable reflections of ambientlight passing
`
`though touch panel 23.
`
`Response to Arguments
`
`7.
`
`Applicant's argumentsfiled 12/16/13 have beenfully considered but they are not
`
`persuasive. Regarding claims 1 and 9, Applicant arguesthat the claim structureis
`
`completely different than the structure taught by Chang which requires forming the
`
`airing portion 55 in the adhesive member,not outside ofit in a plan view. Examiner
`
`disagrees. As cited above, figs. 5-6 and ¥ 74 of Chang teach that portions of the
`
`adhesive part 451 are removedto form airing portions 455 disposed in a peripheral area
`
`PA. Thus, contrary to the embodimentdisclosedin figs. 1-3 of Chang, the airing
`
`portions 455 do not overlap with adhesive part 451. Rather, the airing portions 455 are
`
`areas where the adhesive part is not applied. Becausethe airing portions 455 do not
`
`overlap with the adhesive part 451 in a plan view (e.g., see fig. 5 of Chang), and are
`
`defined as areas wherethe adhesive part 451 is not applied, Chang teaches “an air
`
`hole being formed to be outside of the UV curing resin and outside of the display region
`
`of the display panel in the plan view”as is claimed. Thus, the rejection of claims 1-10
`
`and 12 is maintained.
`
`Conclusion
`
`8.
`
`The prior art madeof record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`

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`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 13
`
`Hsih (US 2008/0185192)
`
`Tamura (JP 2005158549)
`
`Kimura et al. (US 2011/0128114)
`
`Lee et al. (US 2013/0120674)
`
`Lin (US 2011/0193789)
`
`9.
`
`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 replyis 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
`
`shortenedstatutory period will expire on the date the advisory action is mailed, and any
`
`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.
`
`10.=Any inquiry 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.
`
`

`

`Application/Control Number: 12/237 ,434
`Art Unit: 2696
`
`Page 14
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`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.
`
`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 2696
`
`/JOE H CHENG/
`Primary Examiner, Art Unit 2696
`
`