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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: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONF {MATION NO.
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`12/702,813
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`02/09/2010
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`Atsuo NAKAGAWA
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`501.50561X00
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`2820
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`20457
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`7590
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`07/16/2014
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`ANTONELLLTERRY, STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON, VA 22209-3873
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`MERLIN, JESSICA M
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`2871
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`MAIL DATE
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`07/ 1 6/2014
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`PAPER NUMBER
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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.
` 12/702,813 NAKAGAWA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2871JESSICA M. MERLIN first“
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`-- 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 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).
`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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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on AQri/28z 2014.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)IZ| 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)|XI CIaim(s) His/are pending in the application.
`5a) Of the above claim(s) 3 and 4 is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`1,2 and 5-7 is/are rejected.
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`is/are objected to.
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`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
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`participating intellectual property office for the corresponding application. For more information, please see
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`htt
`://w1r/w.usoto. ov/ atentS/init events) .h/index.‘
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`, or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on February 9, 2010 is/are: a)lZl 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).
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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
`12)IZI 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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`b)I:I Some” c)I:I None of the:
`a)le AII
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I 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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`Attach ment(s)
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`
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`3) I] Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date 12/19/2013 3/11/2014.
`4) D Other: —-
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`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 20140714
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`

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`Application/Control Number: 12/702,813
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`Page 2
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`Art Unit: 2871
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`DETAILED ACTION
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`Notice of Pre-AIA 0r AIA Status
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`1.
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Response to Amendment
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`2.
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`Receipt is acknowledged of applicant’s amendment filed April 28, 2014. Claims 1—7 are
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`pending and an action on the merits is as follows. Claims 3 and 4 have been previously
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`withdrawn.
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`Claim Rejections - 35 USC § 103
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`3.
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`The following is a quotation of pre—AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this 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 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.
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`4.
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`Claims 1, 2, 5 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Tebbit (US. 2008/0068529 A1) in View of Nishikawa et al. (US.
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`2009/0033824 A1).
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`In regard to claim 1, Tebbit discloses a display device comprising (see eg. Figures 1 -
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`3):
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`a display panel 1;
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`Application/Control Number: 12/702,813
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`Page 3
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`Art Unit: 2871
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`a light transmitting cover 2 which is larger than and separate from the display panel 1,
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`which covers a display screen of the display panel 1, and which extends beyond at least one edge
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`of the display panel 1;
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`wherein the cover 2 includes a frame— shaped printing layer 41/43 which is formed on a
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`surface of the cover 2 which faces the display panel 1 in a state where the printing layer
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`surrounds a center portion of the cover 2 and a display region of the display panel 1 by avoiding
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`the center portion of the cover and the display region of the display panel and which extends
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`beyond the at least one edge of the display panel 1.
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`Tebbit is silent as to
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`wherein a coating layer which is formed on the cover covers the frame—shaped printing
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`layer and is made of a material harder than a material of the frame—shaped printing layer.
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`However, Nishikawa et al. discloses wherein a coating layer which is formed on the
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`cover 11 covers the frame—shaped printing layer 13 and is made of a material harder than a
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`material of the frame—shaped printing layer 13 (see e. g. Figures 3a-b and paragraph [0072]
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`where it is noted that a hard coat layer is applied to the cover 11).
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`Given the teachings of Nishikawa et al., it would have been obvious to one of ordinary
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`skill in the art at the time of the invention to modify the display device of Tebbit with wherein a
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`coating layer which is formed on the cover covers the frame—shaped printing layer and is made of
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`a material harder than a material of the frame—shaped printing layer.
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`Doing so would provide a means for providing a protective layer to the cover layer.
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`In regard to claim 2, Tebbit discloses the limitations as applied to claim 1 above, but is
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`silent as to wherein the coating layer covers the center portion of the cover.
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`Application/Control Number: 12/702,813
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`Page 4
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`Art Unit: 2871
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`However, Nishikawa et al. discloses wherein the coating layer covers the center portion
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`of the cover 11 (see e. g. Figures 3a-b and paragraph [0072] where it is noted that a hard coat
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`layer is applied to the cover 11).
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`Given the teachings of Nishikawa et al., it would have been obvious to one of ordinary
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`skill in the art at the time of the invention to modify the display device of Tebbit with wherein
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`the coating layer covers the center portion of the cover.
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`Doing so would provide a means for providing a protective layer to the cover layer.
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`In regard to claim 5, Tebbit discloses the display panel includes a first substrate and a
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`second substrate 10,12, one of the first and second substrates 10,12 being larger than an other of
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`the first and second substrates 10,12, and the cover 2 which is larger than the display panel 1
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`extends beyond at least one edge of the larger one of the first and second substrates 10,12 of the
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`display panel 1, the frame—shaped printing layer 41/43 surrounding the center portion of the
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`cover 2 extending beyond the at least one edge of the larger one of the first and second substrates
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`10,12 of the display panel 1.
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`In regard to claim 6, Tebbit discloses the larger one of the first and second substrates
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`10,12 of the display panel 1 has a surface which is non—overlapping with the other of the first
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`and second substrates 10,12 and has an integrated circuit chip mounted on the non—overlapping
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`surface, and the cover 2 and the frame—shaped printing layer 41/43 extends beyond the at least
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`one edge of the larger one of the first and second substrates 10,12 having the integrated circuit
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`chip mounted on the non—overlapping surface (see e. g. paragraph [0015] where it is noted that
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`the substrate 12 extends beyond 10 in order to be connected with driver interface boards, i. e.
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`that have mounted IC chips. ).
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`Application/Control Number: 12/702,813
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`Page 5
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`Art Unit: 2871
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`5.
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`Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Tebbit (US. 2008/0068529 A1) in View of Nishikawa et al. (US. 2009/0033824 A1) and
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`further in View of Shiozawa et al. (JP 2003-270403), of which an English translation is
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`attached.
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`In regard to claim 7, Tebbit, in view of Nishikawa et al., discloses the limitations as
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`applied to claim 1 above, but fails to disclose wherein the coating layer which covers the frame—
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`shape printing layer is disposed directly on the frame— shape printing layer.
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`However, Shiozawa et a1. discloses wherein the coating layer 5b which covers the frame—
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`shape printing layer 3 is disposed directly on the frame—shape printing layer 3 (see 6. g. Figure 2
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`and paragraphs [0024] -[0025] of the English translation).
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`Given the teachings of Shiozawa et al., it would have been obvious to one of ordinary
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`skill in the art at the time of the invention to modify the display device of Tebbit, in view of
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`Nishikawa et al., with wherein the coating layer which covers the frame—shape printing layer is
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`disposed directly on the frame— shape printing layer.
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`Doing so would provide a means to prevent a cover substrate from being damaged.
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`6.
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`Applicant's arguments filed April 28, 2014 have been fully considered but they are not
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`Response to Arguments
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`persuasive.
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`7.
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`In regard to applicant’s arguments, on pages 5—7 of the Remarks, that the previously
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`applied prior art fails to disclose all of the limitations of claim 1, have been fully considered and
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`are appreciated. However, the examiner respectfully disagrees.
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`Application/Control Number: 12/702,813
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`Page 6
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`Art Unit: 2871
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`8.
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`First, applicant argues that the combination of Tebbit with Nishikawa is a “hindsight
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`reconstruction attempt.” In response to applicant's argument that the examiner's conclusion of
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`obviousness is based upon improper hindsight reasoning, it must be recognized that any
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`judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight
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`reasoning. But so long as it takes into account only knowledge which was within the level of
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`ordinary skill at the time the claimed invention was made, and does not include knowledge
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`gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re
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`McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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`9.
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`Applicant further argues that Nishikawa et al. fails to disclose the frame—shaped printing
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`layer which is “formed on a surface of the cover which faces the display panel." However, as
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`noted above, Nishikawa et al. discloses wherein a coating layer which is formed on the cover 11
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`covers the frame—shaped printing layer 13 and is made of a material harder than a material of the
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`frame—shaped printing layer 13 (see e. g. Figures 3a-b and paragraph [0072] where it is noted
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`that a hard coat layer is applied to the cover 11). Layer 13 is at least on a side of the cover 11
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`which faces the display panel 3.
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`10.
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`Applicant further argues that the coating layer of Nishikawa et al. does not face the
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`display panel. However, the examiner respectfully disagrees. Namely, the hard coat layer,
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`applicant's coating layer, at least faces the display panel through the cover 11. Further the hard
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`coat layer at least covers edges of the frame shaped printing layer by virtue of overlapping with
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`said frame shaped printing layer.
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`11.
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`Applicant further argues that Nishikawa et al. fails to disclose the hard coat material is
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`made of a material which is harder than the frame shaped printing layer. However, one of
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`Application/Control Number: 12/702,813
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`Page 7
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`Art Unit: 2871
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`ordinary skill in the art would recognize that hard coat layer is stronger than a black color
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`section, applicant's frame shaped printing layer, as it is noted in paragraph [0078] that layer 13
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`may be incorporated into a pressure sensitive adhesive tape.
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`Conclusion
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`12.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JESSICA M. MERLIN whose telephone number is (571)270—
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`3207. The examiner can normally be reached on Monday—Thursday 6:00AM—4z30 PM.
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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 for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Application/Control Number: 12/702,813
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`Page 8
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`Art Unit: 2871
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`Jessica M. Merlin
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`July 14, 2014
`/JESSICA M MERLIN/
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`Primary Examiner, Art Unit 2871
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`