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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
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`12/702,813
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`02/09/2010
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`Atsuo NAKAGAWA
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`1497-50561X00
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`2820
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`”72“
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`7590
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`”15/20”
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`Lowe Hauptman & Ham, LLP
`2318 Mill Road
`Suite 1400
`Alexandria, VA 22314
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`MERLIN, JESSICA M
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`2871
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`MAIL DATE
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`12/15/2015
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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/0r 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.
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`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
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`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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`Status
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`1)IXI Responsive to communication(s) filed on October 7 2015.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| 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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`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
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`.
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`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20151214
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`Disposition of Claims*
`5)|XI C|aim(s) 1 and 8-16 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
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`1 and 8-16 is/are rejected.
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`is/are objected to.
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`I )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l C|aim(s
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`* 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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`hit
`://www.usoto. ov/ atents/init events) .h/index.‘
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`, or send an inquiry to PRl-lfeedback{<‘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 All
`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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`Attachment(s)
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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 or 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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`Continued Examination Under 37 CFR 1.114
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`2.
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
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`has been timely paid, the finality of the preVious Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on October 7, 2015 has been entered.
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`Response to Amendment
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`3.
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`Receipt is acknowledged of applicant’s amendment filed October 7, 2015. Claims 2—7
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`have been cancelled without prejudice. Claims 1 and 8—16 are pending and an action on the
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`merits is as follows.
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`Claim Objections
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`4.
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`Claim 13 is objected to because of the following informalities: “flame" should be
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`replaced with “frame” in order to correct what appears to be a typographical error. Appropriate
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`correction is required.
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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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`Claim Rejections - 35 USC § 102
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`5.
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`The following is a quotation of the appropriate paragraphs of pre—AIA 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent granted
`on an application for patent by another filed in the United States before the invention by the applicant
`for patent, except that an international application filed under the treaty defined in section 351(a) shall
`have the effects for purposes of this subsection of an application filed in the United States only if the
`international application designated the United States and was published under Article 21(2) of such
`treaty in the English language.
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`6.
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`Claims 1, 9 and 12-16 are rejected under pre-AIA 35 U.S.C. 102(e) as being
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`anticipated by Tsuji et al. (US 2009/0086123 A1).
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`In regard to claim 1, Tsuji et al. discloses a display device comprising (see e.g. Figure
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`2):
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`a display panel 1;
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`a light transmitting cover 9 which covers a display screen of the display 1;
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`a first layer 10 printed on the cover 9; and
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`a second layer 14 covering the first layer 10,
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`wherein the cover 9 includes the first layer 10 which is on a surface of the cover facing
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`the display panel 1;
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`wherein the first layer 10 surrounds a center portion of the display panel 1 in plain view;
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`and
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`wherein the second layer 14 covers the first layer 10 and the center portion of the cover in
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`plain View 9.
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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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`In regard to claim 9, Tsuji et al. discloses wherein the second layer 14 is a preventing—
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`flaw layer.
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`In regard to claim 12, Tsuji et al. discloses
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`wherein the cover 9 has a plurality of comers in plain View (see 6. g. Figures 3 -4); and
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`wherein the first layer 10 is printed on all of the plurality of comer in plain View (see 6. g.
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`paragraph [0037]).
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`In regard to claim 13, Tsuji et al. discloses wherein the first layer 10 is a frame shape
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`(see e.g. paragraph [0037]).
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`In regard to claim 14, Tsuji et al. discloses wherein the cover 9 is made of glass (see 6. g.
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`paragraph [0036]).
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`In regard to claim 15, Tsuji et al. discloses wherein the cover 9 has a base material layer
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`In regard to claim 16, Tsuji et al. discloses wherein the base material layer is an acrylic
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`resin layer (see e.g. paragraph [0036]).
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`Claim Rejections - 35 USC § 103
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`7.
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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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`8.
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`Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tsuji
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`et al. (US 2009/0086123 A1) in View of Cho et al. (US 2009/0091677 A1).
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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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`In regard to claim 8, Tsuji et al. discloses the limitations as applied to claim 1 above,
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`but fails to disclose wherein the second layer is made of a material harder than a material of the
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`first layer.
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`However, Cho et al. discloses wherein the second layer 211 is made of a material harder
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`than a material of the first layer 201 (see e. g. Figure 4 and paragraph [0038] where it is noted
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`that the hard coating layer is formed over a black matrix layer in order to provide a protection
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`to the layers internal to the display device. One of ordinary skill in the art would recognize
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`utilizing such a construction between the display and the cover layer in order to provide
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`protection to those external layers).
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`Given the teachings of Cho et al., it would have been obvious to one of ordinary skill in
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`the art at the time of the invention to modify the display device of Tsuji et al. with wherein the
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`second layer is made of a material harder than a material of the first layer.
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`Doing so would provide a means for providing protection to the internal display
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`components.
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`9.
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`Claims 10 and 11 are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Tsuji et al. (US 2009/0086123 A1) in View of Hotelling et al. (US
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`2008/0165139 A1).
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`In regard to claim 10, Tsuji et al. disclose the limitations as applied to claim 1 above,
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`but fails to disclose
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`a touch panel disposed between the second layer and the display panel,
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`wherein the touch panel overlaps with the first layer in plain view.
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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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`However, Hotelling et al. discloses (see e.g. Figures I ):
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`a touch panel disposed between the second layer and the display panel 119,
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`wherein the touch panel (unlabeled layers between 119 and cover glass 100) overlaps
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`with the first layer 104 in plain view.
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`Given the teachings of Hotelling 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 Tsuji et al. with a touch
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`panel disposed between the second layer and the display panel, wherein the touch panel overlaps
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`with the first layer in plain view.
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`Doing so would provide a means for providing user interaction with the display device.
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`In regard to claim 11, Tsuji et al. discloses the limitations as applied to claim 10 above,
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`but fails to disclose
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`wherein the touch panel includes a flexible printed circuit board; and
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`wherein the flexible printed circuit board overlaps with the first layer in plain view.
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`However, Hotelling et al. discloses (see e.g. Figures I ):
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`wherein the touch panel includes a flexible printed circuit board 136; and
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`wherein the flexible printed circuit board 136 overlaps with the first layer 104 in plain
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`view.
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`Given the teachings of Hotelling 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 Tsuji et al. with
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`wherein the touch panel includes a flexible printed circuit board; and wherein the flexible printed
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`circuit board overlaps with the first layer in plain view.
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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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`Doing so would provide a means for operating the touch screen, as is well known in the
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`art, as well as for shielding it from view.
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`Response to Arguments
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`10.
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`Applicant’s arguments with respect to claims 1 and 8—16 have been considered but are
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`moot because the arguments do not apply to any of the references being used in the current
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`rejection.
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`11.
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`In regard to independent claim 1, applicant’s arguments, on pages 5—7 of the Remarks,
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`that the previously applied prior art fails to disclose all of the limitations of claim 1, have been
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`fully considered and are appreciated. However, the newly cited rejection, necessitated by
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`amendment, discloses all of the limitations of claim 1, as cited above.
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`Conclusion
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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
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`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
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`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.
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`Jessica M. Merlin
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`December 14, 2015
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`/JESSICA M MERLIN/
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`Primary Examiner, Art Unit 2871
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