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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`12/702,813
`
`02/09/2010
`
`Atsuo NAKAGAWA
`
`1497-50561X00
`
`2820
`
`”72“
`
`7590
`
`”15/20”
`
`Lowe Hauptman & Ham, LLP
`2318 Mill Road
`Suite 1400
`Alexandria, VA 22314
`
`MERLIN, JESSICA M
`
`2871
`
`MAIL DATE
`
`12/15/2015
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/0r 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)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/702,813 NAKAGAWA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2871JESSICA M. MERLIN first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`
`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
`
`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
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`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.
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20151214
`
`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.
`s
`1 and 8-16 is/are rejected.
`
`is/are objected to.
`
`I )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l C|aim(s
`I
`* 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
` 3
`hit
`://www.usoto. ov/ atents/init events) .h/index.‘
`
`
`
`
`
`, or send an inquiry to PRl-lfeedback{<‘buspto.qov.
`
`Application Papers
`
`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).
`
`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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`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
`
`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)
`
`
`
`

`

`Application/Control Number: 12/702,813
`
`Page 2
`
`Art Unit: 2871
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre—AIA first to invent provisions.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the preVious Office action has been withdrawn pursuant to
`
`37 CFR 1.114. Applicant's submission filed on October 7, 2015 has been entered.
`
`Response to Amendment
`
`3.
`
`Receipt is acknowledged of applicant’s amendment filed October 7, 2015. Claims 2—7
`
`have been cancelled without prejudice. Claims 1 and 8—16 are pending and an action on the
`
`merits is as follows.
`
`Claim Objections
`
`4.
`
`Claim 13 is objected to because of the following informalities: “flame" should be
`
`replaced with “frame” in order to correct what appears to be a typographical error. Appropriate
`
`correction is required.
`
`

`

`Application/Control Number: 12/702,813
`
`Page 3
`
`Art Unit: 2871
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`The following is a quotation of the appropriate paragraphs of pre—AIA 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless ,
`
`(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.
`
`6.
`
`Claims 1, 9 and 12-16 are rejected under pre-AIA 35 U.S.C. 102(e) as being
`
`anticipated by Tsuji et al. (US 2009/0086123 A1).
`
`In regard to claim 1, Tsuji et al. discloses a display device comprising (see e.g. Figure
`
`2):
`
`a display panel 1;
`
`a light transmitting cover 9 which covers a display screen of the display 1;
`
`a first layer 10 printed on the cover 9; and
`
`a second layer 14 covering the first layer 10,
`
`wherein the cover 9 includes the first layer 10 which is on a surface of the cover facing
`
`the display panel 1;
`
`wherein the first layer 10 surrounds a center portion of the display panel 1 in plain view;
`
`and
`
`wherein the second layer 14 covers the first layer 10 and the center portion of the cover in
`
`plain View 9.
`
`

`

`Application/Control Number: 12/702,813
`
`Page 4
`
`Art Unit: 2871
`
`In regard to claim 9, Tsuji et al. discloses wherein the second layer 14 is a preventing—
`
`flaw layer.
`
`In regard to claim 12, Tsuji et al. discloses
`
`wherein the cover 9 has a plurality of comers in plain View (see 6. g. Figures 3 -4); and
`
`wherein the first layer 10 is printed on all of the plurality of comer in plain View (see 6. g.
`
`paragraph [0037]).
`
`In regard to claim 13, Tsuji et al. discloses wherein the first layer 10 is a frame shape
`
`(see e.g. paragraph [0037]).
`
`In regard to claim 14, Tsuji et al. discloses wherein the cover 9 is made of glass (see 6. g.
`
`paragraph [0036]).
`
`In regard to claim 15, Tsuji et al. discloses wherein the cover 9 has a base material layer
`
`In regard to claim 16, Tsuji et al. discloses wherein the base material layer is an acrylic
`
`resin layer (see e.g. paragraph [0036]).
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of pre—AIA 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections 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 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.
`
`8.
`
`Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tsuji
`
`et al. (US 2009/0086123 A1) in View of Cho et al. (US 2009/0091677 A1).
`
`

`

`Application/Control Number: 12/702,813
`
`Page 5
`
`Art Unit: 2871
`
`In regard to claim 8, Tsuji et al. discloses the limitations as applied to claim 1 above,
`
`but fails to disclose wherein the second layer is made of a material harder than a material of the
`
`first layer.
`
`However, Cho et al. discloses wherein the second layer 211 is made of a material harder
`
`than a material of the first layer 201 (see e. g. Figure 4 and paragraph [0038] where it is noted
`
`that the hard coating layer is formed over a black matrix layer in order to provide a protection
`
`to the layers internal to the display device. One of ordinary skill in the art would recognize
`
`utilizing such a construction between the display and the cover layer in order to provide
`
`protection to those external layers).
`
`Given the teachings of Cho et al., it would have been obvious to one of ordinary skill in
`
`the art at the time of the invention to modify the display device of Tsuji et al. with wherein the
`
`second layer is made of a material harder than a material of the first layer.
`
`Doing so would provide a means for providing protection to the internal display
`
`components.
`
`9.
`
`Claims 10 and 11 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Tsuji et al. (US 2009/0086123 A1) in View of Hotelling et al. (US
`
`2008/0165139 A1).
`
`In regard to claim 10, Tsuji et al. disclose the limitations as applied to claim 1 above,
`
`but fails to disclose
`
`a touch panel disposed between the second layer and the display panel,
`
`wherein the touch panel overlaps with the first layer in plain view.
`
`

`

`Application/Control Number: 12/702,813
`
`Page 6
`
`Art Unit: 2871
`
`However, Hotelling et al. discloses (see e.g. Figures I ):
`
`a touch panel disposed between the second layer and the display panel 119,
`
`wherein the touch panel (unlabeled layers between 119 and cover glass 100) overlaps
`
`with the first layer 104 in plain view.
`
`Given the teachings of Hotelling et al., it would have been obvious to one of ordinary
`
`skill in the art at the time of the invention to modify the display device of Tsuji et al. with a touch
`
`panel disposed between the second layer and the display panel, wherein the touch panel overlaps
`
`with the first layer in plain view.
`
`Doing so would provide a means for providing user interaction with the display device.
`
`In regard to claim 11, Tsuji et al. discloses the limitations as applied to claim 10 above,
`
`but fails to disclose
`
`wherein the touch panel includes a flexible printed circuit board; and
`
`wherein the flexible printed circuit board overlaps with the first layer in plain view.
`
`However, Hotelling et al. discloses (see e.g. Figures I ):
`
`wherein the touch panel includes a flexible printed circuit board 136; and
`
`wherein the flexible printed circuit board 136 overlaps with the first layer 104 in plain
`
`view.
`
`Given the teachings of Hotelling et al., it would have been obvious to one of ordinary
`
`skill in the art at the time of the invention to modify the display device of Tsuji et al. with
`
`wherein the touch panel includes a flexible printed circuit board; and wherein the flexible printed
`
`circuit board overlaps with the first layer in plain view.
`
`

`

`Application/Control Number: 12/702,813
`
`Page 7
`
`Art Unit: 2871
`
`Doing so would provide a means for operating the touch screen, as is well known in the
`
`art, as well as for shielding it from view.
`
`Response to Arguments
`
`10.
`
`Applicant’s arguments with respect to claims 1 and 8—16 have been considered but are
`
`moot because the arguments do not apply to any of the references being used in the current
`
`rejection.
`
`11.
`
`In regard to independent claim 1, applicant’s arguments, on pages 5—7 of the Remarks,
`
`that the previously applied prior art fails to disclose all of the limitations of claim 1, have been
`
`fully considered and are appreciated. However, the newly cited rejection, necessitated by
`
`amendment, discloses all of the limitations of claim 1, as cited above.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JESSICA M. MERLIN whose telephone number is (571)270—
`
`3207. The examiner can normally be reached on Monday—Thursday 6:00AM—4z30 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Edward Glick can be reached on (571) 272—2490. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571—273—8300.
`
`

`

`Application/Control Number: 12/702,813
`
`Page 8
`
`Art Unit: 2871
`
`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 access to 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 automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`Jessica M. Merlin
`
`December 14, 2015
`
`/JESSICA M MERLIN/
`
`Primary Examiner, Art Unit 2871
`
`

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