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`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
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`12/849,100
`
`08/03/2010
`
`Yasushi Nakano
`
`1497.50985X00
`
`7210
`
`20457
`
`7590
`
`01/16/2013
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON, VA 22209-3873
`
`CONNELLY, MICHELLE R
`
`2874
`
`MAIL DATE
`
`01/16/2013
`
`PAPER NUMBER
`
`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)
`
`

`

`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`12/849,100
`
`NAKANO ET AL.
`
`Examiner
`MICHELLE R. CONNELLY
`
`Art Unit
`2874
`
`-- 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 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`In no event however may a reply be timely filed
`after SIX () 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).
`
`Status
`
`1)IZI Responsive to communication(s) filed on 01 November 2012.
`
`2a)I:l This action is FINAL.
`
`2b)IZ| This action is non-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)|:l 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZI Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s) 9 and 13 is/are withdrawn from consideration.
`
`6)I:I Claim(s) _ is/are allowed.
`
`7)|Zl Claim(s) 1-8 and 10-12is/are rejected.
`
`
`8)I:I Claim(s)
`
`is/are objected to.
`
`9)|Zl Claim((s)_1-13 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
`
`htt
`:/'/www.us to. om’watents/init events/mnh/inq'exls or send an inquiry to PPeredback usntqt 0v.
`
`Application Papers
`
`10)IXI The specification is objected to by the Examiner.
`
`11)|Z| The drawing(s) filed on 03 August 2010 is/are: a)IZI 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).
`
`a)lX| All
`
`b)I:I Some * c)|:l None of:
`
`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 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)
`
`1) X Notice of References Cited (PTO-892)
`
`2) IX! Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date 8/3/10.
`US. Patent and Trademark Office
`
`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
`
`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20130112
`
`
`
`

`

`Application/Control Number: 12/849,100
`
`Page 2
`
`Art Unit: 2874
`
`DETAILED ACTION
`
`Election/Restrictions
`
`Applicant’s election without traverse of Species C, claims 1, 4-8 and 10-12 in the
`
`reply filed on November 1, 2012 is acknowledged. After reviewing the claims, the
`
`examiner has found that claims 2 and 3 may also read on the elected Species C,
`
`therefore an action on the merits of claims 1-8 and 10-12 follows.
`
`Claims 9 and 13 are withdrawn from further consideration pursuant to 37 CFR
`
`1.142(b) as being drawn to a nonelected species, there being no allowable generic or
`
`linking claim.
`
`Information Disclosure Statement
`
`The prior art documents submitted by applicant in the Information Disclosure
`
`Statement filed on August 3, 2010 have all been considered and made of record (note
`
`the attached copy of form PTO-1449).
`
`Drawings
`
`Seven (7) sheets of drawings were filed on August 3, 2010 and have been
`
`accepted by the examiner.
`
`Specification
`
`The disclosure is objected to because of the following informalities: "(Fig. 4D)” in
`
`line 5 on page 12 should be — (Fig. 5D) --; and “(Fig. 4E)” in line 8 on page 12 should be
`
`— (Fig. 5E)
`
`Appropriate correction is required.
`
`

`

`Application/Control Number: 12/849,100
`
`Page 3
`
`Art Unit: 2874
`
`Applicant's cooperation is requested in correcting any errors of which applicant
`
`may become aware in the specification.
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`Claims 1, 2, 6, 8 and 12 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by lzumi (US 2009/0091693 A1).
`
`Regarding claim 1; lzumi discloses a display device (see the title, abstract and
`
`Figure 8) having a thin film transistor or a color filter on a glass substrate (TFT glass
`
`substrate 102 or CF glass substrate 101, respectively; see paragraph 37), and a
`
`polarizing plate (polarizing plates 306a and/or 306b; see paragraph 47) attached to the
`
`glass substrate with an adhesive (see paragraph 50), wherein a resin film (5a and/or 5b;
`
`see paragraph 45) having no viscosity or adhesion is disposed on the polarizing plate
`
`side surface of the glass substrate (see Figure 8).
`
`Regarding claim 2; the polarizing plate (5a, 5b) is attached to the resin film with
`
`an adhesive (see paragraph 50).
`
`Regarding claim 6; the resin film is such that an ultraviolet curable (ultraviolet
`
`(UV) curing resin) or heat curable resin (thermosetting resin) is applied as a coating,
`
`and thereafter, cured (see paragraph 45).
`
`

`

`Application/Control Number: 12/849,100
`
`Page 4
`
`Art Unit: 2874
`
`Regarding claim 8; the thickness of the resin film is 100 micrometers or less (see
`
`paragraphs 43 and 61 ).
`
`Regarding claim 12; the display device is a liquid crystal device (see LC layer
`
`104; see paragraph 44).
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 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.
`
`Claims 5, 7, 10 and 11 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over lzumi (US 2009/0091693 A1).
`
`Regarding claim 5; lzumi does not specify that a resin film is formed only in an
`
`area close to the perimeter of the glass substrate. However, one of ordinary skill in the
`
`art would have found it obvious to form the resin film only in an area close to the
`
`perimeter of the glass substrate for the purpose of providing the mechanical
`
`strengthening properties (see paragraph 61) in an area close to the perimeter of the
`
`glass substrate so that the resulting LCD device is less likely to be damaged during
`
`further processing, handling and assembly steps, while eliminating the impact of the
`
`resin film on the viewing area of the LCD device.
`
`Regarding claim 7; lzumi does not specify a retardation value of the resin film (5a
`
`and/or 5b). One of ordinary skill in the art would have found it obvious to have the resin
`
`film have any desired retardation value, including a small retardation value of 5 nm or
`
`

`

`Application/Control Number: 12/849,100
`
`Page 5
`
`Art Unit: 2874
`
`less, for the purpose of minimizing the retardation applied to light passing there-through
`
`to obtain desired transmission results, since it has been held that where the general
`
`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
`
`ranges involves only routine skill in the art (In re Aller, 105 USPQ 233) and that
`
`discovering an optimum value of a result effective variable involves only routine skill in
`
`the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
`
`Regarding claims 10 and 11; lzumi does not disclose that the thickness of the
`
`glass substrate is 0.15 mm or less, or 0.05 mm or less, however, one of ordinary skill in
`
`the art would have found it obvious to make the glass substrate be any desired
`
`thickness, including a thickness of 0.15 mm or less, or 0.05 mm or less, for the purpose
`
`of minimizing loss and or deflection of light travelling through the glass substrate to
`
`obtain desired transmission results, since it has been held that where the general
`
`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
`
`ranges involves only routine skill in the art (In re Aller, 105 USPQ 233) and that
`
`discovering an optimum value of a result effective variable involves only routine skill in
`
`the art (In re Boesch, 617 F.2d 272, 205 USPQ 215(CCPA1980).
`
`Claims 1-4, 7, 8 and 10-12 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Kim et al. (WO 2009/084832 A2) in view of Sakamoto (US
`
`7,177,067 B1) and Matsumori et al. (US 2009/0103018 A1).
`
`Regarding claims 1 and 12; Kim et al. discloses a display device (LCD; see the
`
`abstract, and paragraphs 14 and 66) having a glass substrate (LCD glass; see
`
`paragraph 66) and a polarizing plate (polarizer; see Figure 1 and paragraphs 12-18)
`
`

`

`Application/Control Number: 12/849,100
`
`Page 6
`
`Art Unit: 2874
`
`attached to the glass substrate with an adhesive (pressure-sensitive adhesive layer; see
`
`Figure 1 and paragraph 66), wherein a resin film (antistatic layer; see Figure 1 and
`
`paragraph 54) having no viscosity or adhesion is disposed on the polarizing plate
`
`(polarizer; see Figure 1) side surface of the glass substrate (the glass substrate of the
`
`LCD is disposed on the pressure sensitive adhesive layer in Figure 1 after the release
`
`film is removed).
`
`Kim et al. does not explicitly state that the display device (LCD) has a thin film
`
`transistor or a color filter on the glass substrate. Liquid crystal displays are typically
`
`formed by a first glass or plastic substrate having a color filter formed thereon and a
`
`second glass or plastic substrate having a TFT filmed thereon with a liquid crystal layer
`
`disposed between the first and second substrates. This arrangement is very
`
`elementary in the art. For example, Sakamoto discloses a LCD with a TFT glass
`
`substrate (3; see Figure 6) and Matsumori et al. disclose a LCD with a TFT glass
`
`substrate (101 ; see paragraph 59). One of ordinary skill in the art would have been
`
`motivated to use any known LCD with the polarizing film stack disclosed by Kim et al.,
`
`including the LCD of Sakamoto and/or Matsumori et al., thereby providing a glass TFT
`
`substrate adhered to the film stack in Figure 1 of Kim et al. to prevent any malfunctions
`
`of the LCD associated with static electricity (see the abstract of Kim et al.).
`
`Regarding claim 2; the polarizing plate (polarizer) is attached to the resin film
`
`with an adhesive (polyvinyl alcohol adhesive and pressure sensitive adhesive are used
`
`to attach the layers such that the polarizer is attached to the resin film see paragraphs
`
`49, 51, 55 and 56 and Figure 1).
`
`

`

`Application/Control Number: 12/849,100
`
`Page 7
`
`Art Unit: 2874
`
`Regarding claim 3; a plastic substrate (resin film, base film; see Figure 1 and
`
`paragraph 50) is attached to the resin film (antistatic layer) with an adhesive (pressure
`
`sensitive adhesive; see paragraphs 49 and 55), and furthermore, the polarizing plate
`
`(polarizer) is attached to the plastic substrate (resin film, base film) with an adhesive
`
`(polyvinyl alcohol adhesive; see paragraphs 51 and 56).
`
`Regarding claim 4; Sakamoto discloses a LCD (see Figure 6) comprising a
`
`display panel in which a thin film transistor (TFT) is formed on the glass substrate (3;
`
`TFT glass substrate), a color filter (CF, including colored layer, 25) is formed on a
`
`plastic substrate (5, CF plastic facing substrate), and the glass substrate (3) and the
`
`plastic substrate (5) are disposed opposed to each other.
`
`Matsumori et al. discloses a LCD (see Figures 1, 2) comprising a display panel in
`
`which a thin film transistor is formed on a glass substrate (glass substrate 101 is a TFT
`
`substrate; see paragraph 59), a color filter (CF) is formed on a plastic substrate (CF
`
`substrate 102 includes a resin film base; see paragraph 59), and the glass substrate
`
`and the plastic substrate are disposed opposed to each other.
`
`One of ordinary skill in the art would have found it obvious to use the film stack
`
`disclosed by Kim et al. with either the LCD of Sakamoto or the LCD of Matsumori et al.
`
`by adhering the film stack (see Figure 1 of Kim et al.) to the glass substrate of the LCD
`
`of either Sakamoto or Matsumori et al. for the purpose of incorporating a polarizing film
`
`stack in the LCDs that prevents a malfunction of the LCD associated with static
`
`electricity. Thus, another plastic substrate (resin film, base film; see Figure 1 of Kim et
`
`al.) is attached to the resin film (antistatic layer) of the glass substrate (TFT glass
`
`

`

`Application/Control Number: 12/849,100
`
`Page 8
`
`Art Unit: 2874
`
`substrate of either Sakamoto or Matsumori et al.) with an adhesive (pressure-sensitive
`
`adhesive layer of Kim et al.), and furthermore, the polarizing plate (polarizer of Kim et
`
`al.) is attached to the other plastic substrate (resin film, base film of Kim et al.) with an
`
`adhesive (see paragraphs 51 and 56, polyvinyl alcohol adhesive).
`
`Regarding claim 7; Kim et al. does not specify a retardation value of the resin film
`
`(5a and/or 5b). One of ordinary skill in the art would have found it obvious to have the
`
`resin film have any desired retardation value, including a small retardation value of 5 nm
`
`or less, for the purpose of minimizing the retardation applied to light passing there-
`
`through to obtain desired transmission results, since it has been held that where the
`
`general conditions of a claim are disclosed in the prior art, discovering the optimum or
`
`workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 233) and
`
`that discovering an optimum value of a result effective variable involves only routine skill
`
`in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
`
`Regarding claim 8; the thickness of the resin film (antistatic film of Kim et al.) is
`
`100 micrometers or less (see paragraph 52).
`
`Regarding claims 10 and 11; Kim et al., Sakamoto and Matsumori et al. do not
`
`disclose that the thickness of the glass substrate is 0.15 mm or less, or 0.05 mm or less,
`
`however, one of ordinary skill in the art would have found it obvious to make the glass
`
`substrate be any desired thickness, including a thickness of 0.15 mm or less, or 0.05
`
`mm or less, for the purpose of minimizing loss and or deflection of light travelling
`
`through the glass substrate to obtain desired transmission results, since it has been
`
`held that where the general conditions of a claim are disclosed in the prior art,
`
`

`

`Application/Control Number: 12/849,100
`
`Page 9
`
`Art Unit: 2874
`
`discovering the optimum or workable ranges involves only routine skill in the art (In re
`
`Aller, 105 USPQ 233) and that discovering an optimum value of a result effective
`
`variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215
`
`(CCPA 1980).
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure: Yano (US 5,706,065); Okamoto (US 6,147,738); Yamaoka et al.
`
`(US 6,417,904 B1); Hayashi et al. (US 2010/0327737 A1); Sasaki et al. (US
`
`2011/0051070 A1); and Nakano et al. (US 2011/0255034 A1).
`
`Any inquiry concerning the merits of this communication should be directed to
`
`Examiner Michelle R. Connelly at telephone number (571) 272-2345. The examiner
`
`can normally be reached 9:00 AM to 7:00 PM, Monday-Thursday.
`
`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Uyen-Chau Le can be reached on (571) 272-2397. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`Any inquiry of a general or clerical nature should be directed to the Technology
`
`Center 2800 receptionist at telephone number (571) 272-1562.
`
`/Michelle R. Connelly/
`Primary Patent Examiner
`Art Unit 2874
`
`

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