`
`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.
`
`13/014,088
`
`20457
`
`
`
`
` FILING DATE
`
`
`01/26/2011
`
`7590
`
`10/10/2013
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`
`Shinji SEKIGUCHI
`
`1497.51382X00
`
`9943
`
`ANTONELLI, TERRY, STOUT & KRAUS, LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1800
`ARLINGTON,VA 22209-3873
`
`YANG, NAN-YING
`
`2697
`
`MAIL DATE
`
`10/10/2013
`
`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)
`
`

`

`
`Application No.
`Applicant(s)
`
` 13/014,088 SEKIGUCHI, SHINJI
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2697NAN-YING YANG 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 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 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`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).
`
`Status
`1)X] Responsive to communication(s) filed on 06/24/2013.
`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 incorporatedinto 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)KX] Claim(s) 1-15 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) 1-15 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
`or send an inquiry to PPHieedback@uspto.qoy.
`
`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.
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date. __
`2) [J information
`Disclosure
`Statement(s)
`(PTO/SB/08
`)
`4 O Other:
`)
`nformation Disclosure
`Statement(s) (
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20131003
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
`
`Page 2
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`DETAILED ACTION
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`1,
`
`The present application is being examined underthe pre-AIAfirst to invent provisions.
`
`Response to Amendment
`
`2.
`
`This is in response to applicant’s amendment/responsefiled on 06/24/2013, which has
`
`been entered and made of record. Claims 1-3 have been amended. No claim has been cancelled.
`
`Claim 15 is newly added. Claims 1-15 are pending in the application.
`
`Response to Argument
`
`3.
`
`Applicant’s arguments with respect to amended claims and added limitations have been
`
`considered but are moot because the arguments are believed to be answered by and therefore
`
`moot in view of new ground(s) of rejection presented below. In view of amendment, the
`
`reference Hotelling has been used for new ground(s) of rejection.
`
`Examiner would further like to address the following applicant’s arguments which have
`
`been fully considered but they are not persuasive.
`
`Applicant submits “Additionally, it is not seen that Hsu disclosesthe first substrate 62 of
`
`Hsuincludes the plurality of coordinate deduction electrodes for detecting X-Y position
`
`coordinates.” (Remarks, page 8, the first paragraph).
`
`The examiner disagrees with Applicant’s premises and conclusion. Hsu discloses a
`
`transparent touch sensing system with a touch sensing panelas seen in figure 9. Hsu further
`
`discloses a first substrate 62 includes a plurality of coordinate detection traces for detecting X-Y
`
`

`

`Application/Control Number: 13/014,088
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`Art Unit: 2697
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`Page 3
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`position coordinates (See column 6, lines 38-41). Each trace 64 is a transparent conductor is used
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`to compute position in the X-axis in sensor 36. As above, examiner maintains the rejection of the
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`claim limitations as argued above by Applicant of independent claim 1.
`
`Claim Objections
`
`4.
`
`Claim 15 is objected to because of the following informalities:
`
`the phrase “A capacitive
`
`coupling type touch panel” should be “the capacitive coupling type touch panel”. Appropriate
`
`correction is required.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 U.S.C. 103(a) which formsthe basisfor all
`
`obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the inventionis notidentically disclosed or
`described as set forth in section 102 ofthis title, if the differences between the subject
`matter sought to be patented andthe prior art are such that the subject matter as a whole
`would have been obviousat the time the invention was madeto a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the mannerin which the invention was made.
`
`6.
`
`Claims 1-3, 5-8, 10, 12-14 and 15 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Hsu (US Patent No. 7,030, 860) in view of Tanabe (USPatent No. 7,014,916),
`
`and further in view of Hotelling (US. Pub. No. 2008/0309623).
`
`Asto claim 1, (currently amended) Hsu discloses a capacitive coupling type touch panel,
`
`comprising (See Fig. 1): a plurality of coordinate detection electrodes for detecting X-Y position
`
`coordinates (See Fig. 9; 64 and 70); a first substrate including the plurality of coordinate
`
`detection electrodes (See Fig. 9; 62); and a second substrate disposed to be opposedto thefirst
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`

`

`Application/Control Number: 13/014,088
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`Art Unit: 2697
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`Page 4
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`substrate (See fig. 9; 80), wherein the capacitive coupling type touch panel further comprises,
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`between the first substrate and the second substrate: a conductive layer having conductivity (See
`
`Fig. 9; 78); a nonconductive layer supporting the conductive layer (See Fig. 9; 74).
`
`Hsufails to disclose a conductive layer, which is an electrically floating conductive layer,
`
`a plurality of nonconductive spacers that are formed at intervals in a plane direction of
`
`the first substrate and the second substrate so as to provide a space between the first substrate
`
`and the second substrate; and an elastic layer that is lower in rigidity than the first substrate, the
`
`secondsubstrate, and the plurality of nonconductive spacers,
`
`wherein the electrically floating conductive layer is disposed between the space and the
`
`elastic layer, and
`
`wherein one of the space and the elastic layer, which is disposed closer to the plurality of
`
`coordinate detection electrodes than the electrically floating conductive layer, is deformed by
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`pressure by a touch applied to some ofthe plurality of nonconductive spacers.
`
`Tanabediscloses a plurality of nonconductive spacers that are formedat intervals in a
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`plane direction of the first substrate and the second substrate (See Fig. 1; 31) so as to provide a
`
`space betweenthefirst substrate and the second substrate (See Fig. 1; 31, column 3, lines 51-55);
`
`and an elastic layer that is lower in rigidity than the first substrate (See Fig.1; 23), the second
`
`substrate, and the plurality of nonconductive spacers,
`
`wherein an electrically conductive layer (See Fig. 1; 25) is disposed between the space
`
`and the elastic layer, and
`
`wherein one of the space andthe elastic layer, which is disposed closer to a plurality of
`
`coordinate detection electrodes (column 4, lines 1-2, lower lead electrodes (not shown)are
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`

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`Application/Control Number: 13/014,088
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`Art Unit: 2697
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`Page 5
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`formed on 30) than the electrically floating conductive layer, is deformed by pressure by a touch
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`applied to some of the plurality of nonconductive spacers (column 4, lines 6-10 and 11-14).
`
`At the time the invention was made, it would have been obviousto one of ordinary skill
`
`in the art to modify Hsu’s capacitive touch panel to include Tanabe’s nonconductive spacers and
`
`elastic layer because such a modification is the result of combiningprior art elements according
`
`to known methodsto yield predictable results. More specifically, Hsu’s capacitive touch panel
`
`as modified by Tanabe’s nonconductive spacers and elastic layer can yield a predictable result of
`
`having a touch panel with nonconductive spacers and an elastic layer. Thus, a person of ordinary
`
`skill would have appreciated including in Hsu’s capacitive touch panelthe ability to do Tanabe’s
`
`nonconductive spacers and elastic layer since the claimed invention is merely a combination of
`
`old elements, and in the combination each element merely would have performed the same
`
`function as it did separately, and one of ordinary skill in the art would have recognizedthat the
`
`results of the combination were predictable.
`
`Hsu as modified by Tanabe does not disclose the conductive layeris an electrically
`
`floating conductive layer.
`
`Hotelling teaches to use electrically floating transparent conductive pads (paragraph 50,
`
`“unconnectedelectrically floating transparent conductive material pads”).
`
`Since the inventions of Hsu and Hotelling both relate to capacitive touch panels, it would
`
`have been obviousto one of ordinary skill in the art at the time of the invention to modify the
`
`conductive layer of Hsu as modified by Tanabe to build the layer as an electrically floating
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`transparent conductive layer, as taught by Hotelling, in order to provide RFI blocking as well as
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`increasing the uniformity of the visual appearanceof the touch panel.
`
`

`

`Application/Control Number: 13/014,088
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`Art Unit: 2697
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`Page 6
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`Asto claim 2, (currently amended) Hsu as modified above disclose the capacitive
`
`coupling type touch panel according to claim 1,
`
`with a first substrate (Hsu, See Fig. 9, 62), a second substrate (Hsu, See Fig. 9; 80) a
`
`conductive layer (Hsu, See Fig. 9; 78), and a nonconductive layer (Hsu, See Fig. 9; 74).
`
`Hsu as modified abovefurther discloses the elastic layer is formed between a substrate
`
`(Tanabe, See Fig. 1; 28) and the electrically floating conductive layer (Tanabe, See Fig. 1; 25,
`
`Hotelling, paragraph 50, “unconnectedelectrically floating transparent conductive material
`
`pads”) supported a nonconductive layer (Tanabe, See Fig. 1; 21), and wherein the plurality of
`
`nonconductive spacers (Tanabe, See Fig. 1; 31) are formed between a substrate (Tanabe, See Fig.
`
`1; 26) andthe electrically floating conductive layer (Tanabe, See Fig. 1; where 31 is between a
`
`substrate 26 and a conductive layer 25).
`
`Asto claim 3, (currently amended) Hsu as modified above disclose the capacitive
`
`coupling type touch panel according to claim 1,
`
`with a first substrate (Hsu, See Fig. 9; 64), a conductive layer (Hsu, See fig. 9; 78), and a
`
`second substrate (Hsu, See Fig. 9; 80).
`
`Hsu as modified abovefurther discloses the elastic layer is formed between a substrate
`
`(Tanabe, See Fig 1; 26) and the electrically floating conductive layer (Tanabe, See Fig. 1; 25,
`
`Hotelling, paragraph 50, “unconnected electrically floating transparent conductive material
`
`pads”) supported by the nonconductive layer (Tanabe, See Fig. 1; 21), and wherein the plurality
`
`of nonconductive spacers (Tanabe, See Fig. 1; 31) are formed between the second substrate and
`
`the electrically floating electrically floating conductive layer (Tanabe, See Fig. 1 where 31 is
`
`between 28 and a conductive layer 25)
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
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`Page 7
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`Asto claim 5, (original) Hsu as modified above disclose the capacitive coupling type
`
`touch panel according to claim 2, wherein the elastic layer is formed in a thickness thatis larger
`
`than a height of each of the plurality of nonconductive spacers (See Fig. 2; where 23 is thicker
`
`than 31).
`
`Asto claim 6, (original) Hsu as modified above disclose the capacitive coupling type
`
`touch panel according to claim 2. Hsu further discloses an insulating film formed on the plurality
`
`of coordinate detection electrodes (See Fig. 9; 74). Tanabe further discloses a plurality of
`
`nonconductive spacers (See Fig. 1; 31).
`
`Hsu discloses the claimed invention except for the plurality of nonconductive spacers. It
`
`would have been obvious to one having ordinary skill in the art at the time the invention was
`
`madeto place the plurality of nonconductive spacers contacting the insulating film, since it has
`
`been held that rearranging parts of an invention involves only routine skill in theart. In re
`
`Japikse, 86 USPQ 70.
`
`Asto claim 7, (original) Hsu as modified above disclose the capacitive coupling type
`
`touch panel according to claim 1. Tanabe further discloses the plurality of nonconductive spacers
`
`comprise beads (See Fig. 1; 31 Col 3 55-58).
`
`Asto claim 8, (original) Hsu as modified above disclose The capacitive coupling type
`
`touch panel according to claim 1, wherein the plurality of nonconductive spacers comprise
`
`protrusions protruding from oneofthe first substrate side and the second substrate side (See Fig.
`
`1; 31).
`
`Asto claim 10, (original) Hsu as modified above disclose the capacitive coupling type
`
`touch panel according to claim 1. Hsu further discloses a display device with a touch panel,
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
`
`Page 8
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`comprising: a display device including a display portion; and the capacitive coupling type touch
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`panel is disposed on the display portion (Col. 9 Il. 33-48).
`
`Claims 12-14 (original) have limitations similar to those in claim 5 treated in the above
`
`rejection, and are metby the references as discussed above.
`
`Asto claim 15, (new) Hsu as modified above disclose a capacitive coupling type touch
`
`panel according to claim 1, wherein a capacitance between an X coordinate detection electrode
`
`and the electrically floating conductive layer (Hsu, figure 9, capacitance between "64" and "78"
`
`where "64"is the X coordinate detection electrode, column 6, lines 38-41, Hotelling, paragraph
`
`50, “unconnected electrically floating transparent conductive material pads”) and a capacitance
`
`between a Y coordinate detection electrode and the electrically floating conductive layer (Hsu,
`
`figure 9, capacitance between "64" and "78" where "70"is the Y coordinate detection electrode,
`
`column6, lines 45-48) are in series (the above two capacitancesare in series since they have a
`
`joint connectionat the electrical conductive layer ““78”).
`
`7.
`
`Claims 4 and 11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hsu (US
`
`Patent No. 7,030, 860) in view of Tanabe (US Patent No. 7,014,916), further in view of
`
`Hotelling (US. Pub. No. 2008/0309623), as applied to claims 1-3, 5-8, 10, 12-14 and 15, and
`
`further view of Miyazaki (WO2009/150899).
`
`Asto claim 4, (original) Hsu as modified above disclose the capacitive coupling type
`
`touch panel according to claim 2. Hsu as modified abovefail to disclose the elastic layer
`
`comprises three layers including an intermediate layer and two layers sandwiching the
`
`intermediate layer, and wherein the intermediate layer is higher in rigidity than the two layers
`
`sandwiching the intermediate layer.
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
`
`Page 9
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`However, Miyazaki discloses an elastic layer comprising three layers including an
`
`intermediate layer (See Fig. 1; 50b), and two layers sandwiching the intermediate layer (See Fig.
`
`1 50a and 50c).
`
`Miyazaki discloses the claimed invention except for the intermediate layer being higher
`
`in rigidity than the two layers sandwiching the intermediate layer. It would have been an obvious
`
`matter of design choice to place an intermediate layer higherin rigidity than the two layers
`
`sandwiching the intermediate layer, since applicant has not disclosed that placing an intermediate
`
`layer higherin rigidity than the two layers sandwiching the intermediate layer solves any stated
`
`problem oris for any particular purpose and it appears that the invention would perform equally
`
`well with an elastic layer comprising three elastic layers.
`
`Claim 11 (original) has limitations similar to those in claim 4 treated in the above
`
`rejection, and are metby the references as discussed above.
`
`8.
`
`Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Hsu (US Patent
`
`No. 7,030, 860) in view of Tanabe (USPatent No. 7,014,916), further in view of Hotelling (US.
`
`Pub. No. 2008/0309623), as applied to claims 1-3, 5—8, 10, 12-14 and 15, and further view of
`
`Coket al. US 7,081,888.
`
`Asto claim 9, (original) Hsu as modified above disclose the capacitive coupling type
`
`touch panel according to claim 1. Hsu as modified abovefail to disclose the plurality of
`
`nonconductive spacers are disposed at intervals of equal to or larger than 20 tum and equal to or
`
`smaller than 10,000 um.
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
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`Page 10
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`However Cokdiscloses wherein the plurality of nonconductive spacers are disposed at
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`intervals of equal to or larger than 20 um and equalto or smaller than 10,000 um (Col. 5 IL. 44—
`
`46).
`
`At the time the invention was made, it would have been obviousto one of ordinary skill
`
`in the art to modify Hsu as modified by Tanabe touch panel to include Cok’s intervals because
`
`such a modification is the result of combining prior art elements according to known methodsto
`
`yield predictable results. More specifically, Hsu as modified by Tanabe touch panel as modified
`
`by Cok’s intervals can yield a predictable result of obtaining elastic deformation andtransition
`
`temperature improvements so the touch screen maintains high accuracy and providesclarity.
`
`Thus, a person of ordinary skill would have appreciated including in Hsu as modified by Tanabe
`
`touch panelthe ability to do Cok’s intervals since the claimed invention is merely a combination
`
`of old elements, and in the combination each element merely would have performed the same
`
`function as it did separately, and one of ordinary skill in the art would have recognizedthat the
`
`results of the combination were predictable.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
`
`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`MONTHSfrom the mailing date of this action. In the eventa first reply is filed within TWO
`
`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
`
`Page 11
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`the end of the THREE-MONTHshortened statutory period, then the shortened statutory period
`
`will expire on the date the advisory action is mailed, and any extension fee pursuant to 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 than SIX MONTHSfrom the date of this
`
`final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to NAN-YING YANGwhose telephone numberis (571)272-2211.
`
`The examiner can normally be reached on Monday-Friday, 8:00am-5:30pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Alexander Eisen can be reached on 571-272-7687. The fax phone numberfor the
`
`organization where this 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
`
`maybe 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.
`
`10/03/2013
`/NAN-YING YANG/
`Examiner, Art Unit 2697
`
`

`

`Application/Control Number: 13/014,088
`
`Art Unit: 2697
`
`Page 12
`
`/Alexander Eisen/
`Supervisory Patent Examiner, Art Unit 2697
`
`