UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/114,392
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`08/28/2018
`
`Eiji OOHIRA
`
`0520-50722C4
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`9224
`
`””2””
`759°
`MICHAEL BEST & FRIEDRICH LLP
`
`100 E Wisconsin Ave
`Suite 3300
`Milwaukee WI53202
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`SHENG' TOM V
`
`2628
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`PAPERNUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/12/2019
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`ELECTRONIC
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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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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`MBJP @michaelbest.com
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`ayamada@ michaelbestcom
`mkeipdocket@michaelbest.com
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`16/114,392
`Examiner
`TOM v SHENG
`
`Applicant(s)
`OOHIRA, Eiji
`Art Unit
`2628
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`AIA (FITF) Status
`No
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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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`Status
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`1). Responsive to communication(s) filed on 8/28/18.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] 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.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`Claim(s) fl is/are allowed.
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`Claim(s) fl is/are rejected.
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`E] Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* 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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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 8/28/18 is/are: a). accepted or b)D objected to by the Examiner.
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`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).
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`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:
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`a). All
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`b)|:] Some**
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`c)C] None of the:
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`1.|:] Certified copies of the priority documents have been received.
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`2.. Certified copies of the priority documents have been received in Application No. 12/763,450.
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`31:] 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)).
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`** 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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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date M.
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190906
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`

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`Application/Control Number: 16/114,392
`Art Unit: 2628
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre-AIA first to invent provisions.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
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`Claim Rejections - 35 USC § 112
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`Claims 4-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as
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`being indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
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`As for claim 4, it is unclear as to the scope of
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`”wherein a distance, in a plane view, between an end portion of the second layer of the logo
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`and an end portion of the touch panel element is greater than zero so that the second layer does not
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`overlap the touch panel element in a plane view.”
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`In view of
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`wherein the logo is formed by two layers including a first layer and a second layer,
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`

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`Application/Control Number: 16/114,392
`Art Unit: 2628
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`Page 3
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`wherein a portion of the two layers of the logo is provided on a first portion of the inner surface
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`of the front window which is outside of a second portion of the inner surface of the front window which
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`is covered by the adhesive material,
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`wherein the second layer includes an opening so as to cut out a shape of the logo,
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`wherein the first layer fills the opening, and wherein a color of the first layer is different from
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`that of the second layer, fig. 7 is the applicable embodiment of the invention. Accordingly, the first layer
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`would be layer 82 filling the opening provided by layer 81 as the second layer. As shown in fig. 7, there
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`is a distance L between the right end portion of layer 82 (the first layer) and the left end portion of the
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`touch panel element 100, not a distance between an end portion of the second layer (i.e. layer 81) and
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`an end portion of the touch panel element (overlapped instead), as recited above. Claims 5 and 6 do
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`not resolve the issue. Claim 6 has the same distance issue as with claim 4.
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`Allowable Subject Matter
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`Claims 1-3 are allowed.
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`Claims 4-6 would be allowable if rewritten or amended to overcome the rejection(s) under 35
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`U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action.
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`The following is a statement of reasons for the indication of allowable subject matter:
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`None of the prior art of record teaches, inter alia,
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`wherein the logo comprises a plurality of layers and is formed on a surface of the front window,
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`wherein a portion of the plurality of layers of the logo is provided on a first portion of the
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`surface of the front window which is outside of a second portion of the surface of the front window
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`which is covered by the adhesive material,
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`wherein the plurality of layers of the logo includes a first layer and a second layer,
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`wherein the second layer includes an opening so as to cut out a shape of the logo,
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`

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`Application/Control Number: 16/114,392
`Art Unit: 2628
`
`wherein the first layer fills the opening,
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`Page 4
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`wherein the first layer does not overlap the touch panel element in a plane view, and
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`wherein the plurality of layers of the logo includes two color resin, of claim 1 (fig. 7).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to TOM V SHENG whose telephone number is (571)272-7684. The examiner can
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`normally be reached on Mon-Fri 9:30-6:30.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Nitin Patel can be reached on 571-272-7677. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`CANADA) or 571-272-1000.
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`

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`Application/Control Number: 16/114,392
`Art Unit: 2628
`
`/TOM V SHENG/
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`Primary Examiner, Art Unit 2628
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`Page 5
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