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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/640,241
`
`02/19/2020
`
`Keishiro MURATA
`
`083710-2882
`
`8120
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`DICKINSON,DUSTIN R
`
`2867
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
`
`10/04/2021
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`ELECTRONIC
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`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.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() 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)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mail Date 20210925
`
`Application No.
`Applicant(s)
`16/640,241
`MURATAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DUSTIN R DICKINSON
`2867
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1) Responsive to communication(s) filed on 2/19/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/640,241
`Art Unit: 2867
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`Page 2
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`2.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A personshall be entitled to a patent unless —
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`(a)}(1} the claimed invention was patented, describedina printed publication, or in public use, onsale,
`or otherwise available to the public before the effective filing date of the claimed invention.
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`3.
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`Claim(s) 1-6 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiramatsu
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`(JP2012118621 as cited by applicant, translation provided by applicant used for reference).
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`Regarding claim1, Hiramatsuteaches a touch sensor (Fig 14), comprising:
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`a substrate (11, 70) having a plurality of edges (Figs 14 where the chip portion 71 is intended to
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`be removed and the border between 71 and 72 becomes edges surrounding 71, see [0065 and 0099]);
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`a sensor electrode unit disposed on the substrate (electrode patterns 13 and 15 see [0125]); and
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`an antistatic electrode unit (23 and 24) disposed betweenthe sensor electrode unit and the
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`plurality of edges (Figs 13 and 14), the antistatic electrode unit including a first needle electrode (one of
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`24) electricallyindependent of the sensor electrode unit (separate as shown in 14), whereinafirst edge
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`(for example, right side in Fig 14) which is one of the plurality of edgesis alongin a first direction
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`(vertically in Fig 14), the first needle electrode is disposed between the first edge and the sensor
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`electrode unit (Fig 14 showing sensor electrode unit in center followed by 24 followed by the edge), and
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`the first needle electrode extends toward thefirst edge (rightward as shown in Fig 14).
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`

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`Application/Control Number: 16/640,241
`Art Unit: 2867
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`Page 3
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`Regarding claim 2, Hiramatsu teaches the touch sensor according to claim 1, wherein the
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`antistatic electrode unit further includesafirst base wire (25) disposed between thefirst edge and the
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`sensor electrode unit (Fig 14), each of a plurality of first needle electrodesis the first needle electrode
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`(plurality of 24 shown in Fig 14), and each of the plurality of first needle electrodes projects from the
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`first base wire toward thefirst edge (wherein 24 on the outside of 25 project towards the edge, see
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`[0127]).
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`Regarding claim 3, Hiramatsu teaches the touch sensor according to claim 2, wherein a second
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`edge (top as shown in Fig 14) which is one of the plurality of edges of the substrate is along ina second
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`direction (horizontally shown in Fig 14) perpendicular to thefirst direction (Fig 14), the antistatic
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`electrode unit further includes a second base wire (linear region 25 along top portion as shown in Fig 14)
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`and a second needle electrode (24 along top portion of 25) disposed betweenthe second edge and the
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`sensor electrode unit (shown in Fig 14), each of a plurality of second needle electrodes is the second
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`needle electrode (Fig 14 showing a plurality of 24 along top portion of 25), each of the plurality of
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`second needle electrodes projects from the second base wire toward the second edge (Fig 14 where 25
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`projects outward towards edge, see [0127]), the first base wire extendsin the first direction, the second
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`base wire extends in the second direction, the plurality of first needle electrodes extend in the second
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`direction and project from the first base wire toward the first edge, and the plurality of second needle
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`electrodes extend in the first direction and project from the second base wire toward the second edge
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`(Shown in Fig 14 where 24 on the right side of 25 extend towardsright edge and 24 on thetopof 25
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`extend towards the top edge).
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`

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`Application/Control Number: 16/640,241
`Art Unit: 2867
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`Page 4
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`Regarding claim4, Hiramatsu teaches the touch sensor according to claim 3, wherein thefirst
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`base wire and the second base wire areelectrically connected to each other (connection shown in Fig 14
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`also see [0127]).
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`Regarding claim5, Hiramatsu teaches the touch sensor according to claim 2, wherein each of
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`the plurality of first needle electrodesis thinner at a tip portion than ata portion connected to thefirst
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`base wire (Fig 14 which shows 24 have triangular shape with top towards edge portion described in
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`[0127] as a tapered portion).
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`Regarding claim 6, Hiramatsu teaches the touch sensor according to claim 3, wherein each of
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`the plurality of second needle electrodesis thinner at a tip portion than ata portion connected to the
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`second base wire (Fig 14 which shows 24 havetriangular shape with top towards edge portion described
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`in [0127] as a tapered portion).
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`Regarding claim 8, Hiramatsu teaches the touch sensor according to claim 1, wherein the
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`antistatic electrode unit is electrically connected to ground (see [0091 and 0092] which teach grounding
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`70 which thereby grounds 23 which includes 24 and 25).
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`Claim Rejections - 35 USC § 103
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`A patent fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 102,if the differences between the claimed invention
`and the prior art are such that the claimed invention as a whole would have been obvious before the
`effective filing date ofthe claimed invention to a person having ordinaryskillin the art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the mannerin which the invention
`was made.
`
`

`

`Application/Control Number: 16/640,241
`Art Unit: 2867
`
`Page5S
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`5.
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`Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiramatsuin view of
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`Agari (JP2015210554 as cited by applicant with translation provided by applicant used for reference).
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`Regarding claim 7 touch sensor according to claim 1, including the antistatic electrode unit but
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`does not explicitly teach further comprising: a shield electrode unit, the shield electrode unit being
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`electrically independent of the sensor electrode unit.
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`Agari however teachesa similar touch sensor(Fig 2) including further comprising: a shield
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`electrode unit (12) the shield electrode unit being electrically independent of the sensor electrode unit
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`(4 and 7. See Fig 2 showing different connections at 11 for 12 different from the sensor connections C1-
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`8).
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`It would have been obvious to one of ordinary skill in the art at the time of the effectively filed
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`date to modify the sensor of Hiramatsu to include the shield of Agariin order to reduce fringe
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`capacitance as suggested by Agari (see [0029]) thereby increasing sensor accuracy. Furthermore,
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`because Hiramatsu explicitly teaches the antistatic electrode unit being at the edge of the sensor
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`(Hiramatsu [0127]) and Agariteaches the shield immediately surrounding the sensor electrodes (Agari
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`Fig 2 and [0029]) the combination of Agariwith Hiramatsu would have lead one ofordinary skill in the
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`art to arrange the shield such that at least a portion of which is disposed between the sensor electrode
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`unit and the antistatic electrode unit as claimed.
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`6.
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`The following relevant art was found based on the search:
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`Conclusion
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`Ono (2016/0313860) teachesa shield wiring 40 as a second shield wiring is disposed in parallel
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`with the row direction in which the row-direction wirings 31 extend, outside the detectable area. The
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`shield wiring 40 is connected to correction capacitance electrodes 42a to 46a, and the ground electric
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`potential is applied to the shield wiring 40. The correction capacitance electrode 42ais disposed in the
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`

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`Application/Control Number: 16/640,241
`Art Unit: 2867
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`Page 6
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`row direction (in the direction perpendicular to the extending direction of the column-direction wirings
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`21) in which the row-direction wirings 31 extend, with respect to the connection portion R2a of the lead
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`wiring R2.
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`Nelson (2008/0267462) teaches a sensorcircuit is applied to a second surface of the non-
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`conductive substrate opposite thefirst surface to sense a fingerprint when juxtaposed proximally
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`thereto. An electrostatic discharge conductor is applied to the non-conductive surface and is located
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`between anarea where a fingerprint is swiped and the sensorcircuit. The electrostatic discharge
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`conductor discharges the electrostatic charge resulting from a user swiping a fingerprint across thefirst
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`surface.
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`7.
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to DUSTIN R DICKINSON whose telephone number is (571)272-6183. The examiner
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`can normally be reached on M-F 8:30-5.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www. uspto.gov/interviewpractice.
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`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor, Huy
`
`Phan can be reached on (571) 272-7924. The fax phone number for the organization wherethis
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`application or proceedingis 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 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 https://ppair-
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`

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`Application/Control Number: 16/640,241
`Art Unit: 2867
`
`Page 7
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`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/DUSTIN R DICKINSON/
`Examiner,Art Unit 2867
`
`/HUY Q PHAN/
`Supervisory Patent Examiner, Art Unit 2867
`
`