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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
`
`16/955,772
`
`06/19/2020
`
`KOJI OBATA
`
`083710-3064
`
`9221
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`KELLY, RAFFERTY D
`
`2876
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`12/20/2021
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`ELECTRONIC
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-14 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-14 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] 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:/Awww.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)M The drawing(s)filed on 6/19/20 is/are: a) accepted or b)C) 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
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4% 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 20200619.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211215
`
`Application No.
`Applicant(s)
`16/955,772
`OBATAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`RAFFERTY D KELLY
`2876
`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
`
`1)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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\() 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: 16/955,772
`Art Unit: 2876
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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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.
`
`Claim Rejections - 35 USC § 102
`
`Inthe event the determination of the status of the application as subject to AIA35 U.S.C. 102
`
`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis for the rejection will not be considered a new ground ofrejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under either status.
`
`The following is a quotation of the appropriate paragraphsof 35 U.S.C. 102 that form the basis
`
`for the rejections under this section made in this Office action:
`
`A personshall be entitled to a patent unless —
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`(a)}(2} the claimed invention was described in a patent issued under section 151, orinanapplication
`for patent published or deemed published under s ection 122(b), in which the patent or application, as
`the case maybe, names another inventor and was effectively filed before the effectivefiling date of
`the claimed invention.
`
`Claim(s) 1-5 and 7-14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
`
`Sotobayashi et al. (US 2011/0102150 A1).
`
`Regarding claim1, Sotobayashi teaches a semiconductor device comprising:
`
`a semiconductor chip (41); and
`
`an antenna(Fig. 7),
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`wherein the semiconductor chip and the antenna are directly fixed on a surface of an article
`
`(Fig. 5) and exposed from the surface of the article by more than or equal to 1/2 of respective height
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`dimensions in respective thickness directions (Fig. 1, Fig. 5).
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`Regarding claim 2, Sotobayashi teaches a semiconductor device comprising:
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`a thin film transistor (41, Fig. 16, [0233]); and
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`

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`Application/Control Number: 16/955,772
`Art Unit: 2876
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`an antenna(Fig. 7),
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`Page 3
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`wherein the thin film transistor and the antenna are directly fixed ona surface of an article (Fig.
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`16).
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`Regarding claim 3, Sotobayashi teaches further comprising a semiconductorchip [0147].
`
`Regarding claim4, Sotobayashi teaches wherein the semiconductorchip is a silicon chip [0226].
`
`Regarding claim5, Sotobayashi teaches a semiconductor device comprising:
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`at least one of a semiconductorchip (41) and a thin film transistor on an underlayer of
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`the semiconductor device (Fig. 8); and
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`an antenna on the underlayer (Fig. 8),
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`wherein
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`the at least one of the semiconductor chip and the thin film transistor, and the antenna
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`are directly fixed on a surface of the underlayer (Fig. 8), and
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`the underlayer is directly fixed on a surface of an article (Fig. 10).
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`Regarding claim 7, Sotobayashi teaches wherein the semiconductor chip is a semiconductor
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`bare chip (Fig. 5).
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`Regarding claim 8, Sotobayashi teaches wherein the semiconductor chip is fixed in a face up
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`manner (Fig. 5), the semiconductor device further includes a wiring (Fig. 8), and the antenna and the
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`wiring are printed components [0233].
`
`Regarding claim9, Sotobayashi teaches wherein the semiconductor device is a wireless
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`communication semiconductor device, and the semiconductor device includes the antenna, the wiring,
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`and at least one of the semiconductorchip and the thin film transistor (Fig. 8).
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`Regarding claim 10, Sotobayashi teaches wherein a surface of the article on which the
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`semiconductor deviceis fixed is made of a metal (abstract), and the surface of the article is electrically
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`connected to the semiconductor device to function as the antenna [0023].
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`

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`Application/Control Number: 16/955,772
`Art Unit: 2876
`
`Page 4
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`Regarding claim 11, Sotobayashi teaches wherein the surface of the article on which the
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`semiconductoris fixed has a three-dimensional shape (Fig. 18).
`
`Regarding claims 12 and 13, these claims are analogous to the claims above and are therefore
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`also taught by Sotobayashi.
`
`Regarding claim 14, Sotobayashi teaches wherein the article is a marketable finished product
`
`(Fig. 1).
`
`Claim Rejections - 35 USC § 103
`
`Inthe event the determination of the status of the application as subject to AIA35 U.S.C. 102
`
`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis for the rejection will not be considered a new ground ofrejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`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 ordinary skillinthe art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the mannerin which the invention
`was made.
`
`Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sotobayashi in view of
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`Lee etal. (US 2006/0094172 A1).
`
`Regarding claim 6, Sotobayashi lacks the organic TFT.
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`Lee teaches wherein the thin film transistor is an organic thin film transistor [0009].
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`Therefore it would have been obvious to use an organicthin film transistor as taught by Lee
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`becauseit can be fabricated through a low-priced process and the fabrication is simple (see paragraph
`
`0009).
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`Conclusion
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`

`

`Application/Control Number: 16/955,772
`Art Unit: 2876
`
`Page5S
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`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to RAFFERTY D KELLY whose e-mail addressis ra and phone
`
`number is 571 270 5031 (e-mail is preferred). The examiner cannormally be reached on M-F 9-5.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-basedcollaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Michael Lee can be reached on 571 272 2398. The fax phone number for the organization where this
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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
`
`from either Private PAIR or Public PAIR. Status information for unpublished applicationsis available
`
`through Private PAIR only. For more information about the PAIR system, see https://ppair-
`
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`the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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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.
`
`/RAFFERTY D KELLY/
`Examiner, Art Unit 2876
`
`