3NON-FINAL OFFICE ACTION
Claims 1-16 are pending in this broadening reissue of U.S. Patent No. 11,537,248 (hereinafter “the '248 patent” issued from application no. 17/263,770 (hereinafter “the ‘770 application”).
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘248 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Preliminary Amendment
Preliminary amendment filed 8/9/2023 has been entered and considered. Claims 1-16 have been amended and are currently pending.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: The “touch input device 1000” described in the specification of the ‘248 patent is not shown in the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
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.
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Independent claims 1 and 9 recite a touch input device having a plurality of first electrodes, a plurality of second electrodes, and a touch window area. The claims further recite functional language “a value acquired by a multiplication…”, but there is no structural element recited in the claim that would allow for the claimed function to be performed. The specification of the ‘248 patent describes essential elements such as sensing unit 11, driving unit 12, and control unit 13 for the claimed touch input device to function and perform the recited function. These elements are omitted from independent claims 1 and 9.
The Examiner further notes that the sensing unit 11, driving unit 12, and control unit 13 may invoke 112 6th paragraph claim interpretation if the claims are amended to recite these elements, since they are generic place holder terms, in which case the written description would need to clearly link the corresponding structure associated with the generic place holder terms that are required for performing the claimed functions.
Allowable Subject Matter
Claims 1-16 are rejected, but would be allowable upon overcoming the rejection above for the same reasons indicated in the notice of allowance mailed 8/10/2022 in the underlying ‘770 application.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cameron Saadat whose telephone number is (571)272-4443. The examiner can normally be reached M-F 7:30-4:00.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached at (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cameron Saadat/Primary Examiner, Art Unit 3992
Conferees:
/Karin Reichle/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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