FINAL ACTION
Claims 17-36 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”). Claims 1-16 were previously cancelled. Upon entry of amendment filed 9/23/2026, claims 17-18, 20-22, 27, and 30 are further amended. Claims 17-36 remain pending.
Drawings
The drawings filed 9/23/2026 are accepted.
Response to Arguments
Regarding 112 6th interpretation, the elements – driving unit, sensing unit, and control unit, as currently claimed, are not coupled with functional language. Therefore, the Examiner agrees that claim 17 does not invoke 112 6th paragraph interpretation.
Applicant proposes language to overcome the declaration rejection under 251 (remarks 12). The proposed declaration statement appears that it would overcome the rejection. However, a corrected declaration has not yet been provided, therefore the rejection is maintained.
Regarding the rejection of claims 17-36 under 112, Applicant provides adequate explanation of support for the claimed “second-first” and “second-second” electrode and the claimed “wherein the at least a portion of the second-first electrode is disposed closer to the at least a portion of the at least one of the plurality of first electrodes than the at least a portion of the second-second electrode”. Accordingly, the rejection is withdrawn. However, new rejections under 112 are provided below.
Regarding the recapture and original patent requirement rejections of claims 17-36 under 251, the Examiner agrees that claim 17 as amended overcomes the rejections. Accordingly, the 251 rejections are withdrawn.
REJECTIONS BASED ON DEFECTIVE OATH/DECLARATION
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 17-36 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251. See 37 CFR 1.175.
The nature of the defect(s) in the 8/9/2023 Declaration is set forth below. The reissue declaration states:
The Patent contains errors in that Patentee claimed less than it had a right to claim in the issued patent. This continuation reissue application seeks to broaden the claimed subject matter by claiming 20 new claims. Proposed independent claim 17 recites a touch input device, that comprises, among other things, a second-first electrode and a second-second electrode wherein a portion of the second-first electrode is disposed closer to at least a portion of at least one of a plurality of first electrodes than the at least a portion of the second-second electrode. Support for the new claims can be found in at least column 30, line 44 to column 31 line 41, column 5 lines 52 to 61, and Figure 7 of the issued patent.
MPEP 1414 II. states:
…For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration "states at least one error" in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required.
(C) It is not sufficient for an oath/declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
A statement in the oath/declaration of "…failure to include a claim directed to …" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified.
While the declaration points to new limitations added to newly presented claim 17, it fails to identify which claim the application seeks to broaden and also fails to identify the specific claim language wherein the error lies. Correction is required.
Claim Rejections - 35 USC § 112 first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-36 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 17 recites:
a touch sensing circuit including a driving unit, a sensing unit, and a control unit, the touch sensing circuit connected to the plurality of first electrodes and the plurality of second electrodes, wherein the plurality of first electrodes and the plurality of second electrodes are arranged to form a plurality of unit cells and configured to be electrically separated from each other,
…a second-second electrode disposed adjacent to the second-first electrode along the second direction and configured to be electrically separated from the second-first electrode,
While the specification of the ‘248 patent describes electrodes that are separated. There is no mention of electrical separation.
Claim Rejections - 35 USC § 112 second paragraph
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 17-36 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 17 recites:
a touch sensing circuit including a driving unit, a sensing unit, and a control unit, the touch sensing circuit connected to the plurality of first electrodes and the plurality of second electrodes, wherein the plurality of first electrodes and the plurality of second electrodes are arranged to form a plurality of unit cells and configured to be electrically separated from each other,
It is unclear whether the electrical separation is directed to the first and second electrodes or whether it is directed to the unit cells. Clarification is needed.
Allowable Subject Matter
Claims 17-36 would be allowable upon overcoming the declaration rejection under 251 and the 112 rejections. Applicant’s arguments (p. 18-19) that the Bytheway reference does not disclose the claimed configuration of electrodes is persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this 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 shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 MONTHS from the mailing date of this final action.
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.
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/Cameron Saadat/Primary Examiner, Art Unit 3992
Conferees:
/Woo H Choi/
Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
