DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment dated 02/03/2026, in which claims 1-4, 6-7, 9-10 were amended, claims 11-20 were withdrawn, has been entered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to foreign application JP2020-217354 filed on 12/25/2020. The foreign application is not in English. The certified copy of the foreign priority application JP2020-217354 has been received.
Filing Dates for the Claims — All Claims Not Entitled to Priority Date
To be entitled to the filing date of the foreign priority application JP2020-217354 that is not in English, an English translation of the non-English language foreign application JP2020-217354 and a statement that the translation is accurate in accordance with 37 CFR 1.55 is required to perfect the claim for priority under 35 U.S.C. 119 (a)-(d). The foreign application must adequately support the claimed subject matter, meaning satisfy the written description and enablement requirements of 35 U.S.C. 112(a). See MPEP §§ 215 and 216. 37 C.F.R. 1.55(g)(3)(ii)-(iii). To demonstrate compliance with 35 U.S.C. 112(a), applicant should point to support for their claimed subject matter in their translations.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature of “a third insulating layer on the second insulating layer; an electrode on the third insulating layer” of claim 1 and claim 10; “a third insulating layer on the second insulating layer; an electrode on the third insulating layer; a thickness of the second insulating layer in the peripheral region is same as a thickness of the second insulating layer in a pixel of one color among the pixels of the plurality of colors” of claim 3 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claim 3 recites the limitation “a thickness of the second insulating layer in the peripheral region is same as a thickness of the second insulating layer in a pixel of one color among the pixels of the plurality of colors” and claim 1 on which claim 3 depends recites “a third insulating layer on the second insulating layer; an electrode on the third insulating layer”. However, the specification (and the drawing) does not describe any embodiment in which a third insulating layer on the second insulating layer wherein a thickness of the second insulating layer in the peripheral region is same as a thickness of the second insulating layer in a pixel of one color among the pixels of the plurality of colors.
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 3, claim 3 recites the limitation “claim 3 recites the limitation “a thickness of the second insulating layer in the peripheral region is same as a thickness of the second insulating layer in a pixel of one color among the pixels of the plurality of colors” and claim 1 on which claim 3 depends recites “a third insulating layer on the second insulating layer”. As stated above, the specification does not provide any description of an embodiment in which a third insulating layer on the second insulating layer wherein a thickness of the second insulating layer in the peripheral region is same as a thickness of the second insulating layer in a pixel of one color among the pixels of the plurality of colors as required by claim 3. Further, there is no description of any such steps whether conventional or inventive that demonstrates possession thereof or therefor. Accordingly, claim 3 was not in possession of Applicant at the time of filing.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-10 are rejected under 35 U.S.C. 102 (a)(1)/(a)(2) as being anticipated by Sano et al. (US Pub. 20210118959).
Regarding claims 1-2, Sano et al. discloses in Fig. 1, Fig. 2, Fig. 5 a display device comprising:
a substrate [301][paragraph [0029]];
a display region [120] on the substrate [301]; and
a peripheral region [121] on the substrate [301], wherein
the peripheral region [121] is around the display region [120], the peripheral region [121] includes:
a first insulating layer [interlayer insulating film] on the substrate [301][paragraph [0029] “a switching element such as a transistor, wirings, or the like may be formed in the substrate 301 below the reflective layer 302 (on the side opposite to the organic layer 305) via an interlayer insulating film or the like”];
a reflecting portion [302] on the first insulating layer [interlayer insulating film][paragraph [0029] “a switching element such as a transistor, wirings, or the like may be formed in the substrate 301 below the reflective layer 302 (on the side opposite to the organic layer 305) via an interlayer insulating film or the like”];
a second insulating layer [bottommost layer of stacked insulating layer 303c] on the reflecting portion [302][paragraph [0031] “the insulating layer 303 may have a stacked structure formed by a plurality of layers”];
a third insulating layer [upper layer of stacked insulating layer 303c] on the second insulating layer [bottommost layer of stacked insulating layer 303c][paragraph [0031] “the insulating layer 303 may have a stacked structure formed by a plurality of layers”];
an electrode [306] on the third insulating layer [upper layer of stacked insulating layer 303c], wherein the reflecting portion [302] and the electrode [306] constitute a resonator structure [302, 303 and 306]; and
a first filter [310b or 310c] on the resonator structure [302, 303 and 306], wherein the first filter [310b or 310c] is associated with a specific color, and
the resonator structure is configured to weaken light of the specific color [paragraph [0002], [0027]];
wherein each of the first filter [310b or 310c] and the resonator structure [302, 303 and 306] is configured to block light of a visible light region [paragraph [0048]].
Notes, the limitation “wherein the reflecting portion and the electrode constitute a resonator structure”, “the resonator structure is configured to weaken light of the specific color” and “each of the first filter and the resonator structure is configured to block light of a visible light region” directs to manner of operation and/or intended use of the claimed structure including a reflecting portion, an insulating layer, an electrode and a filter. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Sano et al. discloses all structural limitations of the claim and Sano’s structure comprising the reflecting portion [302] and the electrode [306] is capable of constituting a resonator structure, and the resonator structure is configured to weaken light of the specific color. Sano’s structure comprising the reflecting portion [302], the electrode [306] and the filter [310] would result “each of the first filter and the resonator structure is configured to block light of a visible light region.”
Regarding claim 4, Sano et al. discloses in Fig. 2, Fig. 5
wherein the display region [120] includes pixels [201] of a plurality of colors,
a pixel [201b or 201c] of one color among the pixels [201] of the plurality of colors includes a second filter [310b or 310c], and
a color of the second filter [310b or 310c] is same as the specific color.
Regarding claims 5-9, Sano et al. discloses in Fig. 2, Fig. 5, paragraph [0026], [0035], [0039], [0047], [0048]
wherein the pixels [201] of the plurality of colors include a red pixel, a green pixel, and a blue pixel.
wherein the specific color is one of red, green, or blue;
wherein the electrode [306] extends from the display region [120] to the peripheral region [121];
wherein the electrode [306] is a cathode [paragraph [0036]];
a transparent electrode [304] between the second insulating layer [bottommost layer of stacked insulating layer 303c] and the electrode [306][paragraph [0034]].
Regarding claim 10, Sano et al. discloses in Fig. 12-Fig. 16, paragraph [0053] An electronic apparatus comprising:
a display device comprising:
a substrate [301][paragraph [0029]];
a display region [120] on the substrate [301]; and
a peripheral region [121] on the substrate [301], wherein
the peripheral region [121] is around the display region [120], the peripheral region [121] includes:
a first insulating layer [interlayer insulating film] on the substrate [301][paragraph [0029] “a switching element such as a transistor, wirings, or the like may be formed in the substrate 301 below the reflective layer 302 (on the side opposite to the organic layer 305) via an interlayer insulating film or the like”];
a reflecting portion [302] on the first insulating layer [interlayer insulating film][paragraph [0029] “a switching element such as a transistor, wirings, or the like may be formed in the substrate 301 below the reflective layer 302 (on the side opposite to the organic layer 305) via an interlayer insulating film or the like”];
a second insulating layer [bottommost layer of stacked insulating layer 303c] on the reflecting portion [302][paragraph [0031] “the insulating layer 303 may have a stacked structure formed by a plurality of layers”];
a third insulating layer [upper layer of stacked insulating layer 303c] on the second insulating layer [bottommost layer of stacked insulating layer 303c][paragraph [0031] “the insulating layer 303 may have a stacked structure formed by a plurality of layers”];
an electrode [306] on the third insulating layer [upper layer of stacked insulating layer 303c], wherein the reflecting portion [302] and the electrode [306] constitute a resonator structure [302, 303 and 306]; and
a first filter [310b or 310c] on the resonator structure [302, 303 and 306], wherein the first filter [310b or 310c] is associated with a specific color, and
the resonator structure is configured to weaken light of the specific color [paragraph [0002], [0027]].
Notes, the limitation “wherein the reflecting portion and the electrode constitute a resonator structure”, “the resonator structure is configured to weaken light of the specific color” and “each of the first filter and the resonator structure is configured to block light of a visible light region” directs to manner of operation and/or intended use of the claimed structure including a reflecting portion, an insulating layer, an electrode and a filter. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Sano et al. discloses all structural limitations of the claim and Sano’s structure comprising the reflecting portion [302] and the electrode [306] is capable of constituting a resonator structure, and the resonator structure is configured to weaken light of the specific color. Sano’s structure comprising the reflecting portion [302], the electrode [306] and the filter [310] would result “each of the first filter and the resonator structure is configured to block light of a visible light region.”
Response to Arguments
Applicant’s arguments with respect to claims 1-10 have been considered but are moot in view of the new ground of rejection.
In addition, Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments on page 9 of Applicant’s remarks, Examiner respectfully disagrees because as indicated in the above rejection, Sano et al. discloses in paragraph [0029] “a switching element such as a transistor, wirings, or the like may be formed in the substrate 301 below the reflective layer 302 (on the side opposite to the organic layer 305) via an interlayer insulating film or the like”. Thus, Sano discloses a first insulating layer [an interlayer insulating film] on the substrate. Sano discloses in paragraph [0031] “the insulating layer 303 may have a stacked structure formed by a plurality of layers”. Thus, Sano et al. discloses a third insulating layer [upper layer of stacked insulating layer 303c] on the second insulating layer [bottommost layer of stacked insulating layer 303c].
Overall, Applicant’s arguments are not persuasive. The claims stand rejected and the Action is made FINAL.
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.
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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893