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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/23/2026 has been entered. Currently, claims 1-8 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 8, 10-12, 16 of U.S. Patent No. 10,915,202 (hereinafter patent202). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent202 claims are more specific and thus anticipate the instant claims as follows:
Instant claim 1 is anticipated by patent202 claims 10+11+16 except for the instant claim 1 limitations “the first part is in direct contact with the third portion, the first width is a widest width in the first portion…the second width is a narrowest width in the third portion…a length of the bottom is shorter than the first width, and a difference between the first width and the second width is greater than the second width”. The direct contact limitations and widest/narrowest widths are implied by patent202 claim 10 because the first portion and second portion are both part of the common electrode [thus in direct contact] and by the concave shape as described in patent202 claim 10. The length of the bottom has only three predictable solutions with respect to the first width, the length of the bottom can be shorter than, larger than or equal than the second width. Similarly, the difference between the first width has only three predictable solutions with respect to the second width, the difference can be greater than, equal than or less than the second width. Therefore, it would have been obvious that one of ordinary skill in the art would try, one of the three possible solutions in patent202 claims 10+11+16 and arrive at “a length of the bottom is shorter than the first width, and a difference between the first width and the second width is greater than the second width”, in order to obtain the predictable result of optimizing the width through routine experimentation while obtaining the already claimed “first width is wider than the second width”.
Similarly, instant claim 2 is anticipated by patent 202 claims 1+4 except for the instant claim 2 limitation “the second part is in direct contact with the third portion, the third width is a widest width in the second portion…a difference between the third width and the second width is greater than the second width” which, as explained above for claim 1, is obvious through routine experimentation. Instant claim 2 “third width” maps to the second portion first width of patent202 claim 4. Direct contact and widest width are implied by the portions belonging to the same common electrode and the concave shape as described in patent202 claim 10.
Instant claim 3 is anticipated by patent202 claims 10+11 where the “first signal line: maps to the instant “wiring line” and the intersection is at the first bottom which maps to the instant “third portion” and not to the “first portion” or the “second portion”.
Instant claim 5 is anticipated by patent202 claim 2 where “the first common electrode is supplied…a touch driving signal”.
Instant claim 7 is anticipated by patent202 claim 8.
Instant claim 8 is anticipated by patent202 claim 12.
Claims 1, 3, 5 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-3, 5 and 7 of U.S. Patent No. 11,604,536 (hereinafter patent536). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent536 claims are more specific and thus anticipate the instant claims as follows:
Instant claim 1 is anticipated by patent536 claims 1+5 except for the instant claim 1 limitation “the first part is in direct contact with the third portion, the first width is a widest width in the first portion…the second width is a narrowest width in the third portion…a length of the bottom is shorter than the first width, and a difference between the first width and the second width is greater than the second width”. The direct contact limitations and widest/narrowest widths are implied by patent536 claim 1 because the first portion and second portion are both part of the common electrode [thus in direct contact] and by the concave shape as described in patent536 claim 1. The length of the bottom has only three predictable solutions with respect to the first width, the length of the bottom can be shorter than, larger than or equal than the second width. Similarly, the difference between the first width has only three predictable solutions with respect to the second width, the difference can be greater than, equal than or less than the second width. Therefore, it would have been obvious that one of ordinary skill in the art would try, one of the three possible solutions in patent536 claims 1+5 and arrive at “a length of the bottom is shorter than the first width, and a difference between the first width and the second width is greater than the second width”, in order to obtain the predictable result of optimizing the width through routine experimentation while obtaining the already claimed “first width is wider than the second width”.
Instant claim 3 is anticipated by patent536 claim 2.
Instant claim 5 is anticipated by patent536 claim 3 where “the first common electrode is supplied…a touch driving signal”.
Instant claim 7 is anticipated by patent536 claim 7.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8 of U.S. Patent No. 11,880,531 (hereinafter patent531). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent531 claims are more specific and therefore anticipate the instant claims as follows:
Instant claim 1 is anticipated by patent531 claims 1+2 except for the instant claim 1 limitations “the first part is in direct contact with the third portion, the first width is a widest width in the first portion…the second width is a narrowest width in the third portion”. The direct contact limitations and widest/narrowest widths are implied by patent531 claim 1 because the first portion and second portion are both part of the common electrode [thus in direct contact] and by the concave shape as described in patent531 claim 1.
Instant claims 2, 3, 7 and 8 are anticipated by patent531 claims 3, 4, 7 and 8 respectively. Instant claim 2 also recites ““the second part is in direct contact with the third portion, the third width is a widest width in the second portion”. Direct contact and widest width are implied by the portions belonging to the same common electrode and the concave shape as described in patent531 claim 1-3.
Instant claim 4 is anticipated by patent531 claims 1+5 where the second electrodes are the pixels, and the first common electrode does not overlap all of the pixels.
Instant claim 5 is anticipated by patent531 claim 4 where the first common electrode is supplied a signal of the touch sensor.
Instant claim 6 is anticipated by patent 531 claims 1+5, where the first common electrode faces some of the pixels, and does not overlap all of the pixels.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,223,139 (hereinafter patent139). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent139 claims are more specific and therefore anticipate the instant claims as follows:
Instant claim 1 is anticipated by patent139 claims 1+2 except for the instant claim 1 limitations “the first part is in direct contact with the third portion, the first width is a widest width in the first portion…the second width is a narrowest width in the third portion”. The direct contact limitations and widest/narrowest widths are implied by patent139 claims 1-2 because the first portion and second portion are both part of the common electrode [thus in direct contact] and by the concave shape as described in patent139 claims 1-2.
Instant claims 2-8 are anticipated by patent139 claims 3-9 respectively. Instant claim 2 also recites ““the second part is in direct contact with the third portion, the third width is a widest width in the second portion”. Direct contact and widest width are implied by the portions belonging to the same common electrode and the concave shape as described in patent139 claim 1-3.
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.
Claims 1-8 are 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 1 recites “… a difference between the first width and the second width is greater than the second width”. These limitations do not find support in the disclosure as follows: The Remarks filed 6/23/2026 pg. 4 explain that the length of the bottom maps to r1, the first width maps to h1 and the second width maps to h2 in Fig. 12, and therefore Fig. 12 supports (h2-h1) greater than h2. The office must respectfully disagree, the disclosure does not exemplify the dimensions of h1 or h2 or states that Fig. 12 is to scale, just from looking at Fig. 12, one of ordinary skill in the art would not be able to deduce that h1-h2 > h2 as necessary for claim 1.
Dependent claims 2-8 inherit the issues of independent claim 1.
Claim 2 recites “a difference between the third width and the second width is greater than the second width”. This limitation does not find support in the disclosure as follows: The Remarks filed 6/23/2026 do not address support for this limitation. However, neither the figures nor the specification explain a difference between the third width and the second width being greater than the second width.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection 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 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.
Claims 1-3, 5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al. in US 2011/0007020 (hereinafter Hong).
Regarding claim 1, Hong discloses a touch sensor device (Hong’s par. 1) comprising:
a substrate (Hong’s par. 41); and
first electrodes (Hong’s Figs. 2a, 6 and par. 41: drive lines 202) arranged in a first layer on the substrate (Hong’s par. 41), wherein at least one of the first electrodes (Hong’s Figs. 2a, 6 and par. 41: drive lines 202) comprising:
a first concave shape (see annotated Hong’s Fig. 6 below) with a bottom (see annotated Hong’s Fig. 6 below);
a first portion (see annotated Hong’s Fig. 6 below: rectangular arm portion of top section 206) and a second portion (see annotated Hong’s Fig. 6 below: rectangular arm portion of bottom section 206) that sandwich the bottom (see annotated Hong’s Fig. 6 below); and
a third portion (see annotated Hong’s Fig. 6 below) that is located between the first portion (see annotated Hong’s Fig. 6 below) and the second portion (see annotated Hong’s Fig. 6 below) and that is in contact with a whole of the bottom (see annotated Hong’s Fig. 6 below),
the first portion (see annotated Hong’s Fig. 6 below) has a first part (see annotated Hong’s Fig. 6 below: first portion) having a first width (see annotated Hong’s Fig. 6 below: 600um width in direction y of first portion) in a direction in which the first concave shape dents (Hong’s Fig. 6: see direction y),
the first part is in direct contact with the third portion (see annotated Hong’s Fig. 6 below),
the first width is a widest width in the first portion (see annotated Hong’s Fig. 6 below: width of rectangular arm [first portion] in direction y),
the third portion (see annotated Hong’s Fig. 6 below) has a second width (Hong’s Fig. 6: 100um) in the direction (Hong’s Fig. 6: see direction y),
the second width is a narrowest width in the third portion (see annotated Hong’s Fig. 6 below: width in direction y of third portion),
a length of the bottom (Hong’s Fig. 6: 300um) is shorter than the first width (Hong’s Fig. 6: 600um), and
a difference between the first width and the second width (Hong’s Fig. 6: difference between 600um and 100um is 500um) is greater than the second width (Hong’s Fig. 6: 500um is greater than 100um).
PNG
media_image1.png
304
720
media_image1.png
Greyscale
Regarding claim 2, Hong disclose wherein the second portion (see annotated Hong’s Fig. 6 above) has a second part (see annotated Hong’s Fig. 6 below: second portion) having a third width (Hong’s Fig. 6: 600um) in the direction (Hong’s Fig. 6: see direction y),
the second part is in direct contact with the third portion (see annotated Hong’s Fig. 6 below),
the third width is a widest width in the second portion (see annotated Hong’s Fig. 6 below: width of rectangular arm [third portion] in direction y),
the third width is wider than the second width (Hong’s Fig. 6: 100um), and a difference between the third width and the second width (Hong’s Fig. 6: difference between 600um and 100um is 500um) is greater than the second width (Hong’s Fig. 6: 500um is greater than 100um).
Regarding claim 3, Hong disclose further comprising a wiring line (Hong’s Figs. 4-5 and par. 41, 48: see interconnect 212) that intersects the third portion without intersecting the first portion and the second portion in a plan view (Hong’s Figs. 4-5: see 212 intersecting the connecting portion [third portion] between adjacent rectangular arms of sections 206 [first and second portion]).
Regarding claim 5, Hong disclose further comprising a touch detection region (Hong’s Figs. 1-2, see touch sensor panel) where a touch detection is performed (Hong’s Figs. 2 and par. 38), wherein the first electrodes are configured to output touch detection signals (Hong’s Figs. 2 and par. 41: drive lines 202 are stimulated [for touch]).
Regarding claim 7, Hong disclose wherein the at least one of the first electrodes is a first one of the first electrodes (see annotated Hong’s Fig. 6 above), the first one of the first electrodes is adjacent to a second one of the first electrodes (see annotated Hong’s Fig. 6 above), the second one of the first electrodes has a second concave shape with a second bottom in a plan view (see annotated Hong’s Fig. 6: concave shape of the 2nd of first electrodes facing left and facing 1st of first electrodes), and the first concave shape faces the second concave shape across a gap between the first one of the first electrodes and the second one of the first electrodes (as shown in the annotated Hong’s Fig. 6).
Regarding claim 8, Hong disclose wherein the at least one of the first electrodes has a second concave shape located between the first portion and the second portion (see annotated Hong’s Fig. 6 above), and the third portion is located between the first concave shape and the second concave shape (see annotated Hong’s Fig. 6 above).
Claim Rejections - 35 USC § 103
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 for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 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 of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hong in view of Mo et al. in US 2010/0110038 (hereinafter Mo).
Regarding claim 4, Hong fails to disclose further comprising second electrodes arranged in a second layer on the substrate, the second layer being different from the first layer, wherein the one of the first electrodes does not overlap all of the second electrodes.
However, in the same field of endeavor of capacitance touchscreens, Mo discloses second electrodes (Mo’s Figs. 1 to 1-4 and par. 78: see 311) arranged in a second layer on the substrate (Mo’s Fig. 1-4 and par. 72: see 311 on layer 300), the second layer being different from the first layer (Mo’s Fig. 1-4: see 311 on different layer than 211), wherein the one of the first electrodes does not overlap all of the second electrodes (Mo’s Fig. 1-3).
Therefore, it would have been obvious to one of ordinary skill in the art, that Hong would include the sense electrodes in a different layer from the drive electrodes (as disclosed by Mo), in order to obtain the benefit of sensing electrodes in the complementary area and not just over the driving electrodes (Mo’s par. 81).
By doing such combination, Hong’s drive electrodes 202 are equivalent to Mo’s drive electrodes 211, and thus Hong in view of Mo disclose:
further comprising second electrodes (Mo’s Figs. 1 to 1-4 and par. 78: see 311 which are equivalent to 204 in Hong’s par. 41) arranged in a second layer on the substrate (Mo’s Fig. 1-4 and par. 72: see 311 on layer 300), the second layer being different from the first layer (Mo’s Fig. 1-4: see 311 on different layer than 211), wherein the one of the first electrodes does not overlap all of the second electrodes (Mo’s Fig. 1-3).
Regarding claim 6, Hong fails to disclose second electrodes arranged in the touch detection region, in a second layer different from the first layer, wherein the one of the first electrodes overlaps some of the second electrodes and does not overlap others of the second electrodes.
However, in the same field of endeavor of capacitance touchscreens, Mo disclose second electrodes (Mo’s Fig. 2-3 to 2-5 and par. 78, 86: see 311) arranged in the touch detection region (Mo’s Fig. 2-5: see finger), in a second layer different from the first layer (Mo’s Fig. 2-3 to 2-5 and par. 72: see 311 on sensor layer 300), wherein the one of the first electrodes overlaps some of the second electrodes (Mo’s Figs. 2 and par. 83: see overlap of shielding electrode 410 and 311) and does not overlap others of the second electrodes (Mo’s Figs. 2: see 211 not overlapping any electrodes 311).
Therefore, it would have been obvious to one of ordinary skill in the art, that Hong would include the sense electrodes in a different layer from the drive electrodes (as disclosed by Mo) and include shielding electrodes along with the drive electrodes (Mo’s par. 83), in order to obtain the benefit of sensing electrodes in the complementary area and not just over the driving electrodes (Mo’s par. 81) and the benefit of further reducing the capacitance between the sense and drive electrodes (Mo’s par. 86).
By doing such combination, Hong’s drive electrodes 202 are equivalent to Mo’s drive electrodes 211 and shield electrodes 410, and thus Hong in view of Mo disclose:
further comprising second electrodes (Mo’s Fig. 2-3 to 2-5 and par. 78, 86: see 311 which are equivalent to 204 in Hong’s par. 41) arranged in the touch detection region (Mo’s Fig. 2-5: see finger), in a second layer different from the first layer (Mo’s Fig. 2-3 to 2-5 and par. 72: see 311 on sensor layer 300), wherein the one of the first electrodes overlaps some of the second electrodes (Mo’s Figs. 2 and par. 83: see overlap of shielding electrode 410 and 311) and does not overlap others of the second electrodes (Mo’s Figs. 2: see 211 not overlapping any electrodes 311).
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
On the Remarks pg. 4 Applicant argues with respect to the current 112 1st rejection, please see under 112 for a detailed explanation on why Fig. 12 does not support some limitations.
On the Remarks pg. 5 Applicant argues with respect to the current 102 rejection of claim 1, that Hong fails to disclose the added limitations, specifically the widest width of the first portion. Please see above rejection which has been adjusted to clarify that the first portion and the third portion are the rectangular arms of section 206 in Hong’s Fig. 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Liliana Cerullo whose telephone number is (571)270-5882. The examiner can normally be reached 8AM to 3PM MT.
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, Amr Awad can be reached at 571-272-7764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LILIANA CERULLO/Primary Examiner, Art Unit 2621
Prosecution Insights