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 .
The amendment filed on 01/26/2026 has been entered. Claim 1 has been canceled. Claims 2-20 have been added. Claims 2-20 are pending.
Response to Arguments
Applicant’s arguments with respect to claim(s) 2-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 4-5 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitations, “Wherein the second region is a single layer” and “wherein a thickness of the second region is a thickness of an entirety of the detection electrode” requires further elaborate.
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 4-5 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. The limitations, “Wherein the second region is a single layer” and “wherein a thickness of the second region is a thickness of an entirety of the detection electrode” lacks context in the specification.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12193165. This is a statutory double patenting rejection.
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.
Claim 1-7, 9-10, and 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of U.S. Patent No. 11818848. Although the claims at issue are not identical, they are not patentably distinct from each other because the system of this application contains similar structures adequate to perform the functions recited in the patent application.
The claims are as follows with the differences highlighted:
19007808
11818848
With reference to claim 2: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view, the second region protrudes from the first region, the detection electrode has a portion which is a part of the detection electrode and does not include the second region, and the portion includes an entirety of the detection electrode in a thickness direction of the detection electrode.
With reference to claim 1: A detection device comprising: a substrate; and a detection electrode on the first substrate, wherein the detection electrode has a lower layer portion and an upper layer portion which is on and in contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, both of the lower layer portion and the upper layer portion being conductive, the upper layer portion has a first region which is in contact with the lower layer portion and overlaps the lower layer portion, and a second region which is not in contact with the lower layer portion and does not overlap the lower layer portion, the first and second regions are located continuously, a part of the detection electrode includes the lower layer portion and the upper layer portion, and the detection electrode has a single layer portion consisting of a single layer and including an entirety of the detection electrode in a thickness direction of the detection electrode.
With reference to claim 2: The detection device according to claim 1, wherein the second region protrudes from the first region, and the detection electrode has a portion which does not have the second region, the portion being a part of the detection electrode and including an entirety of the detection electrode in the thickness direction.
Claim 2 of this application is being anticipated by claims 1 and 2 of patent 11818848 with similar variation in the non-highlighted limitation above.
19007808
11818848
With reference to claim 3
With reference to claim 1
With reference to claim 4
With reference to claim 1
With reference to claim 5
With reference to claim 2
With reference to claim 6
With reference to claim 1
With reference to claim 7
With reference to claim 1
With reference to claim 9
With reference to claim 4
With reference to claim 10
With reference to claim 3
With reference to claim 13
With reference to claim 1
Claims 3-7, 9-10, and 13 of this application is being anticipated by claims 1-4 of patent 11818848 with similar variation in the non-highlighted limitation above.
Claim 2-20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12193165. Although the claims at issue are not identical, they are not patentably distinct from each other because the system of this application contains similar structures adequate to perform the functions recited in the patent application.
The claims are as follows with the differences highlighted:
19007808
12193165
With reference to claim 2: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view, the second region protrudes from the first region, the detection electrode has a portion which is a part of the detection electrode and does not include the second region, and the portion includes an entirety of the detection electrode in a thickness direction of the detection electrode.
With reference to claim 1: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view and is in physical contact with the lower layer portion, and the second region does not overlap the lower layer portion in a plan view and is not in physical contact with any conductive member in a thickness direction of the detection electrode.
With reference to claim 5: The detection device according to claim 1, wherein the detection electrode has other regions which are not the second region, and the second region does not overlap the other regions.
Claim 2 of this application is being anticipated by claims 1 and 5 of patent 12193165 with similar variation in the non-highlighted limitation above.
19007808
12193165
With reference to claim 2: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view, the second region protrudes from the first region, the detection electrode has a portion which is a part of the detection electrode and does not include the second region, and the portion includes an entirety of the detection electrode in a thickness direction of the detection electrode.
With reference to claim 11: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view and is in physical contact with the lower layer portion, the second region protrudes from the first region, and the detection electrode has a portion which does not have the second region, the portion being a part of the detection electrode and including an entirety of the detection electrode in the thickness direction.
Claim 2 of this application is being anticipated by claims 11 of patent 12193165 with similar variation in the non-highlighted limitation above.
19007808
12193165
With reference to claim 14: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region, a second region, and a third region, the first and second regions being located continuously, the third region being a different region from the first and second regions, the first region overlaps the lower layer portion in a plan view, the second region protrudes from the first region, does not overlap the
lower layer portion in a plan view, and is not in physical contact with any conductive member in the thickness direction, the first and second regions are covered with a protective film, and the third region is not covered with the protective film.
With reference to claim 1: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view and is in physical contact with the lower layer portion, and the second region does not overlap the lower layer portion in a plan view and is not in physical contact with any conductive member in a thickness direction of the detection electrode.
With reference to claim 8: The detection device according to claim 1, further comprising a flexible printed circuit with a terminal, wherein the terminal overlaps the lower layer portion and the upper layer portion in a plan view.
With reference to claim 9: The detection device according to claim 8, wherein the upper layer portion has a third region that is a different region from the first and second regions, and the third region overlaps the terminal via an anisotropic conductive film.
With reference to claim 10: The detection device according to claim 9, wherein the first and second regions are covered with a protective film, and the third region is not covered with the protective film.
Claim 14 of this application is being anticipated by claims 1, 8-10 of patent 12193165 with similar variation in the non-highlighted limitation above.
19007808
12193165
With reference to claim 14: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region, a second region, and a third region, the first and second regions being located continuously, the third region being a different region from the first and second regions, the first region overlaps the lower layer portion in a plan view, the second region protrudes from the first region, does not overlap the
lower layer portion in a plan view, and is not in physical contact with any conductive member in the thickness direction, the first and second regions are covered with a protective film, and the third region is not covered with the protective film.
With reference to claim 11: A detection device comprising: a substrate; and a detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, wherein the upper layer portion has a first region and a second region which are located continuously, the first region overlaps the lower layer portion in a plan view and is in physical contact with the lower layer portion, the second region protrudes from the first region, and the detection electrode has a portion which does not have the second region, the portion being a part of the detection electrode and including an entirety of the detection electrode in the thickness direction.
With reference to claim 18: The detection device according to claim 11, further comprising a flexible printed circuit with a terminal, wherein the terminal overlaps the lower layer portion and the upper layer portion in a plan view.
With reference to claim 19: The detection device according to claim 18, wherein the upper layer portion has a third region that is a different region from the first and second regions, and the third region overlaps the terminal via an anisotropic conductive film.
With reference to claim 20: The detection device according to claim 19, wherein the first and second regions are covered with a protective film, and the third region is not covered with the protective film.
Claim 14 of this application is being anticipated by claims 11, 18-20 of patent 12193165 with similar variation in the non-highlighted limitation above.
19007808
12193165
With reference to claim 3
With reference to claim 1
With reference to claim 4
With reference to claim 2
With reference to claim 5
With reference to claim 3
With reference to claim 6
With reference to claim 4
With reference to claim 7
With reference to claim 5
With reference to claim 8
With reference to claim 6
With reference to claim 9
With reference to claim 7
With reference to claim 10
With reference to claim 8
With reference to claim 11
With reference to claim 9
With reference to claim 12
With reference to claim 10
With reference to claim 13
With reference to claim 1
With reference to claim 15
With reference to claim 11
With reference to claim 16
With reference to claim 12
With reference to claim 17
With reference to claim 13
With reference to claim 18
With reference to claim 17
With reference to claim 19
With reference to claim 18
With reference to claim 20
With reference to claim 19
Claims 3-20 of this application is being anticipated by claims 1-13 and 17-19 of patent 12193165 with similar variation in the non-highlighted limitation above.
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.
Claim(s) 2-8 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheong et al (US Pub. 20130016054).
Regarding claim 2, Cheong discloses:
A detection device, (at least refer to fig. 1 and paragraph 31. Describes a touch screen panel) comprising:
A substrate, (at least refer to fig. 2A and paragraph 38. Describes a substrate 10); and
A detection electrode including a lower layer portion and an upper layer portion which is on and in physical contact with the lower layer portion, the lower layer portion being between the substrate and the upper layer portion, (at least refer to fig. 2A and paragraphs 41-43. Describes the first hybrid electrode 20 is formed on the buffer layer 11. The first hybrid electrode 20 may include a first lower transparent layer 21, a first metal layer 23, and a first transparent metal oxide layer 25 which are sequentially stacked. Para. 42, describes: The second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. Para. 43, describes: the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31)
Wherein the upper layer portion has a first region and a second region which are located continuously, (at least refer to fig. 2A-2E and paragraph 43. Describes the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31. Wherein the peripheral region and the middle region of the second layer 31 that is in contact with the first layer 25 are continuous)
The first region overlaps the lower layer portion in a plan view, the second region protrudes from the first region, (at least refer to fig. 2A and paragraphs 41-43. Describes the first hybrid electrode 20 is formed on the buffer layer 11. The first hybrid electrode 20 may include a first lower transparent layer 21, a first metal layer 23, and a first transparent metal oxide layer 25 which are sequentially stacked. Para. 42, describes: The second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. Para. 43, describes: the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31)
The detection electrode has a portion which is a part of the detection electrode and does not include the second region, and the portion includes an entirety of the detection electrode in a thickness direction of the detection electrode, (at least refer to fig. 2A and paragraph 41. Describes the first hybrid electrode 20 may include a first lower transparent layer 21, a first metal layer 23, and a first transparent metal oxide layer 25 which are sequentially stacked. The first lower transparent layer 21, the first metal layer 23, and the first transparent metal oxide layer 25 may be patterned simultaneously. Wherein the first layer 25 is not continuous with another region).
Regarding claim 3, Cheong discloses:
Wherein the first region is in physical contact with the lower layer portion, (at least refer to fig. 2A and paragraphs 41-43. Describes the first hybrid electrode 20 is formed on the buffer layer 11. The first hybrid electrode 20 may include a first lower transparent layer 21, a first metal layer 23, and a first transparent metal oxide layer 25 which are sequentially stacked. Para. 42, describes: The second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. Para. 43, describes: the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31)
Regarding claim 4, Cheong discloses:
Wherein the second region is a single layer, (at least refer to fig. 2A and paragraph 42. Describes at least refer to fig. 2A and paragraph 42. Describes the second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked).
Regarding claim 5, Cheong discloses:
Wherein a thickness of the second region is a thickness of an entirety of the detection electrode, (at least refer to fig. 2A and paragraph 42. Describes the second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. The second lower transparent layer 31 may have a thickness within a range of about 100 nm to about 300 nm).
Regarding claim 6, Cheong discloses:
Wherein the second region is not in physical contact with any conductive member except for the first region, (at least refer to fig. 2A and paragraphs 41-43. Describes the first hybrid electrode 20 is formed on the buffer layer 11. The first hybrid electrode 20 may include a first lower transparent layer 21, a first metal layer 23, and a first transparent metal oxide layer 25 which are sequentially stacked. Para. 42, describes: The second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. Para. 43, describes: the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31).
Regarding claim 7, Cheong discloses:
Wherein the detection electrode has other regions which are not the second region, and the second region does not overlap the other regions, (at least refer to fig. 2A-2E and paragraphs 42, 43. Describes the second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. Para. 43, describes: the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31. Wherein the peripheral region of the second layer 31 are not in contact with the first layer 25).
Regarding claim 8, Cheong discloses:
Wherein the first and second regions are covered with a protective film, (at least refer to fig. 3 and paragraph 44. Describes a polarizing film 60 and a display device 70 may be formed on the first and second hybrid electrodes 20 and 30 and the first and second interconnections 41 and 42 with an optically clear adhesive 50 therebetween.).
Regarding claim 13, Cheong discloses:
Wherein the second region does not overlap the lower layer portion in a plan view and is not in physical contact with any conductive member in the thickness direction, (at least refer to fig. 2A-2E and paragraphs 42, 43. Describes the second hybrid electrode 30 may include a second lower transparent layer 31, a second metal layer 33, and a second transparent metal oxide layer 35 which are sequentially stacked. Para. 43, describes: the first transparent metal oxide layer 25 is directly in contact with the second lower transparent layer 31. Wherein the peripheral region of the second layer 31 are not in contact with the first layer 25).
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 IFEDAYO B ILUYOMADE whose telephone number is (571)270-7118. The examiner can normally be reached Monday-Friday.
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, Matthew Eason can be reached at 5712707230. 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.
/IFEDAYO B ILUYOMADE/Primary Examiner, Art Unit 2624 02/27/2026