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`
`
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`(cid:58)(cid:76)(cid:81)(cid:87)(cid:72)(cid:78) (cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87) (cid:20)(cid:19)(cid:19)(cid:23)
`
`
`
` UNITED STATES PATEN T £5-..I\]Ii TRADEMARK OFFICE
`
`Commissioner for Patients
`United States Patent and Tradernark Offi-3e
`P_O. EID}{145C|
`Alexandria, VA 223'! 3-‘! -150
`\mAwJi.Ii:-p1’o.Qcrv
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTEFTS CORRESPONDENCE ADDRESS)
`
`Finnegan, Henderson. Farabow, Garrett & Dunner, LLP
`
`901 New York Avenue, NW
`
`Washington. DC 20001-4413
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012 869.
`
`PATENT NO. 8217902.
`
`ART UN IT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`Page 2 of 15
`I58b‘é’5§FI‘3‘f‘°1"§“’
`
`
`
`.
`.
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`90i012,869
`_
`E"a""'"°'
`JOHN HOTALING
`
`3217902
`_
`M "'""
`3992
`
`Control No.
`
`Patent Under Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 17May2013 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)I:I PTO-892,
`
`b)|Z| PTO/SB/08,
`
`c)I:I Other:
`
`1. IE The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMl1TED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. CI The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(0)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1 .515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1 .183.
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`a) E] by Treasury check or,
`
`b) I:I by credit to Deposit Account No.
`
`, or
`
`c) I:I by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`J"l"JOI111 M Holaling II}?
`
`l’1'imary |.ixa1ni11i.:r. Arl UI1il 3992
`
`iflhirda
`oc:Reuester
`US. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`reuester
`
`Page 3 of 15
`Page3 of 15
`
`Oflice Action in Ex Parte Reexamination
`
`Part of Paper No. 20130607
`
`
`
`Application.r"Contro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 2
`
`ORDER GRANTING EX PARTE REEXAMINATION
`
`A substantial new question of patentability affecting claims 1-68 of United States
`
`Patent Number 8,217,902 issued to Chang et al. is raised by the request for ex parte
`
`reexamination.
`
`Reterenoes Asserted by Requester as Raising Substantial New Question of
`
`Patentability
`
`1. Japanese Published Patent Application No. 60-75927 ("Fujitsu") and
`
`corresponding English translation of the JP 75927 application (including Abstract)
`
`2. US. Patent No. 6,137,427 to Ronald Binstead ("Binstead")
`
`3. U.S. Patent Application Publication 2005/0030048 to Robert Bolender et al.
`
`("Bo|ender")
`
`4. Published UK Patent Application GB 2 168 816 A to Andrew Lambert ("Lambert")
`
`5. Japanese Published Patent Application No. 61-84729 ("Honeywell") and
`
`corresponding English translation of the JP 84729 application (including Abstract)
`
`6. U.S. Patent No. 5,374,787 to Robert Miller et al. ("MiIler")
`
`Summary of Prosecution History
`
`Claims 1-68 are requested for reexamination and are the current claims in the
`
`Chang et al (US 8,217,902) Patent that issued July 10, 2012 from application
`
`11/842,747 filed August 21 , 2007 currently assigned to TPK Touch Solutions Inc.
`
`Page 4 of 15
`Page4of 15
`
`
`
`Application.r"Contro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 3
`
`In the non-final rejection of June 25, 2010 the examiner rejected claims 1-10
`
`using the rejections below.
`
`Claims 1 and 6 are rejected under 35 U.S.C. 102(b) as being anticipated by
`Seely et al. (US 6,188,391).
`Claims 2-4 and 7-9 are rejected under 35 U.S.C. 103(a) as being unpatentable
`over Seely et al. (US 6,188,391) in View of Hsu et al. (US 7,030,860).
`Claims 5 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`Seely et al. (US 6,188,391) in View of Mulligan et al. (US 2004/0119701).
`
`The applicant replied by amending the original claims and adding claims 11-45 in
`
`a September 20, 2010 response. Subsequent to that response an interview was held on
`
`October 8, 2010 which resulted in further amendments to the claims being submitted by
`
`the applicant on October 12, 2010.
`
`The examiner issued a final rejection on December 21, 2010 using the rejections
`
`below
`
`Claims 1-4, 6-9, 11-14, 16-20, 22-28, 30-38 and 40-45 are rejected under 35
`U.S.C. 102(b) as being anticipated by Bolender (US 2005/0030048).
`Claims 5, 10, 15, 21,29 and 39 are rejected under 35 U.S.C. 103(a) as being
`unpatentable over Bolender et al. (US 2005/0030048) in View of Mulligan et al. (US
`2004/0119701 ).
`
`On February 22, 2011 the applicant made an after final amendment which
`
`amended claims 17, 25, 35, and 44 to be rewritten in independent form and added
`
`claims 46-68.
`
`The examiner responded with an advisory action stating that the new limitation
`
`"formed on a rigid substrate" raises new issues that would require further consideration.
`
`The examiner additionally maintained his position with respect to Bolender.
`
`Page 5 of 15
`Page5 of 15
`
`
`
`Application.r"C0ntro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 4
`
`A Request for Continued Examination (RCE) was processed and a supplemental
`
`response resubmitting the same arguments made in the request for reconsideration was
`
`forwarded to the examiner along with a declaration from George E Gerpheide.
`
`This resulted in an interview on October 27, 2011 to discuss the fundamental
`
`differences between the instant application and the prior art of record.
`
`On April 11, 2012, the examiner stated the following reasons for allowance on
`
`page 4:
`
`"As to independent claims 1, 6, 17, 25, 32, 35, 42, 44, 46, 53, 58 and 66, the prior art of reference fails to
`teach or suggest wherein first-axis conductor cells" and the second-axis conductor cells" consist of a
`transparent conductive material." (Id., at 4.) (original emphasis)”
`
`Following the Notice of allowance the applicant filed comments on statement of
`
`reasons for allowance. The applicant agrees with the examiners reason for allowance
`
`but also states that the "(a)ppIicants respectfully submit that while the Examiner's
`
`statement is correct, the art of record also does not teach or suggest the claimed
`
`invention directed to, in combination with the transparent conductive material of the first-
`
`axis and second-axis conductor cells, such features as “a plurality of transmission lines
`
`formed on the surface of tile substrate" as required by claim 11, or "a capacitance
`
`between a first cell of the plurality of first-axis cells and a second cell of the plurality of
`
`second-axis cells is measured to detect a position of touch“, as in claim 17, or “a rigid
`
`substrate" as called for in independent claims 46, 53, 66 and 68.”
`
`Therefore the following are features deemed allowable during prosecution:
`
`Page 6 of 15
`Page6 of 15
`
`
`
`Application.r"C0ntro1 Number: 903012.869
`
`Art Unit: 3992
`
`Page 5
`
`1 A first-axis conductor cells and the second-axis conductor cells consist of a
`
`transparent conductive material.
`
`2. A plurality of transmission lines formed on the surface of tile substrate.
`
`3. A capacitance between a first cell of the plurality of first-axis cells and a
`
`second cell of the plurality of second-axis cells is measured to detect a position of
`
`touch.
`
`4. A rigid substrate.
`
`Discussion of the Art Cited in the Reexamination
`
`Fujitsu, Binstead, Bolender, and Miller were all of record in the ‘902 patent.
`
`Bolender is the only reference above that was used to reject the claims during the
`
`prosecution of the ‘902 patent. Fujitsu and Binstead are listed on the face of the ‘902
`
`patent and Miller is mentioned in the background section of the specification of the ‘902
`
`patent. Bolender and Miller are used in the instant reexamination in various
`
`combinations using Fujitsu, Binstead, Lambert and Honeywell as the primary
`
`references. The combination of these primary references with Bolender and Miller
`
`presents new, non-cumulative technological teachings that were not previously
`
`considered or discussed on the record during the prosecution of the ‘902 patent.
`
`Lambert and Honeywell were not considered by the examiner during the
`
`prosecution of the ‘902 patent.
`
`Page 7 of 15
`Page 7of 15
`
`
`
`Application.r"Contro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 6
`
`In this reexamination there are substantial new questions of patentability based
`
`solely on patents and/or printed publications already cited/considered in an earlier
`
`concluded examination of the patent being reexamined. On November 2, 2002, Public
`
`Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised
`
`the reexamination statute by adding the following new last sentence to 35 U.S.C. 303(a)
`
`and 312(a):
`
`“The existence of a substantial new question of patentability is not precluded by
`
`the fact that a patent or printed publication was previously cited by or to the Office or
`
`considered by the Office."
`
`For any reexamination ordered on or after November 2, 2002, the effective date
`
`of the statutory revision, reliance on previously citedlconsidered art, i.e., “old art,” does
`
`not necessarily preclude the existence of a substantial new question of patentability
`
`(SNQ) that is based exclusively on that old art. Rather, determinations on whether a
`
`SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a
`
`case—by—case basis.
`
`In the present instance, there exists a SNQ based solely on Fujitsu alone and
`
`Binstead alone for the reasons discussed below:
`
`Substantial New Questions of Patentability
`
`Issue I: Requester asserts a substantial new question of patentability involving
`
`claims 1-68 as being anticipated or rendered obvious by Fujitsu alone and
`
`combinations thereof (Binstead, Honeywell, Bolender, and Miller).
`
`Page 8 of 15
`Page8 of 15
`
`
`
`Application.r"Contro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 7
`
`Fujitsu was published on April 30, 1985, which is more than one year before the
`
`earliest effective filing date of the '902 patent, April 27, 2007. Fujitsu is thus prior art to
`
`the ‘Q02 patent under 35 U.S.C. § 102(b). Fujitsu is old art that was previously before
`
`the examiner; however, Fujitsu was never used in the context of a rejection during
`
`earlier examinations. Thus, Fujitsu is now being viewed in a new light.
`
`Fujitsu teaches a sensor panel is formed with x and y transparent conductor lines
`
`insulating and crossing each other on a transparent substrate (see English translation
`
`page 4 lines 5-18). These features were emphasized in the reasons for allowance or in
`
`the applicants comments on the reasons for allowance of the ‘902 patent. Since this
`
`teaching is directly related to the subject matter considered as the basis for allowability
`
`of the patent claims or in the applicant’s comments, a reasonable examiner would
`
`consider evaluation of the Fujitsu reference as important in determining the patentability
`
`of the claims. Further, Fujitsu in combination with other references (Binstead,
`
`Honeywell, Bolender, and Miller) provides a non—cumu|ative teaching of the references
`
`previously considered. As such, it is agreed that the Fujitsu alone or in
`
`combinations with other references raises a substantial new question of
`
`patentability with respect to claims 1-68.
`
`Issue ll: Binstead
`
`Requester asserts a substantial new question of patentability involving
`
`claims 1-68 as being anticipated or rendered obvious by Binstead alone and
`
`combinations thereof (Honeywell, Bolender, and Illliller).
`
`Page 9 of 15
`Page9 of 15
`
`
`
`Application.r"C0ntro1 Number: 903012.869
`
`Art Unit: 3992
`
`Page 8
`
`Binstead is a U.S. Patent that issued on October 24, 2000, which is more than
`
`one year before the earliest effective filing date of the ‘902 patent, April 27, 2007.
`
`Binstead is thus prior art to the ‘902 patent under 35 U.S.C. § 102(b). Binstead is old art
`
`that was previously before the examiner; however, Binstead was never used in the
`
`context of a rejection during earlier examinations. Thus, Binstead is now being viewed
`
`in a new light.
`
`Binstead discloses in column 2 lines 38-43 that “(a)ppropriate material for these
`
`conductor elements 12, 14 is, for example, silver—based conducting ink.
`
`If the conductor
`
`elements are to be of low visibility where the touchpad is being used in front of a display
`
`system, then indium oxide is an appropriate material.” These features were
`
`emphasized in the reasons for allowance or in the applicants comments on the reasons
`
`for allowance of the ‘902 patent. Since this teaching is directly related to the subject
`
`matter considered as the basis for allowability of the patent claims or in the applicants
`
`comments, a reasonable examiner would consider evaluation of the Binstead reference
`
`as important in determining the patentability of the claims. Further, Binstead in
`
`combination with other references (Honeywell, Bolender, and Miller) provides a non-
`
`cumulative teaching of the references previously considered. As such, it is agreed that
`
`the Binstead alone or in combination with other references raises a substantial
`
`new question of patentability with respect to claims 1-68.
`
`Page 10 of 15
`Page10of15
`
`
`
`Application.r"Contro1 Number: 90:"0l2,869
`
`Page 9
`
`Art Unit: 3992
`
`Issue Ill: Lambert
`
`Requester asserts a substantial new question of patentability involving claims 1-
`
`68 as being anticipated or rendered obvious by Lambert alone and combinations thereof
`
`(Binstead, Honeywell, Bolender, and Miller).
`
`Lambert is a published UK patent application that published on June 25, 1986,
`
`which is more than one year before the earliest effective filing date of the '902 patent,
`
`April 27, 2007. Lambert is thus prior art to the ‘.902 patent under 35 U.S.C. § 102(b).
`
`Specifically Lambert teaches a touch sensitive position sensor apparatus with
`
`first and second layer of electrically conductive strips that are formed of optically
`
`transparent material. See page 1 lines 55-65 and 97-101.
`
`Accordingly, Lambert teaches the feature was emphasized in the reasons for
`
`allowance of the '902 Patent. Since this teaching is directly related to the subject matter
`
`considered as the basis for allowability of the patent claims, a reasonable examiner
`
`would consider evaluation of the Lambert reference as important in determining the
`
`patentability of the claims. The Lambert reference was not before the examiner at the
`
`time of Allowance and provides a non—cumu|ative teaching of the references previously
`
`considered. Further, Honeywell in combination with other references (Binstead,
`
`Honeywell, Bolender, and Miller) provides a non—cumu|ative teaching of the references
`
`previously considered. As such, it is agreed that the Lambert alone or in
`
`combination with other references raises a substantial new question of
`
`patentability with respect to claims 1-68.
`
`Page 11 of 15
`Page11of15
`
`
`
`Application.r"C0ntro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Issue IV: Honeywell
`
`Page 10
`
`Requester asserts a substantial new question of patentability involving claims 1-
`
`68 as being anticipated or rendered obvious by Honeywell alone and combinations
`
`thereof (Binstead, Bolender, and Miller). Honeywell was published on April 30, 1986,
`
`which is more than one year before the earliest effective filing date of the '902 patent,
`
`April 27, 2007. Honeywell is thus prior art to the ‘Q02 patent under 35 U.S.C. § 102(b).
`
`Honeywell was not cited during the prosecution of the ‘.902 patent.
`
`Honeywell teaches in the “means for solving the problem” section of the
`
`translation the following:
`
`“That is, a plurality of straight first electrodes parallel to each other, made of a
`transparent conductive material, a plurality of second electrodes crossing these, which
`is similar to the first electrodes, and a transparent dielectric material for forming a
`predetermined electrostatic capacity between the interposed and opposed electrodes at
`at least each intersection between the second electrodes and the first electrodes are
`
`provided on a display surface, and the surface of each electrode is covered with a
`insulator material and a detection circuit for detecting a change of electrostatic capacity
`at each intersection as a coordinate position of the intersection is provided."
`
`Accordingly, Honeywell discloses the feature was emphasized in the reasons for
`
`allowance of the '902 Patent. Since this teaching is directly related to the subject matter
`
`considered as the basis for allowability of the patent claims, a reasonable examiner
`
`would consider evaluation of the Honeywell reference as important in determining the
`
`patentability of the claims. The Honeywell reference was not before the examiner at the
`
`time of Allowance and provides a non-cumulative teaching of the references previously
`
`considered. Further, Honeywell in combination with other references (Binstead,
`
`Page 12 of 15
`Page12of15
`
`
`
`Application.r"C0ntro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 1 I
`
`Bolender, and Miller) provides a non-cumulative teaching of the references previously
`
`considered. As such, it is agreed that the Honeywell alone or in combination with
`
`other references raises a substantial new question of patentability with respect to
`
`claims 1-68.
`
`Conclusion
`
`Accordingly claims 1-68 of the ‘902 patent are subiect to reexamination.
`
`Extensions of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`CFR1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR 1.550(0).
`
`Waiver of Flight to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waive the right under 37
`
`C.F.R. 1.530 to file a Patent Owner Statement. The document needs to contain a
`
`statement that Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent
`
`Owner Statement and proof of service in the manner provided by 37 C.F.R. 1.248, if the
`
`request for reexamination was made by a third party requester, see 37 C.F.Fl 1.550.
`
`The Patent Owner may consider using the following statement in a document waiving
`
`Page 13 of 15
`Page13of15
`
`
`
`Application.r"Contro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 12
`
`the right to file a Patent Owner Statement: Patent Owner waives the right under 3?’
`
`C.F_R. 1.530 to file a Patent Owner Statement.
`
`Amendment in Reexamination Proceedings
`
`Patent owner is notified that any proposed amendment to the specification and/or
`
`claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
`
`formally presented pursuant to 37 CFR § 1.52(a) and (b), and must contain any fees
`
`required by 37 CFR §1.20(c). See MPEP § 2250(lV) for examples to assist in the
`
`preparation of proper proposed amendments in reexamination proceedings.
`
`Service of Papers
`
`After the filing of a request for reexamination by a third party requester, any
`
`document filed by either the patent owner or the third party requester must be served on
`
`the other party (or parties whereto or more third party requester proceedings are
`
`merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See
`
`37 CFR 1.550
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 8,217,902 throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`Page 14 of 15
`Page14of15
`
`
`
`Application.r"C0ntro1 Number: 90:"0l2,869
`
`Art Unit: 3992
`
`Page 13
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed :
`
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to: Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`httgs://sgortal.usgto.gov/anthenticatefauthenticateuserlocalepf.htrnl. EFS-Web offers the
`benefit of quick submission to the particular area of the Office that needs to act on the
`correspondence. Also, EFS-Web submissions are “soft scanned” (i.e., electronically
`uploaded) directly into the official file for the reexamination proceeding, which offers
`parties the opportunity to review the content of their submissions after the “soft
`scanning” process is complete.
`
`Any inquiry concerning this communication should be directed to the Central
`Reexamination Unit at telephone number (571) 272-7705.
`
`Signed:
`
`/John M Hotaling ll!
`Primary Examiner
`AU 3992
`
`Conferees:
`
`IC. SJ
`
`/WHC/
`
`Page 15 of 15
`Page15of15
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