USOO5796l83Cl
`
`(12) EX PARTE REEXAMINATION CERTIFICATE (9614th)
`United States Patent
`Hourmand et al.
`
`(10) Number:
`US 5,796,183 C1
`(45) Certificate Issued:
`Apr. 29, 2013
`
`(54) CAPACITIVE RESPONSIVE ELECTRONIC
`SVVITCHING CIRCUIT
`
`(75)
`
`Inventors: Byron Hourniand, Hersey, MI (US);
`John M. Washeleski, Cadillac, MI HJS);
`Stephen R. W. Cooper, Fowlcrvillc, MI
`(US)
`
`(73) Assignee: Nartron Corporation, Reed City, MI
`(US)
`
`Reexamination Request:
`No. 90/012,439, Aug. 17. 2012
`
`Reexamination Certificate for:
`Patent No.:
`5,796,183
`Issued:
`Aug. 18, 1998
`Appl. No.:
`08/601,268
`Filed:
`Jan. 31, 1996
`
`Certificate of Correction issued May 11, 1999
`Certificate of Correction issued Oct. 11, 2011
`
`(51)
`
`I11t. Cl.
`H03K 1 7/96
`H0311’ 17/94
`
`(2006.01)
`(2006.01)
`
`(52) U.s. Cl.
`usrc .......... .. 307/116; 307/125; 307/139; 361/18]
`
`(58) Field of Classification Search
`None
`See application file for complete search history.
`References Cited
`
`(56)
`
`To view the complete listing of prior art documents cited
`during the proceeding for Reexamination Control Number
`90/012,439, please refer to the USPTO’s public Patent
`Application Information Retrieval (PAIR) system under the
`Display Rcfcrcnccs tab.
`Primary Examiner — Linh M. Nguyen
`(57)
`ABSTRACT
`A capacitive responsive electronic switching circuit co111-
`prises an oscillator providing a periodic output signal having
`a frequency of 50 kHz or greater, an input touch terminal
`defining an area for an operator provide an input by proximity
`and touch, and a detector circuit coupled to the oscillator for
`receiving the periodic output signal from the oscillator, and
`coupled to the input touch terminal. The detector circuit being
`responsive to signals from the oscillator and the presence of
`an operator’s body capacitance to ground coupled to the
`touch terminal when in proximity or touched by an operator to
`provide a control output signal. Preferably, the oscillator pro-
`vides a periodic output signal having a frequency of 800 kHz
`or greater. An array of touch terminals may be provided in
`close proximity due to the reduction in crosstalk that may
`result from contaminants by utilizing an oscillator outputting
`a signal having a frequency of 50 kHz or greater.
`
`VOLTAGE — OSCILLATOR
`REGULATOR
`
`201
`
`MICRO-
`CONTROLLER
`
`FLOATING
`GROUND
`GENERATOR
`
`TOUCH
`CIRCUIT
`
`401
`
`MICRO-
`CONTROLLER
`
`Page 1 of 169
`
`SAMSUNG EXHIBIT 1005
`
`

`
`US 5,796,183 Cl
`
`1
`EX PARTE
`REEXAMINATION CERTIFICATE
`ISSUED UNDER 35 U.S.C. 307
`
`THE PATENT IS HEREBY AMENDED AS
`INDICATED BELOW.
`
`l\Iatter enclosed in heavy brackets [ ] appeared in the
`patent, but has been deleted and is no longer a part of the
`patent; matter printed in italics indicates additions made
`to the patent.
`
`AS A RESULT OF REEXAMINAHON, Il HAS B 4N
`DETERMINED THAT:
`
`Claims 18, 27, 28 and 32 are determined to be patentable as
`amended.
`New claims 33-39 are added and determined to be
`patentable.
`Claims 1-17, 19-26 and 29-31 were not reexamined.
`
`18. A capacitive responsive electronic switching circuit
`comprising:
`an oscillator providing a periodic output signal having a ’
`predefined frequency;
`a microcontroller using theperiodic output signalfrom the
`oscillator, the microcontroller selectively providing sig-
`nal outputfrequencies to a plurality ofsmall sized input
`touch terminals o/la keypad;
`[a] the plurality ofsmall sized input touch terminals defin-
`ing adjacent areas on a dielectric substrate for an opera-
`tor to provide inputs by proximity and touch; and
`a detector circuit coupled to said oscillator for receiving
`said periodic output signal
`froi11 said oscillator, and
`coupled to said input touch terminals, said detector cir-
`cuit being responsive to signals from said oscillator via
`said microcontroller and [the] a presence of an opera-
`tor’s body capacitance to ground coupled to said touch
`terminals when proximal or touched by
`the operator
`to provide a control output signal,
`wherein said predefined frequency of said oscillator [is]
`and said signal output frequencies are selected to
`decrease [the] afirst impedance of said dielectric sub-
`strate relative to [the] a second impedance of any con-
`taminate that may create an electrical path on said
`dielectric substrate between said adjacent areas defined
`by theplurality ofsmall sized input touch terminals, and
`wherein said detector circuit compares [the] a sensed
`body capacitance change to ground proximate an input
`touch terminal to a threshold level to prevent inadvertent
`generation of the control output signal.
`27. A capacitive responsive electronic switching circuit for
`a controlled keypad device comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`a microcontroller using theperiodic output signalflom the
`oscillator, the microcontroller selectively providing sig-
`nal outputfrequencies to a closely spaced array ofinput
`touch terminals of a keypad, the input touch terminals
`comprisingfirst and second input touch terminals;
`the first and second input touch terminals defining areas for
`an operator to provide an input by proximity and touch;
`and
`a detector circuit coupled to said oscillator for receiving
`said periodic output signal from said oscillator, and
`coupled to said first and second touch tenninals, said
`
`,
`
`2
`detector circuit being responsive to signals from said
`oscillator via said microcontroller and [the] a presence
`of an operator’ s body capacitance to ground coupled to
`said first and second touch terminals when proximal or
`touched by [an] the operator to provide a control output
`signal for actuation ofthe controlled keypad device, said
`detector circuit being configured to generate said control
`output signal when [an] the operator is proximal or
`touches said second touch terminal after the operator is
`proximal or touches said first touch terminal.
`28. The capacitive responsive electronic switching circuit
`as defined in claim 27, wherein said detector circuit generates
`said control signal only when [an] the operator is proximal or
`touches said second touch terminal within a predetermined
`time period after the operator is proximal or touches said first
`touch terminal.
`32. The capacitive responsive electronic switching circuit
`as defined in claim 27 and further including an indicator for
`indicating when said detector circuit detennines that [an] the
`‘ operator is proximal or touches said first touch terminal.
`33. The capacitive responsive electronic switching circuit
`as defined in claim I 8,further comprising wherein said detec-
`tor circuit compares the sensed body capacitance change
`caused by the body capacitance decreasing an input touch
`terminal signal on the detector to ground when proximate to
`the input touch terminal to a second threshold level to gener-
`ate the control output signal.
`34. The capacitive responsive electronic switching circuit
`as defined in claim I 8,further comprising wherein said detec-
`tor circuit compares the sensed
`capacitance change
`caused by the body capacitance decreasing an input touch
`terminal signal amplitude on the detector to ground when
`proximate to the input touch terminal to a second threshold
`level to generate the control output signal.
`35. The capacitive responsive electronic switching circuit
`as defined in claim 2 7, wherein when the second touch termi-
`nal is not touched on its defining area by the operator to
`provide input, the control output signal is prevented.
`36. The capacitive responsive electronic switching circuit
`as defined in claim 27 andfi/rther including an indicatorfor
`indicating when said detector circuit determines that the
`operator is proximal or touches said second touch terminal.
`3 7. A capacitive responsive electronic switching circuitfor
`a controlled device comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency, wherein an oscillator voltage is
`greater than a supply voltage;
`a microcontroller using theperiodic output signalfrom the
`oscillator, the microcontroller selectivelyproviding sig-
`nal outputfrequencies to a closely spaced array ofinput
`touch terminals of a keypad, the input touch terminals
`comprisingfirst and second input touch terminals;
`thefirst and second touch terminals defining areasfor an
`operator toprovide an input byproxim ity and touch; and
`a detector circuit coupled to said oscillatorfor receiving
`said periodic output signal from said oscillator, and
`coupled to saidfirst and second touch terminals, said
`detector circuit being responsive to signals from said
`oscillator via said microcontroller and a presence ofan
`operator’s body‘ capacitance to ground coupled to said
`first and second touch terminals when proximal or
`touched by the operator to provide a control output
`signalfor actuation ofthe controlled device, said detec-
`tor circuit being configured to generate said control
`output signal when the operator is proximal or touches
`said second touch terminal after the operator is proxi-
`mal or touches saidfirst touch terminal.
`
`Page 2 of 169
`
`

`
`US 5,796,183 C1
`
`3
`38. The capacitive responsive electronic switclzing circuit
`as defined in claim 3 7, wherein feedback to tlze operator is
`provided by an indicator activated
`the microcontroller
`after the operator touches the second touch terminal.
`39. The capacitive responsive electronic switching circuit
`as defined in claim 37,
`wherein said detector circuit compares a sensed body
`capacitance change caused by the body capacitance
`decreasing a second touch terminal signal on the detec-
`tor to ground when proximate to the second touch ter-
`minal to a threshold level to generate the control output
`signal, and
`whereinfeedback to the operator is provided by an indica-
`tor activated by the microcontroller afler the operator
`touches the second touch terminal.
`*
`>1‘
`*
`*
`>I<
`
`Page 3 of 169
`
`

`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0 Box 1450
`Alexandna, Virgmia 22313- I450
`WWW.1]SPi.0 gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAM < ) INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,439
`
`08/17/2012
`
`5796183
`
`NAR—579(1183RX
`
`4155
`
`25962
`
`7590
`
`04/10/2013
`
`SLATER & MATSIL, L.L.P.
`17950 PRESTON RD, SUITE 1000
`DALLAS, TX 75252-5793
`
`EXAMINER
`
`NGUYEN UNH M
`PAPER NUMBER
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`04/ 1 0/201 3
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`Page 4 of 169
`
`

`
`Control No.
`
`Patent Under Reexamination
`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`90/012439
`Examiner
`
`LINH M. NGUYEN
`
`5796183
`Art Unit
`
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`1. I] Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be issued
`in view of
`
`(a)
`
`IZI Patent owner’s communication(s) filed: 19 November 2012.
`I:I Patent owner’s failure to file an appropriate timely response to the Office action mailed:
`I:I Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).
`D The decision on appeal by the El Board of Patent Appeals and interferences E! Court dated
`
`The Reexamination Certificate will indicate the following:
`Change in the Specification:
`I:| Yes IZI No
`Change in the Drawing(s):
`I] Yes
`No
`Status of the Claim(s):
`.
`1) Patent claim(s) confirmed:
`Patent claim(s) amended (including dependent on amended claim(s)): 18,27,28 and 32
`Patent claim(s) canceled:
`.
`Newly presented claim(s) patentable: 33-39.
`Newly presented canceled claims:
`.
`Patent claim(s) I:I previously I:I currently disclaimed:
`(7) Patent claim(s) not subject to reexamination: 1-17 19-26 and 29-31.
`
`Note the attached statement of reasons for patentability and/or confirmation. Any comments considered necessary
`by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly to avoid
`processing delays. Such submission(s) should be labeled: “Comments On Statement of Reasons for Patentability
`and/or Confirmation.”
`
`4. CI Note attached NOTICE OF REFERENCES CITED (PTO—892).
`
`5. I] Note attached LIST OF REFERENCES CITED (PTO/SB/O8 or PTO/SB/O8 substitute).
`
`6. I:l The drawing correction request filed on
`
`is:
`
`I:I approved
`
`|:I disapproved.
`
`7. I:l Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)—(d) or ( ).
`a)|:I All b)|:I Some*
`c)|:| None
`of the certified copies have
`I:l been received.
`I:| not been received.
`.
`I:I been filed in Application No.
`.
`I:l been filed in reexamination Control No.
`I:| been received by the International Bureau in PCT Application No.
`
`* Certified copies not received:
`
`8. I:I Note attached Examiner’s Amendment.
`
`9. I:| Note attached Interview Summary (PTO-474).
`
`10. I] Other:
`
`All correspondence relating to this reexamination proceeding should be directed to the Central Reexamination Unit at
`the mail, FAX, or hand—carry addresses given at the end of this Office action.
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL—469 (Rev. 07-10)
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20130327
`
`Page 5 of 169
`
`

`
`Application/Control Number: 90/012,439
`Art Unit: 3992
`
`Notice of Intent to Issue Reexamination Certificate
`
`This is a reexamination of United States Patent Number 5,796,183 (“the 183’ patent”). 1n
`
`the reexamination request filed 08/ 17/2012 (“Request”), by Patent Owner, a substantial new
`
`question (SNQ) of patentability was raised as to claims 18 and 27. Those claims are thus
`
`reexamined herein. Reexamination was not requested of claims 1-17, 19-26 and 28-32.
`
`Therefore, claims 1-17, 19-26, and 27-31 will not be reexamined. See MPEP 2243. However,
`
`claims 28 and 32 will be reexamined, as further explained below.
`
`A Patent Owner Statement was filed 11/19/2012, in which claims 18 and 27 were
`
`amended, as well as claims 28 and 32 due to their dependencies from claim 27. Furthermore,
`
`new claims 33-39 were added.
`
`Within the examiner’s discretion, the newly added Claims 33-39 and the non-requested
`
`amended claims 28 and 32 are now subject to reexamination.
`
`References
`
`Boie et al., U.S. Patent No. 5,463,388, filed on January 29, 1993 and issued on October
`
`31, 1996 ("Boie ‘388").
`
`Page 6 of 169
`
`

`
`Application/Control Number: 90/012,439
`Art Unit: 3992
`
`Statement of Reasons for Patentability and/or Confirmation
`
`Claims 18, 27, amended non—requested claims 28, 32 and newly added claims 33-39 are
`
`patentable.
`
`The examiner has no opinion as to the claims that were not reexamined. The following is
`
`an examiner’s statement of reasons for patentability of the claims found patentable in this
`
`reexamination proceeding:
`
`There is not taught or disclosed in the prior art a capacitive responsive electronic
`
`switching circuit having a microcontroller using the periodic output signal from the oscillator,
`
`the microcontroller selectively providing signal output frequencies to a plurality of small sized
`
`input touch terminals of a keypad, as called for in independent claim l8; nor a capacitive
`
`responsive electronic switching circuit having a microcontroller using the periodic output signal
`
`from the oscillator, the microcontroller selectively providing signal output frequencies to a
`
`closely spaced array ofinput touch terminals ofa keypad, the input touch terminals comprising
`
`first and second input touch terminals, as called for in independent claims 27 and 37. The
`
`examiner agrees with the discussion articulated by Patent Owner in the Statement that Boie does
`
`not teach or suggest these claim elements. Rather, Boie discloses that "RF oscillator 408
`
`provides an RF signal, for example, 100 kilohertz, to circuits 401, synchronous detector and filter
`
`404 Via inverter 410, and guard plane 41 l." Boie, col. 3:67—col. 4:2. Boie further discloses that
`
`"[t]he effects of electrode—to—electrode capacitances, wiring capacitances and other extraneous
`
`Page 7 of 169
`
`

`
`Application/Control Number: 90/012,439
`Art Unit: 3992
`
`Page 4
`
`capacitances arc minimized by driving all electrodes and guard plane 411 in unison with the
`
`same RF signal from RF oscillator 408." Id. at col. 4:58-60 (emphasis added); see id. at Fig. 4.
`
`Thus Boie discloses driving the electrodes of electrode array 100 and guard plane 411 with a
`
`single RF signal. Boie does not teach or suggest providing signal output frequencies to these
`
`components. Accordingly, claims 18, 27, amended non—requested claims 28, 32, and newly
`
`added claims 33-39 are patentable.
`
`Any comments considered necessary by PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submission by the
`
`patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or
`
`Confirmation" and will be placed in the reexamination file.
`
`Page 8 of 169
`
`

`
`Application/Control Number: 90/012,439
`Art Unit: 3992
`
`Correspondence
`
`All correspondence relating to this inter parles reexamination proceeding should be directed:
`By Mail to: Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`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 htt s://efs.ns EOJFOV’/fjfilfi/1‘flV)O1‘13.l/€fS—1‘fE$ElS}t€T'Cd 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 comniunication or earlier co111111unications from the examiner, or as to the
`status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-
`7705.
`
`/Linh M. N guyen/
`Primag Examiner. Art Unit 3992
`
`Conferees:
`/James Menefee/
`
`Primary Examiner, Art Unit 3992
`
`/Daniel Ryman/
`Supervisory Patent Examiner, Art Unit 3992
`
`Page 9 of 169
`
`

`
`933E3Original
`
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`III COCD090L0OJ
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`I\JI\)I\)I\JI\)I\)I\JOOOOOOO\lO'>O1-I>(iOI\)—|
`
`—-ooonoon
`
`_
`_
`_
`Issue Classification
`
`Application/Control No.
`
`App|icant(s)/Patent under
`Reexamination
`
`90/012,439
`Examiner
`
`5796183
`Art Unit
`
`LINH M. NGUYEN
`
`3992
`
`ISSUE CLASSIFICATION
`
`/A. Ke||ey-Col|ier/
`(Legal Instruments Examiner)
`
`(Dale)
`
`/Linh M. Nguyen/
`
`3/27/2013
`
`(Primary Examifierl
`
`(Date)
`
`O.G.
`Pm“ C'a‘m(3>
`1 8
`
`‘°9Original ggOriginal
`
`I
`
`I
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`I
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`-P-I>
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`II
`IIIII
`
`I
`
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`\l\I\IO1-I>CiL)
`_I_I_I(D\I\IO\IO‘)
`
`_._. \l\lto0::
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. 20130327
`
`Page 10 of 169
`
`

`
`I UNITED STATES PATENT AND TRADEMARK OTEICE
`
`Page 1 of1
`
`LNITED STATES DEPARTMEN '1' OF COJVIMEKCE
`United States Patent and Tradelllark Office
`Addxess: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Aicxajtdlia. Vi
`' $122313-1450
`www usplo go
`
`BIB DATA SHEET
`
`SERIAL NUMBER
`90/012439
`
`F|LlNgA9|_rE 371 (c)
`08/17/2012
`
`RULE
`
`CONFIRMATION N0. 4155
`
`GROUP ART UNIT ATTORN'\IlE(Y) DOCKET
`NAR-5796183RX
`
`APPLICANTS
`5796183, Residence Not Provided;
`OWNER, REED CITY, Ml;
`PATENT OWNER, REED CITY, MI;
`*‘k‘k‘k‘k*‘k*‘k*’k*’k*‘k***‘k*‘k‘k‘k‘k*
`This application is a REX ofO8/601,268 O1/31/1996 PAT 5796183
`**k*****'k*'k*****~k*~kk~kk**~k
`
`*4:
`
`‘IN:
`
`** IF REQUIRED, FOREIGN FILING LICENSE GRANTED **
`
`3YesRNo
`Foreiwrioriivclaimed
`35 USC 119(a-d) conditions met :I Yes QND
`Verified and
`/LINH M NGUYEN/
`Acknowledged
`Examiner's Signature
`
`Allowance
`[I Met after
`
`Initials
`
`ADDRESS
`
`SLATER & MATSIL, L.L.P.
`17950 PRESTON RD, SUITE ‘I000
`DALLAS, TX 75252-5793
`UNITED STATES
`TITLE
`
`STATE on
`
`SHEETS
`
`TOTAL
`
`INDEPENDENT
`
`8
`
`Capacitive Responsive Electronic Switching Circuit
`
`FILING FEE FEES: Authority has been given in Paper
`RECEWED No.
`to charge/credit DEPOSIT ACCOUNT
`for following:
`
`II All Fees
`
`31.16 Fees (Filing)
`_
`_
`3 1-17 F993 (F’l°0eSS'“9 Ext 0* me) i
`II 1.18 Fees (Issue)
`II Other
`
`II Credit
`
`ere (Rev. 05/07).
`
`Page 11 of 169
`
`

`
`Search Notes
`
`A Iicalion/Control No.
`pp
`
`A |icant(s)/Patent under
`Rgzxamination
`
`90/012,439
`Examiner
`
`LINH M. NGUYEN
`
`5796183
`Art Unit
`
`3992
`
`SEARCHED
`
`3/27/2013
`
`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
`
`3/27/2013
`
`LMN
`
`INTERFERENCE SEARCHED
`
`Examiner
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. 20130327
`
`Page 12 of 169
`
`

`
`7”/W» €43 7
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Docket No;
`
`NAR—5796183RX
`
`inventors:
`
`I-Iourmand et al.
`
`Patent Owner: UUS1, LLC
`
`Examiner:
`
`Nguyen, Linh M.
`
`§ §
`
`§
`
`§
`
`U.S. Patent No:
`
`5,796,183 B1
`
`Issued:
`
`Filed:
`
`August 38, 1998
`
`Eanuary 31, 1996
`
`Control No.
`
`"T'B"B~
`
`For:
`
`Capacitive Responsive Electronic Switching Circuit
`
`Mail Stop Ex Parte Reexam
`Attn: Centrai Reexamination Unit
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 223i3-1459
`
`PATENT OWNER STA'£EMEN'l‘
`
`Dear Sir:
`
`Patent Owner respectfully submits this Patent Owner Statement in response to the
`
`September 20, 2012 Order Granting Request fo1'Ex Parte Reexamination of US. Patent Number
`
`5,796,183 B1 (the “‘ E83 Patent”). Patent Owner respectfuiiy requests that the feflowing
`
`amendments and remarks be entered, are respeetfuliy requests consideration of amended claims
`
`18, 27, 28 and 32, and new1y—adcied claims 33~39.
`
`7~é?—y4e—g/
`LMM 3/27/2,0,;
`
`NAR~»57961.83RX
`
`Page 1 of 37
`
`Page 13 of 169
`
`

`
`Reexamination
`
`Application/Control No.
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`90/012,439
`Certificate Date
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`App|icant(s)/Patent Under
`Reexamination
`5796183
`Certificate Number
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`C1
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`Requester
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`Correspondence Address:
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`XI Patent Owner
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`|:I Third Party
`
`SLATER & MATSIL, L.L.P.
`17950 PRESTON RD, SUITE 1000
`DALLAS, TX 75252-5793
`
`LITIGATION REVIEW IZI
`
`examiner initials
`Case Name
`
`3/27/2013
`date
`Director Initials
`
`U.S. District — Michigan Western
`(Grand Rapids)
`
`‘l:10cv691 (CLOSED)
`Nartron Cor oration et al v. Hourmand
`US District Court Civil Docket
`
`U.S. District- Pennsylvania Middle
`
`(Harrisburg)
`
`1 :O6Cv1777
`
`Orq, Ltd, A/K/A Quantum Research Group, Ltd v. Nartron Corporatio
`
`(CLOSED)
`U.S. District — Pennsylvania Western
`(Pittsburgh)
`
`2:O6CV500
`
`, Ltd v. Nartron Cor oration CLOSED
`
`TYPE OF PROCEEDING
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`NUMBER
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`Page 14 of 169
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`

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`U_S_ Patent and Trademark Office
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`DOC. CODE RXFILJKT
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`Page 15 of 169
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`U.S. Patent No.:
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`5,796,183 B1
`
`Issued:
`
`Filed:
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`August 18, 1998
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`January 31, 1996
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`.
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`'
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`Docket No.:
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`NAR—5796l83RX
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`Inventors:
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`Hourmand et al.
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`Patent Owner: UUSI, LLC
`
`Control No.
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`TBD
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`Examiner:
`
`Nguyen, Linh M.
`
`For:
`
`Capacitive Responsive Electronic Switching Circuit
`
`Mail Stop Ex Parte Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`PATENT OWNER STATEMENT
`
`Dear Sir:
`
`Patent Owner respectfully submits this Patent Owner Statement in response to the
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`September 20, 2012 Order Granting Request for Ex Parte Reexamination of U.S. Patent Number
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`5,796,183 B1 (the “‘l 83 Patent”). Patent Owner respectfully requests that the following
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`amendments and remarks be entered, and respectfully requests consideration of amended claims
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`18, 27, 28 and 32, and newly—added claims 33-39.
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`NAR—5796l83RX
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`Page 1 of 37
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`Page 16 of 169
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`I.
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`llfivti/lg 017%.? ‘/65’ Patent C’/at’//11 H/Ida‘/‘ /Peseta//11'/mt1'0/I
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`A listing of each claim under reexamination is provided below. Reexamination of claims
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`18 and 27 was granted in the Order dated September 20, 2012. Accordingly, please amend
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`claims 18 and 27, as well claims 28 and 32, which depend from claim 27, as provided below. In
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`addition, please add new claims 33-39 as follows.
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`18.
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`(Amended) A capacitive responsive electronic switching circuit comprising:
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`an oscillator providing a periodic output signal having a predefined frequency;
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`a microcontroller using the periodic output signal from the oscillator, the microcontroller
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`selectively providing signal output frequencies to a plurality of small sized input touch terminals
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`of a keypad;
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`[a] th_e plurality of small sized input touch terminals defining adjacent areas on a
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`dielectric substrate for an operator to provide inputs by proximity and touch; and
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`a detector circuit coupled to said oscillator for receiving said periodic output signal from
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`said oscillator, and coupled to said input touch terminals, said detector circuit being responsive to
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`signals from said oscillator via said microcontroller and [the] a presence of an operator's body
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`capacitance to ground coupled t_o said touch terminals when proximal or touched by [an] E
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`operator to provide a control output signal,
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`wherein said predefined frequency of said oscillator [is] and said signal output
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`frequencies are selected to decrease [the] a first impedance of said dielectric substrate relative to
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`[the] a second impedance of any contaminate that may create an electrical path on said dielectric
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`substrate between said adjacent areas defined by the plurality of small sized input touch
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`terminals, and wherein said detector circuit compares [the] a sensed body capacitance change to
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`NAR—5796l83RX
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`Page 2 of 37
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`Page 17 of 169
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`ground proximate an input touch terminal to a threshold level to prevent inadvertent generation
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`of the control output signal.
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`27.
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`(Amended) A capacitive responsive electronic switching circuit for a controlled keypad
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`device comprising:
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`an oscillator providing a periodic output signal having a predefined frequency;
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`a microcontroller using the periodic output signal from the oscillator, the microcontroller
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`selectively providing signal output frequencies to a closely spaced array of input touch terminals
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`of a keypad, the input touch terminals comprising first and second input touch terminals;
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`E first and second input touch terminals defining areas for an operator to provide an
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`input by proximity and touch; and
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`a detector circuit coupled to said oscillator for receiving said periodic output signal from
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`said oscillator, and coupled to said first and second touch terminals, said detector circuit being
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`responsive to signals from said oscillator via said microcontroller and [the] g presence of an
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`operator's body capacitance to ground coupled to said first and second touch terminals when
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`proximal or touched by [an] E operator to provide a control output signal for actuation of the
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`controlled% device, said detector circuit being configured to generate said control output
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`signal when [an] th_e operator is proximal or touches said second touch terminal after the operator
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`is proximal or touches said first touch terminal.
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`(Amended) The capacitive responsive electronic switching circuit as defined in claim 27,
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`wherein said detector circuit generates said control signal only when [an] ‘th_e operator is
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`proximal or touches said second touch terminal within a predetermined time period after the
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`operator is proximal or touches said first touch terminal.
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`NAR—5796l83RX
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`Page 3 of 37
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`Page 18 of 169
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`32.
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`(Amended) The capacitive responsive electronic switching circuit as defined in claim 27
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`and further including an indicator for indicating when said detector circuit determines that [an]
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`th_e operator is proximal or touches said first touch terminal.
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`New The Ca acitive res onsive electronic switchin circuit as defined in claim 18
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`further comprising wherein said detector circuit compares the sensed body capacitance change
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`caused by the body capacitance decreasing an input touch terminal signal on the detector to
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`ground when proximate to the input touch terminal to a second threshold level to generate the
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`control output signal.
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`New The ca acitive res onsive electronic switchin circuit as defined in claim 18
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`further comprising wherein said detector circuit compares the sensed body capacitance change
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`caused by the body capacitance decreasing an input touch terminal signal amplitude on the
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`detector to ground when proximate to the input touch terminal to a second threshold level to
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`generate the control output signal.
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`New The ca acitive res onsive electronic switchin circuit as defined in claim 27
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`wherein when the second touch terminal is not touched on its defining area by the operator to
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`provide input. the control output signal is prevented.
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`36.
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`(New) The capacitive responsive electronic switching circuit as defined in claim 27 and
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`further including an indicator for indicating when said detector circuit determines that the
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`operator is proximal or touches said second touch terminal.
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`NAR—5796l83RX
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`Page 4 of 37
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`Page 19 of 169
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`New A ca acitive res onsive electronic switching circuit for a controlled device
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`comprising:
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`an oscillator providing a periodic output signal having a predefined freguency, wherein
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`an oscillator voltaoe is greater than a supply voltao,e;
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`a microcontroller using the periodic output signal from the oscillator, the microcontroller
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`selectively providing sic,nal output freguencies to a closely spaced array of input touch terminals
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`of a keypad, the input touch terminals comprising first and second input touch terminals‘,
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`the first and second touch terminals defining areas for an operator to provide an input by
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`proximity and touch; and
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`a detector circuit coupled to said oscillator for receiving said periodic output signal from
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`said oscillator. and coupled to said first and second touch terminals, said detector circuit being
`
`responsive to signals from said oscillator via said microcontroller and a presence of an operator's
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`body capacitance to ground coupled to said first and second touch terminals when proximal or
`
`touched by the operator to provide a control output signal for actuation of the controlled device,
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`said detector circuit being configured to generate said control output sicnal when the operator is
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`proximal or touches said second touch terminal after the operator is proximal or touches said first
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`touch terminal.
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`38.
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`(New) The capacitive responsive electronic switching circuit as defined in claim 37,
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`wherein feedback to the operator is provided by an indicator activated by the microcontroller
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`after the operator touches the second touch terminal.
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`New The ca acitive res onsive electronic switchino circuit as defined in claim 37
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`wherein said detector circuit compares a sensed body capacitance Chan Ge caused by the
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`NAR—5796l83RX
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`Page 5 of 37
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`Page 20 of 169
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`body capacitance decreasing a second touch terminal signal on the detector to ground when
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`proximate to the second touch terminal to a threshold level to generate the control output signal,
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`fii
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`wherein feedback to the operator is QI‘OVldCd by an indicator activated by the
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`microcontroller after the operator touches the second touch terminal.
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`NAR—5796l83RX
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`Page 6 of 37
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`Page 21 of 169
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`11. Status of the Claims
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`Claims 1-39 are pending in the present reexamination proceeding, of which claims 18,
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`27, 28 and 32 are amended herein and 33-39 are added herein.
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`III. Discussion of Claims and Prior Art Reference
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`Patent Owner filed a Request for Ex Parte Reexamination on August 17, 2012,
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`submitting that a substantial new question of patentability of claims 18 and 27 is raised by Boie
`
`et al., U.S. Patent No. 5,463,388 (“Boie”). Reexamination of these claims was granted in the
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`Order dated September 20, 2012.
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`Patent Owner is amending claims 18 and 27 in this Patent Owner Statement. Because
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`some of these amendments were made to provide better antecedent basis for some claim terms,
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`Patent Owner is amending dependent claims 28 and 32 for the same reason. Patent Owner also
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`is adding new claims 33-39. Accordingly, Patent Owner respectfully requests consideration of
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`amended claims 18, 27, 28 and 32, and new claims 33-39. No new matter has been added.
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`A. Independent Claim 18
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`Independent claim 18 recites “a microcontroller using the periodic output signal from the
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`oscillator, the microcontroller selectively providing signal output frequencies to a plurality of
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`small sized input touch terminals of a keypad.” Boie does not teach or suggest these claim
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`elements.
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`Rather, Boie discloses that “RF oscillator 408 provides an RF signal, for example, 100
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`kilohertz, to circuits 401, synchronous detector and filter 404 via inverter 410, and guard plane
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`411.” Boie, col. 3:67-col. 4:2. Boie further discloses that “[t]he effects of electrode-to-electrode
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`NAR-5796l83R