UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/862,483
`
`01/04/2018
`
`Jaeik LIM
`
`P7400US00
`
`1487
`
`H.C. PARK & ASSOCIATES, PLC
`1894 PRESTON WHITE DRIVE
`RESTON, VA 20191
`
`EDWARDS CAROLYN R
`
`ART UNIT
`
`2625
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/19/2019
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`PATENT @ PARK-LAW. COM
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`15/862,483
`Examiner
`CAROLYN R EDWARDS
`
`Applicant(s)
`LIM etal.
`Art Unit
`2625
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 01/04/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—26 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)I:l Some**
`
`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190312
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`2.
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 01/04/2018 was filed
`
`after the mailing date of the application on 01/04/2018. The submission is in
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`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
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`statement is being considered by the examiner.
`
`Claim Rejections - 35 USC § 103
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`4.
`
`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`5.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 3
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`6.
`
`Claims 1 — 11 are rejected under 35 U.S.C. 103 as being unpatentable over Shim
`
`et al., US Publication 2017/0083107 A1 in view of lgeta US Publication 2012/0218221
`
`A1.
`
`With regards to Claim 1, Shim discloses: An electronic device (Title and
`
`Abstract — input device), comprising:
`
`a base substrate (FIG 6, 110 & 120 and FIG 16, substrate and elastomer)
`
`configured to change an area in a plan view corresponding to an external force applied
`
`from outside (FIG 16 and Paragraph [0142 — 0144]); and
`
`a sensor (FIG 6, 110) disposed on the base substrate (FIG 6, 110 & 120),
`
`configured to sense a touch applied from the outside (Paragraph [0066 — 0067]),
`
`wherein the sensor (FIG 6, 110) comprises:
`
`a first electrode (111) disposed on the base substrate (110);
`
`a second electrode (121) disposed on the base substrate (120) and
`
`forming an electric field with the first electrode (Paragraph [0067]); and
`
`a dielectric layer (130) disposed between the first electrode (111) and the
`
`second electrode (121); and
`
`Shim fails to explicitly disclose: and configured to change an area in the
`
`plan view corresponding to the external force applied from the outside;
`
`

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`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 4
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`wherein a thickness of the dielectric layer is configured to stay
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`substantially the same when the area in the plan view of the base substrate
`
`changes.
`
`lgeta discloses: a sensor (FIGS 5 & 6, 10) disposed on the base substrate
`
`(FIGS 5 & 6, 41 & 51), configured to sense a touch applied from the outside (FIG
`
`6, shows touch applied by finger) configured to change an area in the plan view
`
`corresponding to the external force applied from the outside (FIG 6 and
`
`Paragraph [0040 — 0041]);
`
`wherein a thickness of the dielectric layer (FIGS 5 & 6, 42 & 43 —
`
`insulating layer) is configured to stay substantially the same (FIG 6, show the
`
`thickness of the insulating layer remains substantially the same) when the area in
`
`the plan view of the base substrate changes (in combination with Shim’s
`
`invention which teaches in FIG 16 that the base substrate changes with applied
`
`pressure).
`
`Therefore it would have been obvious to a person having ordinary skills in the art
`
`before the effective filing date of the application to have used the teachings of
`
`configured to change an area in the plan view corresponding to the external force
`
`applied from the outside; wherein a thickness of the dielectric layer is configured to stay
`
`substantially the same when the area in the plan view of the base substrate changes in
`
`Shim’s invention as taught by Igeta’s invention.
`
`The motivation for doing so would have been in order to generate information of
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`large/small pressing force at a contact position, and even when the input surface is
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 5
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`contacted simultaneously at plural points, each of the contact positions can be
`
`calculated.
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`With regards to Claim 2, Shim discloses: wherein each of the area in the plan
`
`view of the base substrate (FIG 16, substrate and elastomer) and the sensor (FIG 6,
`
`110) is a projected area in the plan view (FIG 16, shows this feature).
`
`Igeta also discloses: wherein each of the area in the plan view of the base
`
`substrate (FIG 6, 41 & 51) and the sensor (FIG 6, 10) is a projected area in the plan
`
`view (FIG 6, shows this feature).
`
`With regards to Claim 3, Shim discloses: wherein the base substrate (FIG 16,
`
`substrate) has a first area in the plan view in a first mode (not pressed) in which the
`
`external force is 0 MPa (Paragraph [0141 — 0142] — teaches of when there is no
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`pressing force which is considered to be the first mode) and a second area in the plan
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`view in a second mode (Paragraph [0141 — 0142] — teaches that there is a pressing
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`force which is considered to be the second mode) in which the external force is bigger
`
`than 0 MPa (Paragraph [0141 - 0142] — teaches that the curl of the flexible substrate
`
`preferentially varies).
`
`With regards to Claim 4, Shim discloses: wherein the second area is larger than
`
`the first area (Paragraph [0141 — 0142] — teaches that the curl in the flexible substrate
`
`preferentially varies, therefore it is obvious that it can be larger).
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 6
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`With regards to Claim 5, Igeta discloses: wherein an upper surface area of the
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`dielectric layer (FIGS 5 & 6, 42 & 43) in the first mode (FIG 5, the not pressed mode) is
`
`substantially the same as another upper surface area of the dielectric layer (FIGS 5 & 6,
`
`42 & 43) in the second mode (FIG 6, pressed mode).
`
`With regards to Claim 6, Shim discloses: wherein the area in the plan view of
`
`the dielectric layer (FIG 6, 130) in the first mode is smaller than the area in the plan view
`
`of the dielectric layer in the second mode (Paragraph [0141 — 0142]).
`
`With regards to Claim 7, Shim discloses: wherein an upper surface of the base
`
`substrate comprises a plurality of concave portions and convex portions (FIG 16, shows
`
`that the base substrate and elastomer has a plurality of concave and convex portions).
`
`With regards to Claim 8, Shim discloses: wherein the base substrate further
`
`comprises a plurality of peak intervals and valley intervals (FIG 16, shows that the base
`
`substrate and elastomer has a plurality of peaks and valley intervals).
`
`With regards to Claim 9, Shim discloses: wherein a lower surface of the base
`
`substrate is flat (FIG 16, shows the lower surface of the substrate is flat).
`
`With regards to Claim 10, Shim discloses: wherein a thickness of the base
`
`substrate in the first mode is greater than a thickness of the base substrate in the
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 7
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`second mode (Paragraph [01 17] — teaches that when pressed the e|astomer is less
`
`thick).
`
`With regards to Claim 11, Shim discloses: wherein a thickness of the dielectric
`
`layer (FIG 6, 130) in an area overlapping the peak intervals is substantially the same as
`
`a thickness of the dielectric layer in the area overlapping the valley intervals (Paragraph
`
`[0096 — 0099 and 0121]).
`
`7.
`
`Claims 12 — 15, 20 — 21 and 24 — 26 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Shim et al., US Publication 2017/0083107 A1 in view of lgeta US
`
`Publication 2012/0218221 A1 in further view of Schardt et al., US Publication
`
`2016/0291729 A1.
`
`With regards to Claim 12, Shim fails to disclose: wherein the second electrode
`
`comprises a piezo- resistance material.
`
`Schardt discloses: wherein the second electrode comprises a piezo- resistance
`
`material (Paragraph [0057 — 0058] and FIGS 11 & 12).
`
`Therefore it would have been obvious to a person having ordinary skills in the art
`
`before the effective filing date of the application to have used the teachings of wherein
`
`the second electrode comprises a piezo- resistance material in Shim’s invention as
`
`taught by Schardt’s invention.
`
`The motivation for doing this would have been in order to use a durable,
`
`elastically deformable surface based on an applied touch which increases in accuracy.
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 8
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`With regards to Claim 13, Shim discloses: wherein the first electrode (FIG 3,
`
`31) and the second electrode comprise the same material (Paragraph [0077]).
`
`With regards to Claim 14, Schardt discloses: wherein the first electrode and the
`
`second electrode are optically transparent (Paragraph [0034]).
`
`With regards to Claim 15, lgeta discloses: wherein the first electrode (31) and
`
`the second electrode (32) comprise a different material from each other (Paragraph
`
`[0029 — 0030]).
`
`With regards to Claim 20, lgeta discloses: wherein the base substrate has a
`
`first area in a plan view in a first mode in which a first external force is applied from the
`
`outside (FIG 5, shows this feature; Paragraph [0039]) and a second area in the plan
`
`view in a second mode in which a second external force greater than the first external
`
`force is applied (FIG 6, shows this feature; Paragraph [0040]).
`
`With regards to Claim 21, Shim discloses: wherein the base substrate is
`
`alternately arranged and the concave portions and convex portions further comprises
`
`peak intervals and valley intervals (FIG 10, shows this feature), wherein a height of
`
`each of peak intervals and a depth of each of valley intervals are different from each
`
`other in the first mode and the second mode (FIG 10, shows the peaks and the valleys
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 9
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`are different from each other when in the not pressed position from the pressed
`
`position).
`
`With regards to Claim 24, Shim discloses: wherein a thickness of the dielectric
`
`layer in the first mode is substantially the same as a thickness of the dielectric layer in
`
`the second mode (Paragraph [0096 — 0099 and 0121]).
`
`With regards to Claim 25, lgeta discloses: wherein an area of the upper surface
`
`of the second electrode is substantially the same in the first mode and the second mode
`
`(FIGS 5 & 6, shows this feature).
`
`With regards to Claim 26, lgeta discloses: further comprising a display layer
`
`(Paragraph [0025]) disposed between the base substrate and the sensor (Paragraph
`
`[0055]), the display layer configured to display an image (Paragraph [0055]),
`
`lgeta fails to disclose: wherein the first electrode and the second electrode are
`
`optically transparent.
`
`Schardt discloses: wherein the first electrode and the second electrode are
`
`optically transparent (Paragraph [0034]).
`
`8.
`
`Claims 16, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Shim et al., US Publication 2017/0083107 A1 in view of lgeta US Publication
`
`2012/0218221 A1 in further view of Schardt et al., US Publication 2016/0291729 A1 in
`
`further view of Kadono US Publication 2011/0006787 A1.
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 10
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`With regards to Claim 16, Shim fails to disclose: wherein a thickness of the first
`
`electrode changes when the area in the plan view of the base substrate changes.
`
`Kadono discloses: wherein a thickness of the first electrode changes when the
`
`area in the plan view of the base substrate changes (Paragraph [0045 — 0047]).
`
`Therefore it would have been obvious to a person having ordinary skills in the art
`
`before the effective filing date of the application to have used the teachings of wherein a
`
`thickness of the first electrode changes when the area in the plan view of the base
`
`substrate changes in Shim’s invention as taught by Kadono’s invention.
`
`The motivation for doing this would have been in order to for the user to have a
`
`pleasant, natural feeling or comfortable operating feeling.
`
`With regards to Claim 22, Kadono discloses: wherein a thickness variation of
`
`the first electrode caused by the first external force (FIG 1A, shows this feature) is
`
`different from a thickness variation of the second external force caused by the second
`
`external force (FIG 1 B, shows this feature).
`
`With regards to Claim 23, Kadono discloses: wherein the sensor is configured
`
`to sense an elongation degree of the base substrate (Paragraph [0046 and 0058 —
`
`0059»
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 11
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`9.
`
`Claims 17 — 19 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shim et al., US Publication 2017/0083107 A1 in view of Schardt et al., US Publication
`
`2016/0291729 A1.
`
`With regards to Claim 17, Shim discloses: An electronic device (Title and
`
`Abstract), comprising:
`
`a base substrate (FIG 6, 110 & 120 and FIG 16, substrate and elastomer) having
`
`elasticity and comprising an upper surface, wherein the upper surface further comprises
`
`a plurality of concave portions and convex portions (FIG 16, shows that the base
`
`substrate and elastomer has a plurality of concave and convex portions on the upper
`
`surface); and
`
`a sensor (FIG 6, 110) disposed on the upper surface (FIG 6, 110 & 120) and
`
`configured to sense a touch applied from the outside (Paragraph [0066 — 0067]);
`
`wherein the sensor (FIG 6, 110) comprises a first electrode (FIG 6, 111)
`
`disposed on the upper surface (FIGS 6 and 16 shows this feature);
`
`a second electrode (FIG 6, 121) disposed on the first electrode (FIG 6, 111) and
`
`comprising a piezo-resistance material; and
`
`a dielectric layer (FIG 6, 130) having elasticity and disposed between the first
`
`electrode (111) and the second electrode (121 — see FIGS 6 and 16).
`
`Shim fails to disclose: a second electrode disposed on the first electrode and
`
`comprising a piezo-resistance material;
`
`Schardt discloses: wherein the second electrode comprises a piezo- resistance
`
`material (Paragraph [0057 — 0058] and FIGS 11 & 12).
`
`

`

`Application/Control Number: 15/862,483
`Art Unit: 2625
`
`Page 12
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`Therefore it would have been obvious to a person having ordinary skills in the art
`
`before the effective filing date of the application to have used the teachings of wherein
`
`the second electrode comprises a piezo- resistance material in Shim’s invention as
`
`taught by Schardt’s invention.
`
`The motivation for doing this would have been in order to use a durable,
`
`elastically deformable surface based on an applied touch which increases in accuracy.
`
`With regards to Claim 18, Schardt discloses: wherein the sensor is configured
`
`to sense a location and an intensity of the touch (Paragraph [0132]).
`
`With regards to Claim 19, Schardt discloses: wherein a resistance of the
`
`second electrode is inversely proportional to the intensity of the touch (FIG 11, shows
`
`this feature and Paragraph [0051 — 0052]).
`
`Conclusion
`
`10.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CAROLYN R EDWARDS whose telephone number is
`
`(571)270-7136. The examiner can normally be reached on Monday - Friday: 5:30am -
`
`2:00pm (EST).
`
`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.
`
`