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
`
`14/728,857
`
`06/02/2015
`
`Yuichi Hatase
`
`731156467
`
`2180
`
`Seed IP Law Group LLP/Panason1e
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`WU” PAMELA F
`
`PAPER NUMBER
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`ART UNIT
`
`3795
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`03/20/2019
`
`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`14/728,857
`Examiner
`PAMELA F WU
`
`Applicant(s)
`Hatase et al.
`Art Unit
`3795
`
`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
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`1). Responsive to communication(s) filed on 11/26/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`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.
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`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.
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`Disposition of Claims*
`5)
`Claim(s)
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`1,4—7 and 11—12 is/are pending in the application.
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`5a) Of the above claim(s) 4 and 11—12 is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1 and 5—7 is/are rejected.
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`E] Claim(s) _ is/are objected to.
`
`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp 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 6/2/2015 is/are: a). accepted or b)C] 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:
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`a). All
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`b)|:] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`21:] Certified copies of the priority documents have been received in Application No.
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`3D 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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
`
`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20190314
`
`

`

`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`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.
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`Status of Claims
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`2.
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`Claims 1, 4-7, and 11-12 are pending, claims 4 and 11-12 have been withdrawn
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`from consideration, claims 2—3, 8-10, and 13-14 have been cancelled, and claims 1 and
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`5-7 are currently under consideration for patentability under 37 CFR 1.104.
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`Response to Arguments
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`3.
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`Applicant’s arguments with respect to claim 1 have been considered but are
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`moot because the arguments do not apply to any of the references being used in the
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`current rejection.
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`Claim Objections
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`4.
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`Claims 1 and 6 are objected to because of the following informalities:
`
`o
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`In claim 1, the limitation “a distal portion of the cable the shield” should read “a
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`distal portion of the cable, the shield”.
`
`.
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`In claims 1 and 6, the limitation “a resistor or a chip component” should read “a
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`resistor, or a chip component”. Please correct for the limitations recited as “the
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`resistor or the chip component”. Appropriate correction is required.
`
`

`

`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 3
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`Claim Interpretation
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`The following is a quotation of 35 U.S.C. 112(f):
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`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
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`6.
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`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
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`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
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`a claim element (also commonly referred to as a claim limitation) is limited by the
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`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is invoked.
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`As explained in MPEP § 2181, subsection 1, claim limitations that meet the
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`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means” or “step” or a term used as a substitute
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`for “means” that is a generic placeholder (also called a nonce term or a non-
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`structural term having no specific structural meaning) for performing the claimed
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`function;
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`the term “means” or “step” or the generic placeholder is modified by functional
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`language, typically, but not always linked by the transition word “for” (e.g.,
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`

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`Application/Control Number: 14/728,857
`Art Unit: 3795
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`Page 4
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`“means for”) or another linking word or phrase, such as “configured to” or “so
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`that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
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`acts to entirely perform the recited function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable
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`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites function without reciting
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`sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are
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`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`except as otherwise indicated in an Office action. Conversely, claim limitations in this
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`application that do not use the word “means” (or “step”) are not being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
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`indicated in an Office action.
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`

`

`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 5
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`7.
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`This application includes one or more claim limitations that do not use the word
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`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
`
`that is coupled with functional language without reciting sufficient structure to perform
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`the recited function and the generic placeholder is not preceded by a structural modifier.
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`Such claim limitation(s) is/are: “an imaging unit” in claim 1.
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`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to
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`cover the corresponding structure described in the specification as performing the
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`claimed function, and equivalents thereof.
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`lf applicant does not intend to have this/these limitation(s) interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the
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`claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
`
`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
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`sufficient structure to perform the claimed function so as to avoid it/them being
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`Claim Rejections - 35 USC § 102
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`8.
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`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:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or othenNise available to the public before the effective filing date of the claimed
`invention.
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`

`

`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 6
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`9.
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`Claims 1I 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Hu (US 2012/0310043).
`
`Regarding claim 1, Hu discloses an endoscope (electronic visualized catheter;
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`abstract) comprising: an imaging unit (this element is interpreted under 35 USC 112(f)
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`as a CCD, CMOS, or the like; Hu discloses a CMOS image sensor 44 in an imaging
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`part 14 of a catheter, figures 1 and 4) at a tip end portion (see figure 1) of an insertion
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`section (20, figure 1), the imaging unit including: a board (circuit board 46, figure 4); a
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`cable (16, figure 3) through which a signal is input to and output from the board
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`(transmit input signals...output signals [0039]), the cable including a shield part (38,
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`figure 3) and a core line (central conductor 34, figure 3); and a ground bar (ground
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`electrode 60G formed on the projection side portion 46D, figures 4 and 7) which
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`protrudes from a surface of the board to a height (see 46D, figure 4) and is connected to
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`a ground of the board (ground electrode 60G, figure 7), wherein at a distal portion of the
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`cable the shield part is connected to the ground of the board through the ground bar
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`(see figure 4) and the core line is directly assembled on the surface of the board (see
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`34, figure 4), wherein a height of the cable at a rear end portion of the ground bar w
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`the height of the ground bar (proximal to 46D, figure 4) is higher than a height of a
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`capacitor, a resistor or a chip component (central conductor 34 of cable 32C, figure 4)
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`on the surface of the board nearest to the ground bar, and wherein the capacitor, th_e
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`resistor or th_e chip component is located on a side of the ground bar opposite to a distal
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`end of the cable (see figure 7). The examiner broadly interpreted “a chip component” to
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`be any component on the circuit board.
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`

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`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 7
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`Regarding claim 5, Hu further discloses a cross-sectional shape of the ground
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`bar orthogonal to a longitudinal direction of the ground bar has a substantially
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`rectangular shape (see figure 4).
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`Regarding claim 7, Hu further discloses the imaging unit rotates around an axis
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`orthogonal to a longitudinal axis of the insertion section (made from a flexible resin
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`[0033]) and is provided such that the direction of a visual field is displaceable. The
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`examiner interpreted the flexible insertion section allows the imaging unit to rotate
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`around an axis orthogonal to a longitudinal axis of the insertion section.
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`Claim Rejections - 35 USC § 103
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`10.
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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:
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`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.
`
`11.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`

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`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 8
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`12.
`
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`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hu (US
`
`2012/0310043) as applied to claim 1 above, and further in view of Sekido (US
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`2014/0144697).
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`Hu discloses all of the features in the current invention as shown above for claim
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`1. Hu is silent regarding the capacitor, th_e resistor or th_e chip component and the
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`cable are assembled on the board using a plurality of conductive connection materials
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`which have different melting points.
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`Sekido teaches the use of solder with different melting points to connect the
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`aligned structure of cables (100A, figure 5a) to a printed board (30, figure 5a). The use
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`of solder with different melting points prevents remelting ([0053]) of a first/previous
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`soldering ([0053]).
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`It would have been obvious to one of ordinary skill in the art before the time of
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`filing to modify the solder (62D and 62C, figure 4) for the chip component (34 of 32C,
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`figure 4) of Hu to have a different melting point compared to the solder (62A and 62B,
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`figure 4) used for a different cable (34 of 32A, figure 4). Doing so would prevent
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`remelting of a first/previous soldering ([0053]). The modified capacitor, th_e resistor or
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`th_e chip component (62C and 62D, figure 4; Hu) and the cable (34 of 32A, figure 4; Hu)
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`are assembled on the board using a plurality of conductive connection materials which
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`have different melting points ([0053] Sekido).
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`Conclusion
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`13.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`

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`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 9
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`14.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to PAMELA F WU whose telephone number is (571 )272—
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`9851. The examiner can normally be reached on M-F: 8-4 PM.
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`Examiner interviews are available via telephone, in-person, and video
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`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.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Anhtuan Nguyen can be reached on 571-272—4963. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`

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`Application/Control Number: 14/728,857
`Art Unit: 3795
`
`Page 10
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/P.F.W./
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`Examiner, Art Unit 3795
`
`March 14, 2019
`
`/RYAN N HENDERSON/
`
`Primary Examiner, Art Unit 3795
`
`