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
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`15/145,171
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`05/03/2016
`
`Tetsuya UNO
`
`AOYAP0166USB
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`5447
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`GREECE JAMES R
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`ART UNIT
`2872
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/22/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
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`Application No.
`15/145,171
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`Examiner
`JAM ES R GREECE
`
`Applicant(s)
`UNO etal.
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`Art Unit
`2872
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`AIA Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`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).
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`Status
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`1). Responsive to communication(s) filed on 10/15/2018.
`[: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—10 is/are pending in the application.
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`5a) Of the above claim(s)
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`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—3 and 8—9 is/are rejected.
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`Claim(s) 4—7 and 10 is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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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.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 5/3/2016 is/are: a). accepted or b)C] objected to by the Examiner.
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`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).
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`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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`2.|:] 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) C] Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190115
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 2
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`DETAILED ACTION
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`Notice 0fPre-AIA 0r AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`1.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`2.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`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 printedpublication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
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`(a)(2) the claimed invention was described in a patent issued under section 151, or in an applicationfor
`patent published or deemed published under section 122(b), in which the patent or application, as the
`case may be, names another inventor and was effectively filed before the effective filing date of the
`claimed invention.
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`3.
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`Claim(s) 1-2 and 9 is/are rejected under 35 U.S.C. 102(a1, a2) as being anticipated by
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`Nishio et al (USPAT 5,818,647).
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`Re claim 1, Nishio et al teaches a lens barrel comprising: a first frame that has an
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`approximately cylindrical shape (see at least numeral 31): a second frame which is that
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`has an approximately cylindrical shape arranged radially inward on an inner
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`circumferential side of the first frame, the second frame being movable relative to the
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 3
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`first frame (see at least numeral 24), a third frame which is that has an approximately
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`cylindrical shape arranged radially inward on an inner circumferential side of the second
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`frame, the third frame being not rotatable relative to the first frame and rotatable relative
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`to the second frame (see at least numeral 38), and a fourth frame which is that has an
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`approximately cylindrical shape arranged radially outward on an outer circumferential
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`side of the first frame and is not movable relative to the second frame in an optical axis
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`direction (see at least f1xed frame numeral 34).
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`Re claim 2, Nishio et al teaches wherein the fourth frame is formed as a single part where
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`an outer circumferential surface is formed of an external appearance surface, and an inner
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`circumferential surface is formed of a circular cylindrical surface.
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`Re claim 9, Nishio et al teaches wherein an inner circumferential surface of the fourth
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`frame is formed of a circular cylindrical surface having the approximately same diameter
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`(see at least figure 7).
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`Claim Rejections - 35 USC § 103
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`4.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be 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 obviousness
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`rejections set forth in this Office action:
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`A patent fora claimed invention may not be obtained, notwithstandingthat the claimed invention is not
`identically disclosed as set forthin 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.
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 4
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`6.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`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
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`in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobvious ne s s.
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`7.
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`Claims 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishio et
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`al (USPAT 5,818,647).
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`Re claim 3, Nishio et al do not explicitly disclose wherein the second frame and the
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`fourth frame are joined to each other not to be movable in the optical axis direction and in
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`the rotational direction.
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`It would have been obvious to one of ordinary skill
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`in the art at the time the invention
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`was made to form one immobile object, since it has been held that forming in one piece an article
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`which has formerly been formed into two pieces and put together involves only routine skill in
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`the art. Howard v. DelroilStove Works, 150 US 164 (1893).
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`Re claim 8, Nishio et al do not explicitly disclose wherein the fourth frame is made of a
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`metal.
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`It would have been obvious to one of ordinary skill
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`in the art at the time the invention
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`was made to utilize metal, since it has been held to be within the general skill of a worker in the
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`art to select a known material on the basis of its suitability for the intended use as a matter of
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 5
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`design choice.
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`In this case metal provides a solid and strong material to provide a durable
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`product.
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`Allowable Subject Matter
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`8.
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`Claims 4-7 and 10 are objected to as being dependent upon a rejected base claim, but
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`would be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims.
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`9.
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`The following is a statement of reasons for the indication of allowable subject
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`matter: The prior art taken singularly or in combination fails to anticipate or fairly suggest the
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`limitations of the independent claims,
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`in such a manner that a rejection under 35 U.S.C. 102 or
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`103 would be proper.
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`In regard to independent claim 4, the prior art taken either singly or in combination fails
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`to anticipate or fairly suggest the second frame and the fourth frame respectively have optical-
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`axis-direction restricting portions, rotational direction restricting portions, and radial direction
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`restricting portions, thereby making these three kinds of restricting portions contact each other or
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`engage with each other respectively, thereby the relative positions between the second frame and
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`the fourth frame being decided, recited together in combination with the totality of particular
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`features/limitations recited therein.
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`In regard to claim 10, the office notes the applicant’s arguments with respect to
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`dependent claim 10 in remarks dated 10/ 15/2018.
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`Examiner Notes
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`2.
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`Examiner cites particular columns and line numbers in the references as applied to the
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`claims below for the convenience of the applicant. Although the specified citations are
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 6
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`representative of the teachings in the art and are applied to the specific limitations within the
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`individual claim, other passages and figures may apply as well. It is respectfully requested that,
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`in preparing responses, the applicant fully consider the references in entirety as potentially
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`teaching all or part of the claimed invention, as well as the context of the passage as taught by
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`the prior art or disclosed by the examiner.
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`Response to Arguments
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`Applicant's arguments filed 10/15/2018 have been fully considered but they are not
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`persuasive.
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`Re claim 1 the applicant asserts:
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`Claim 1 ef the present ep—pta‘eetim meeitsiee e f-eurm frame that tree er;
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`ap-pmximeieiy eyliéindréeel Shem- arranged redéeléy flatware ef a fleet frame and he not
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`megepiereieiwe te e eeeeee frame :in en aetieei exie diteefien.
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`The flfféee Ame-t: eeeerte the)? Niehie’e fixed frame 34 eerreemnde fie the feurth
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`frame of eieim 4. The fosee Fiction else esserte feet Mia-trio‘s cam frame 34
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`EQFFEEQOMS- '10 the eeceed {rem-e E}? cieim "1.. Haw-ever, SS fiisEGUSSEd will“: the Exemmer
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`and Shawn "in Figs. 4'4 and ‘15 e? Niehée ebme, Meme-3 feted frame 3-4 menses re§etéve m
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`Néiehéee cam frame 24 in en mime! exée diremien when Niehte’e seem Eerie herrei
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`trenesitiene tram ihe retractee state fie the easement state. Thus, Niehm‘e fiéxee frame 34 i3
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`net net: maveele retails-e fie fiiehia’e cam frame 134
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`With regard to this argument the office notes that the claim language is broad and
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`therefore does not restrict interpretation beyond a small set of limitations. The office notes that
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`the applicant points to the parts moving during the phase of the lens transitioning from stored to
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`functioning. The office interpreted the language to be within operational
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`limits and not related to
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`storing and opening to the functional position. This is relevant because it appears from the cited
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`figures in the applicant’s arguments that the applicant’s cited and claimed portions also move for
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 7
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`this operation. Therefore the question is that the limitations presented in the claims may be
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`broader and potentially outside the permitted scope of the claim within the bounds of 35 USC
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`112. Furthermore the office notes that the examiner is bound to interpret the claims in light of
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`the specification. Therefore, the office must consider the function of the applicant’s device and
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`the scope of claims which may enabled by the disclosure. How that aligns and further if the
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`claims are restricted by the disclosure of the specification then the office must abide by what is
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`reasonable within the bounds of the laws and rules of procedure.
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`In this case, the office believes
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`that the prior art device reads upon the claimed invention when it is in its operational state.
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`When it transitions from stored to operational its parts relocate as does the applicant’s. The
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`applicant’s representative and the examiner discussed this limitation and how to overcome it
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`with a minor adaption of the claim language (Interview dated 9/25/2018). The office suggests
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`such an amendment would be beneficial in overcoming the rejection of record.
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`Although the claims are interpreted in light of the specification,
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`limitations from the
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`specification are not read into the claims. See In re Van Genns, 988 F.2d 1181, 26
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`USPQ2d 1057 (Fed. Cir. 1993).
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`The elements must be arranged as required by the claim, but this is not an ipsissimis
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`verbis test, i.e., identity of terminology is not required.
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`In re Bond, 910 F.2d 831, 15 USPQ2d
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`1566 (Fed. Cir. 1990). MPEP § 2131.
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`It is noted that "[t]he use of patents as references is not limited to what the patentees
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`describe as their own inventions or to the problems with which they are concerned. They are part
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`of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33,
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`216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158
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`USPQ 275, 277 (CCPA 1968))" MPEP §2123.
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`

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`Application/Control Number: 15/145,171
`Art Unit: 2872
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`Page 8
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(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 TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR l. 136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JAMES R GREECE whose telephone number is (571)272-3711.
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`The examiner can normally be reached on 8-6 M—TH.
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`Examiner interviews are available via telephone, in-person, and video conferencing using
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`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`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, Thomas K Pham can be reached on (571)272-3689. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
`
`