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
`
`15/366,430
`
`12/01/2016
`
`TSUTOMU MUKAI
`
`PANDP0171USB
`
`6113
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19mm
`CLEVELAND, OHIO 441 15
`UNITED STATES OF AMERICA
`
`VIEAUX GARY C
`
`MW
`
`2662
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`05/1 1/2018
`
`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):
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`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
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`

`

`Off/09 A0170” Summary
`
`Application No.
`15/366,430
`Examiner
`GARY C VIEAUX
`
`Applicant(s)
`MUKAI et al.
`Art Unit
`2662
`
`AIA 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 4/6/2018.
`[: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.
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`2b)
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`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)
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`Claim(s) fl 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.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. 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.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:
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`a). All
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`b)I:J Some”
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`c)C] None of the:
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`1..
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`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`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)
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`1)
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`Notice of References Cited (PTO-892)
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`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-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180501
`
`

`

`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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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.
`
`Continued Examination Under 37 CFR 1. 1 14
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`10
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 6,
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`2018 has been entered.
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`Information Disclosure Statement
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`15
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`The information disclosure statement (IDS) submitted on November 7, 2017 is in
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`compliance with the provisions of 37 CFR 1.97 and is being considered by the
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`Examiner.
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`Amendment
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`20
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`The Amendment, filed April 6, 2018, has been received and made of record.
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`In
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`response to the Final Office Action dated October 13, 2017, figure 1 and claim 1 have
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`been amended. Claims 5-8 have been newly added.
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 3
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`Response to Arguments
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`Regarding the obiection to the drawings, Applicant has amended figure 1 to cure
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`the previously identified misspelling. The objection to the figure 1
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`is withdrawn.
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`Regarding the obiection to claim 1, Applicant has amended the claim to address
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`the previously identified issue. The objection to claim 1
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`is withdrawn.
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`Regarding the 35 U.S.C. 102 reiection of claims 1 and 2, Applicant states
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`that “During the interview, proposed amendments to claim 1 were discussed. The
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`Examiner agreed that amending claim 1 to recite that the still image generated from a
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`single frame in the second mode is greater than the image quality of a still image
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`10
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`generated from a single frame in the first mode should overcome the current rejection.
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`Claim 1 has been amended herein as discussed’ (Remarks, p. 5). The Examiner agrees
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`that “During the interview, proposed amendments to claim 1 were discussed. " However,
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`the exact wording of the amendment to claim 1 that was presented and agreed was not
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`“that the still image generated from a single frame in the second mode is greater than
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`15
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`the image quality of a still image generated from a single frame in the first mode " as
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`stated by Applicant. Please see the Applicant Initiated Interview Summary dated
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`December 12, 2017 in which the proposed amended language is directed to “the still
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`image generated without compositing processing’; language which would exclude an
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`interpretation involving High Dynamic Range (HDR) imaging. The currently amended
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`20
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`claim language as provided in the amendment dated April 6, 2018, does not limit the
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`interpretation, as the exposure value of a single HDR frame in the second mode as
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`taught by Sugie may be more appropriate, resulting in greater image quality than an
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`image in the first video mode at a different exposure value.
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`It is additionally noted that
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 4
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`the apparatus disclosed in the specification has not been found to My generate a
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`single frame of captured video taken during the first video mode.
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`Applicant also argues that “Sugie does not appear to disclose displaying the
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`parameters at times other than when the parameters are set by the user.” (Remarks, p.
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`6). Sugie teaches that the controller “ causes the display unit to display an indication of
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`the second video mode at least one of during setting to the second video mode, during
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`recording in the second video mode, and during displaying a video recorded in the
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`second video mode” in that Sugie provides that, in addition to various parameters
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`displayed on the GUI can be selected and set by the user, the shooting mode can also
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`10
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`be set ([0054]). Therefore, the display unit is caused to display an indication of the
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`second video mode during setting to the second video mode.
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`Finally, Applicant also states that “Sugies also does not disclose —as set forth in
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`amended claim 1—that “the second video capture setting includes a plurality of values
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`which are predetermined regardless of luminance of an object.” (Remarks, p. 7). The
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`15
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`Examiner respectfully disagrees as Sugie is found to disclose the values of each setting
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`employed in the HDR video mode being predetermined number values, Le, a plurality
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`of values which are predetermined regardless of luminance of an object (fig. 4B, e.g.,
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`values associated with gain, aperture, and accumulation).
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`In light of the above responses and in light of the claims as currently written, the
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`20
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`Sugie reference can still be interpreted to apply. Please see the 35 U.S.C. 102
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`rejection, m.
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`Regarding the 35 U.S.C. 103 reiection of claims 3 and 4, Applicant states the
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`remaining claims depend directly or indirectly from claim 1 and are not obvious over the
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 5
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`applied references for at least the reasons argued in relation to claim 1.
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`In light of the
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`above responses to claim 1, the Examiner stands behind the teachings of the art, as
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`currently applied to the claims.
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`5
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`10
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`15
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`20
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`25
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`Claim Objections
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`Claim 8 is objected to because of the following informalities:
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`Line 4 recites “the second video captured setting” please amend to recite “the
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`second video gm setting” in order to conform to the existing basis. Appropriate
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`correction is required.
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`Claim Rejections - 35 USC § 1 12(a)
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) IN GENERAL—The specification shall contain a written description of the
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
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`Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s)
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`contains subject matter which was not described in the specification in such a way as to
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`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 6
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`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
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`the claimed invention.
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`Regarding claim 1, the claim, from which claims 2-8 depend and inherit all
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`limitations therefrom, recites “ the second video capture setting includes a plurality of
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`values which are predetermined regardless of luminance of an object.” The disclosure
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`has not been found to support or found to include this material.
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`It is noted that Applicant
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`states “[s]upport for the amendments to claim 1 can be found, e. g., in paragraph 0046
`
`and Figure 5B of the specification” (Remarks, p. 5). Although a setting menu is
`
`discussed in paragraph [0046], no reference to luminance of an object has not been
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`10
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`found. Even if this could be interpreted as a negative limitation, any negative limitation
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`or exclusionary proviso must have basis in the original disclosure. See In re Johnson,
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`558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977).
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`In light of the above, the
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`claims fail to comply with the written description requirement because the claims
`
`contains subject matter which was not described in the specification in such a way as to
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`15
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`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
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`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
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`the claimed invention.
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`20
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`25
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`Claim Rejections - 35 USC § 112(b)
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
`
`Page 7
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`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`Regarding claim 1, the claim recites the terms “more suitable” and “image quality
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`of a still image generated from a single frame of a captured video taken during video
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`10
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`capture in the second video mode is greater than image quality of a still image
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`generated from a single frame of a captured video taken during video capture in the first
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`video mode.” However, “more suitable” is not defined by the claim and therefore what
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`one skilled in the art considers “more suitable” could vary greatly from what another
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`skilled in the art considers “more suitable.” Further, “image quality’ is also not defined
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`15
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`by the claim and therefore what one skilled in the art considers a still image of
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`“greater. . .image quality’ than that of another still image could vary greatly from what
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`another skilled in the art considers “greater. . .image quality.” The video capture settings
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`are not defined by definite terms (e.g., higher resolution, faster frame rate) that could
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`move these terms past subjective determinations. Claims 2-8 depend from claim 1 and
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`20
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`are also not found to provide any clear and definitively stated settings that are directly
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`recited as being “more suitable” or recite providing greater image quality of a still image.
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`In light of the above, the claims are indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 8
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`Regarding claims 1 and 2, claim 1 recites “during recording” in line 24 and “a
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`video recorded” in line 25, and claim 2 recites “ wherein the recording in the second
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`video mode is performed from start to end of a video recording.” This apparatus claim
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`is not found to distinctly recite apparatus structure for performing the recited
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`functionality of recording.
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`In light of this lack of recited structure placing those skilled in
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`the art on notice regarding the metes and bounds of the apparatus, the claim is
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`indefinite for failing to particularly point out and distinctly claim the subject matter which
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`the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
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`Regarding claims 6-8, independent claim 1 recites “a video capture setting” (e.g.,
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`10
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`line 7), as well as “a first video capture setting” (lines 12-13) and “a second video
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`capture setting” (lines 14-15). Each of these instance reference a singular setting.
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`However, dependent claims 6-8, recite instances in which the singular setting “includes”
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`or “further includes” an additional setting or that the setting “includes” a setting instead
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`of “ the video capture setting As” (e.g., a value of a frame rate; Le, a singular setting,
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`15
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`instead of implied additional separate and distinct settings such as resolution). It is
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`unclear how a singular setting (e.g., frame rate) can include an additional setting (e.g.,
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`resolution).
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`It is noted that the disclosure is found to support the modes having a
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`number of video capture settings (see fig. 4 for examples), but no clear support is found
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`for a setting being both a setting (e.g., frame rate) and another setting (e.g., resolution).
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`20
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`In light of the above, the claim is indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
`
`Page 9
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`For the purposes of examination on the merits, the claims will be interpreted as
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`best understood by the Examiner in light of the disclosure, wherein the first and second
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`capture settings are settings of the same type/category (e.g., resolution) with that
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`type/category having differing set values (e.g., VGA vs 4K) for each mode. This
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`interpretation however, does not fully clarify or cure the indefinite status of the claims as
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`currently written. Applicant is respectfully requested to clarify the language relating to
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`the terms “setting” and “includes” to conform to the teachings provided by the
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`disclosure.
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`25
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`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 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
`application for 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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`Claims 1, 2, 6 and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being
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`anticipated by U.S. Patent Publication No. 2015/0015774 to Sugie.
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`Regarding claim 1, Sugie teaches an imaging device comprising an imaging unit
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`(fig. 1, element 105) that captures image data from the optical information input through
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`an optical system unit including at least one lens (fig. 1, element 101), an image
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`processor that performs a predetermined process to the image data generated by the
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 10
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`imaging unit (fig. 1, element 121), a controller (fig. 1, element 131) that controls ([0043])
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`at least one of the optical system unit, the imaging unit ([0033]), and the image
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`processor based on a video capture setting relating to video capturing so as to generate
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`video data ([0027-36]), a display unit (fig. 1, element 153; [0044]), wherein the controller
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`has at least a first video mode and a second video mode, each of which generates the
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`video data ([0054], normal video mode or HDR video mode, respectively), whereby, in
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`the first video mode (e.g., fig. 3, S102, normal video mode), video is captured in
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`accordance with a first video capture setting (fig. 3, step 8103), in the second video
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`mode (e.g., fig. 3, 81 12, HDR video mode), video is captured in accordance with a
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`10
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`second video capture setting (fig. 3, steps S119 and S120), and the second video
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`capture setting being more suitable for recording a still image than the first video
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`capture setting (fig. 4, the settings associated with an image captured in HDR video
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`mode can be more suitable), and wherein the controller in the second video mode
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`automatically sets the video capture setting to the second video capture setting so that
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`15
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`image quality of a still image generated from a single frame of a captured video taken
`
`during video capture in the second video mode is greater than image quality of a still
`
`image generated from a single frame of a captured video taken during video capture in
`
`the first video mode (fig. 4, the settings associated with a frame of captured video in
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`HDR video mode can have greater image quality than any of the comparable settings
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`20
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`employed in normal mode) and causes the display unit to display an indication of the
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`second video mode at least one of during setting to the second video mode ([0050],
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`[0054], [0056] and [0090], video mode selected and set via GUI, which would inherently
`
`require some visual cue regarding the selection and setting of the mode), during
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 11
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`recording in the second video mode, and during displaying a video recorded in the
`
`second video mode, and the second video capture setting includes a plurality of values
`
`which are predetermined regardless of luminance of an object (fig. 4B, e.g., values
`
`associated with gain, aperture, accumulation).
`
`Regarding claim 2, Sugie teaches all of the limitations of claim 2 (see the 35
`
`U.S.C. 102 rejection to claim 1, m) including teaching wherein the recording in the
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`second video mode is performed from start to end of a video recording (774 - fig. 3, e.g.
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`8100, START, 8114-8123 loop, 8124 END).
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`Regarding claim 6, Sugie teach all the limitations of claim 6 (see the 35 U.S.C.
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`10
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`102 rejection of claim 1, m) including teaching wherein when the second video
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`mode is set, the controller automatically sets the video capture setting to the second
`
`video capture setting ([0056]), each of the first video capture setting and the second
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`video capture setting includes a value of a frame rate (Sugie does not teach altering the
`
`frame rate, therefore the video capture setting includes an inherent frame rate) and a
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`15
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`value of a resolution (Sugie does not teach altering the resolution, therefore the video
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`capture setting includes an inherent resolution), the value of the frame rate in the first
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`video mode is set to be equal to (frame rate does not change) or lower than the value of
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`the frame rate in the second video mode, and the second video capture setting includes
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`the highest value of the resolution in the video capture setting and the highest value of
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`20
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`the frame rate in the video capture setting (because frame rate and resolution do not
`
`change, they can be interpreted as the highest values).
`
`Regarding claim 7, Sugie teach all the limitations of claim 7 (see the 35 U.S.C.
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`102 rejection of claim 1, supra) including teaching wherein, when the second video
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`

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`Application/Control Number: 15/366,430
`Art Unit: 2662
`
`Page 12
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`mode is set, the controller automatically sets the video capture setting to the second
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`video capture setting ([0056]), each of the first video capture setting and the second
`
`video captured setting includes a value of frame rate (Sugie does not teach altering the
`
`frame rate, therefore the video capture setting includes an inherent frame rate), and the
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`value of the frame rate in the second video mode is the highest value in the video
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`capture setting (because frame rate dOes not change, it can be interpreted as the
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`highest value).
`
`Claims 1, 2 and 5-7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being
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`10
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`anticipated by U.S. Patent Publication No. 2012/0212663 to Takita.
`
`Regarding claim 1, Takita teaches an imaging device comprising an imaging unit
`
`(fig. 1, element 103; [0027]) that captures image data from optical information input
`
`through an optical system unit including at least one lens (fig. 1, element 100; [0027]),
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`an image processor that performs a predetermined process to the image data
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`15
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`generated by the imaging unit (fig. 1, element 106; [0029]), a controller (fig. 1, element
`
`109; [0030]) that controls at least one of the optical system unit, the imaging unit
`
`([0030]), and the image processor based on a video capture setting relating to video
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`capturing so as to generate video data, and a display unit (fig. 1, element 108; [0030]),
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`wherein the controller has at least a first video mode ([0030], normal) and a second
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`20
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`video mode ([0030], high speed), each of which is configured to generate the video
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`data, whereby, in the first video mode, video is captured in accordance with a first video
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`capture setting ([0052], normal recording mode, e.g., F4.0), in the second video mode,
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`video is captured in accordance with a second video capture setting (fig. 3; [0052] high
`
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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 13
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`speed recording mode, F2.8), and the second video capture setting being more suitable
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`for recording a still image than the first video capture setting (e.g., more light let in via
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`aperture), and wherein the controller in the second video mode automatically sets the
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`video capture setting to the second video capture setting so that image quality of a still
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`image generated from a single frame of a captured video taken during video capture in
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`the second video mode is greater than image quality of a still image generated from a
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`single frame of a captured video taken during video capture in the first video mode (e.g.,
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`[0052], brighter images), and causes the display unit to display an indication of the
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`second video mode at least one of during setting to the second video mode ([0030],
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`[0049], operation of menu screen), during recording in the second video mode, and
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`during displaying a video recorded in the second video mode, the second video capture
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`setting includes a plurality of values which are predetermined regardless of luminance
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`of an object (fig. 3, F-numbers F30, F4, F2.8 are a plurality of values of predetermined
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`aperture sizes that do not relate to a luminance of an object, but to desired amount of
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`15
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`light allowed to reach the image sensor).
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`Regarding claim 2, Takita teaches all of the limitations of claim 2 (see the 35
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`U.S.C. 103 rejection to claim 1,s_urfl) including teaching wherein the recording in the
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`second video mode is performed from start to end of a video recording ([0048-49], an
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`eventual end is inherent to a recording).
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`20
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`Regarding claim 5, Takita teach all the limitations of claim 5 (see the 35 U.S.C.
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`102 rejection of claim 1, m) including teaching the imaging device further comprising
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`an operation system that sets a video mode to the second video mode with a
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`single operation, wherein, when the second video mode is set with the operation
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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 14
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`system, the controller automatically sets the video capture setting to the second video
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`capture setting ([0049-52], a user instruction to switch to enable; this could also be
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`accomplished via use of the high-speed recording start button, [0030]).
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`Regarding claim 6, Takita teach all the limitations of claim 6 (see the 35 U.S.C.
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`102 rejection of claim 1, m) including teaching wherein when the second video mode
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`is set, the controller automatically sets the video capture setting to the second video
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`capture setting ([0049-52], a setting to enable results in high speed settings when high
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`speed recording is started), each of the first video capture setting and the second video
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`capture setting includes a value of a frame rate ([0046]) and a value of a resolution
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`(native resolution of sensor), the value of the frame rate in the first video mode is set to
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`be equal to or lower than the value of the frame rate in the second video mode ([0046]),
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`and the second video capture setting includes the highest value of the resolution in the
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`video capture setting (if only one resolution, this is always the highest resolution
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`available) and the highest value of the frame rate in the video capture setting ([0046]).
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`15
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`Regarding claim 7, Takita teach all the limitations of claim 7 (see the 35 U.S.C.
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`102 rejection of claim 1, m) including teaching wherein when the second video mode
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`is set, the controller automatically sets the video capture setting to the second video
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`capture setting ([0049-52], a setting to enable results in high speed settings when high
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`speed recording is started), each of the first video capture setting and the second video
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`captured setting includes a value of frame rate ([0046]), and the value of the frame rate
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`in the second video mode is the highest value in the video capture setting (fig. 3;
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`[0046D.
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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 15
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`Claim Rejections - 35 USC § 103
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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.
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`Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Sugie in view of U.S. Patent Publication No. 2010/0231735 to Burian et al (hereinafter
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`“Burian”).
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`Regarding claim 3, Sugie teaches all of the limitations of claim 3 (see the 35
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`U.S.C. 103 rejection to claim 1, m) except for being found by the Examiner to
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`expressly disclose wherein the controller displays a display indicating the second video
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`mode using a message on the display unit during setting to the second video mode.
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`10
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`15
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`Nevertheless, Burian is found to teach providing an indication relating to setting
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`20
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`of a mode relating to still image capture concurrent with video recording ([0039]-[0042]),
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`such as via selection of a setting option embedded in an options menu (fig. 2a; [0042]),
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`as well as found to teach providing messages when an error arises ([0039]-[0042]). In
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`light of these teaching of Burian, it would have been obvious to one of ordinary skill in
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`the art before the effective date of the claimed invention to have employed a message
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`25
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`as an indication relating to the setting of a mode as a way to express functionality being
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`chosen by way of language instead of a potentially confusing or unfamiliar icon. "A
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`person of ordinary skill has good reason to pursue the known options within his or her
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`Application/Control Number: 15/366,430
`Art Unit: 2662
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`Page 16
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`technical grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense." KSFi International Co. v. Teleflex
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`Inc, 550 U.S. 398, 82 USPQ2d 1385 (2007).
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`Regarding claim 4, Sugie teach all the limitations of claim 4 (see the 35 U.S.C.
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`102 rejection of claim 1, m) except for being found by the Examiner to expressly
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`disclose wherein the controller displays a display indicating the second video mode
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`using an icon on the display unit during recording in the second video mode or during
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`reproducing a video recorded in the second video mode.
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`Nevertheless, Burian teaches a controller that displays a display indicating a
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`10
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`video mode using an icon on the display unit during recording in the video mode
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`([0039]-[0040]). It would have been obvious to one of ordinary skill in the art before the
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`effective date of the claimed invention to have applied the teachings of Burian with the
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`imaging device as taught by Sugie, resulting in a display of an indication of a video
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`mode, so that a user can easily verify that the desired video setting is in fact the setting
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`15
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`of the current video capture session. "A person of ordinary skill has good reason
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`to pursue the known options within his or her technical grasp. If this leads to the
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`anticipated success, it is likely the product not of innovation but of ordinary skill and
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`common sense" KSFl International Co. v. Teleflex Inc, 550 U.S. 398, 82 USPQ2d 1385
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`(2007)
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`20
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`Claims 3 and 4