UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`15/527,367
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`05/17/2017
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`Tetsuya IDA
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`57590
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`5152
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`08/09/2018 —PEARNE & GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`LEE, CHEUKFAN
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`2676
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/09/2018
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 15/527,367 IDA ET AL.
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventorto File)
`
`
`StatusYes CHEUKFAN LEE 2676
`-- The MAILING DA TE of this communication appears on the cover sheet with 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).
`after SIX (6) MONTHS from the mailing date of this communication.
`If 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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on Decenwe—rMMm.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`1) E Notice of References Cited (PTO-892)
`3) I] Interview Summary (PTO-413)
`.
`.
`Paper No(s)/Mai| Date.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/Osb)
`Paper No(s)/Mai| Date 05/17/17 at 12/14/17. 4) D Other: —-
`
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180623
`
`Disposition of Claims*
`5)|XI Claim(s) M is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s M is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
`
`
`, or send an inquiry to PF"l-lfeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on May 17, 2017is/are: a)IXI accepted or b)I:I 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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:| Some” c)I:I None of the:
`a)le All
`LIZ! Certified copies of the priority documents have been received.
`2.I:| Certified copies of the priority documents have been received in Application No.
`3.I:I 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.
`
`Attach ment(s)
`
`
`
`

`

`Application/Control Number: 15/527,367
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`Page 2
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`Art Unit: 2676
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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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`1.
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`Claims 1-11 are pending. Claim 1
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`is independent.
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`CLAIM INTERPRETA TION
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`2.
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`The following is a quotation of 35 U.S.C. 112(f):
`
`(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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`3.
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`The claims in this application are given their broadest reasonable interpretation
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`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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`

`

`Application/Control Number: 15/527,367
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`Page 3
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`Art Unit: 2676
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`As explained in MPEP § 2181, subsection I, 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)
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`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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`(B)
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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.,
`
`“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
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`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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`

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`Application/Control Number: 15/527,367
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`Page 4
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`Art Unit: 2676
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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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`4.
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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
`
`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: holding member in claim 11.
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.
`
`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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`

`

`Application/Control Number: 15/527,367
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`Page 5
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`Art Unit: 2676
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`The holding member is identified as element 15 in Fig. 1 and is described in
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`the specification, paragraph 0042 of Publication No. 2017/0331994 A1.
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`|f 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
`
`claim |imitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
`
`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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`35 U.S.C. 112(b) Rejection
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`5.
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`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:
`
`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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`6.
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`Claims 1-11 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.
`
`

`

`Application/Control Number: 15/527,367
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`Page 6
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`Art Unit: 2676
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`In claim 1, the vague language“
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`applied in a large application amount to have
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`a thickness" does not appear to further limit the scope of protection since any adhesive
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`layer connecting two bodies has a finite thickness and the relative term “large” does not
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`allow one of ordinary skill in the art to determine any numerical range for the application
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`amount that would further limit the scope of protection. Thus, claim 1
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`is unclear.
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`Claims 2-11 are rejected as being dependent on rejected claim 1.
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`Claim 4, it is unclear as in what “state of a surface” means.
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`35 U.S.C. 102 Rejection
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`7.
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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 otherwise available to the public before the effective filing date of the claimed
`invention.
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`8.
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`Claims 1-3, 5-7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Webster et al. (US 2006/0290802 A1). Webster et al. was cited in the
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`IDS filed 12/14/2017.
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`Webster et al. discloses an imaging apparatus (Fig. 2, paragraphs 0014-0024),
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`the apparatus comprising:
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`a circuit board (base 401, top pad 4014, bottom pad 4015, and printed circuit
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`board PCB) (paragraphs 0018 and 0019);
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`

`

`Application/Control Number: 15/527,367
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`Page 7
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`Art Unit: 2676
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`a solid-state image sensing device (image sensor chip 402) disposed on an
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`upper surface (4011) of the circuit board (Fig. 2, paragraph 0019);
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`a lens (302) disposed above and spaced from the solid-state image sensing
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`device (402); and
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`a lens barrel (301 and 20) disposed on the upper surface (4011) of the circuit
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`board (base 401, top pad 4014, bottom pad 4015, and PCB) and that houses the lens
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`(302),
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`wherein the lens barrel (301 and 20) has a leg section (203) which is at least a
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`part of the lens barrel (301 and 20) other than a part of the lens barrel housing the lens,
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`and the leg section (203) is connected to the circuit board (base 401, top pad 4014,
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`bottom pad 4015, and PCB) with an adhesive (50) applied in a large application amount
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`to have a thickness.
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`Regarding claim 2, the solid-state image sensing device (402) is connected to
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`the circuit board (base 401, top pad 4014, bottom pad 4015, and PCB) by wire bonding
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`(paragraph 0020).
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`Regarding claim 3, a region around the solid-state image sensing device (402)
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`including the wire bonding is sealed with resin (silicone, epoxy, acrylic, or polyamide).
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`Regarding claims 5-7, the leg section (203) of the lens barrel (301 and 20) has a
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`level difference in a tip portion thereof (paragraph 0024), wherein the level difference is
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`a recess part as claimed in claim 6 ("guiding hole" is formed in the "rear end 203" of the
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`"lens holder 20", the "guiding hole" being a recess), wherein the level difference is a
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`

`

`Application/Control Number: 15/527,367
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`Page 8
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`Art Unit: 2676
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`projection part as claimed in claim 7 (with the "guiding holes” formed in the “rear end
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`203” of the “lens holder 20”, the part or parts of the “rear end 203” is a projection part).
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`Regarding claim 9/1, Webster et al. further discloses a glass plate (405) disposed
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`on a light receiving surface of the solid-state image sensing device () (Fig. 2, paragraph
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`0022)
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`9.
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`Claims 1, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Chan (US 2008/0246845 A1). Chan was cited in the IDS filed 12/14/2017.
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`Chan discloses an imaging apparatus (Fig. 1, paragraphs 0018-0027), the
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`apparatus comprising:
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`a circuit board (50) (paragraph 0024);
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`a solid-state image sensing device (image sensor chip 30) disposed on an upper
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`surface of the circuit board (50) (Fig. 1, paragraph 0024);
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`a lens (12) disposed above and spaced from the solid-state image sensing
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`device (30); and
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`a lens barrel (11 and 20) disposed on the upper surface of the circuit board (50)
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`and that houses the lens (12),
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`wherein the lens barrel (11 and 20) has a leg section (24) which is at least a part
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`of the lens barrel (11 and 20) other than a part of the lens barrel housing the lens (12),
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`and the leg section (24) is connected to the circuit board (50) with an adhesive (70)
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`applied in a large application amount to have a thickness.
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`

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`Application/Control Number: 15/527,367
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`Page 9
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`Art Unit: 2676
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`Regarding claims 9 and 10, Chan further discloses a glass plate (140) disposed
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`on a light receiving surface of the solid-state image sensing device, wherein the glass
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`plate is a glass plate that blocks infrared light (Fig. 4, paragraph 0031 ).
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`10.
`
`Claim 1
`
`is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US
`
`2008/0042333 A1). Kim was cited in the IDS filed 05/17/2017.
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`Chan discloses an imaging apparatus (Fig. 5, paragraphs 0062-0067), the
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`apparatus comprising:
`
`a circuit board (111);
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`a solid-state image sensing device (image sensor 112) disposed on an upper
`
`surface of the circuit board (111);
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`a lens (L) disposed above and spaced from the solid-state image sensing device
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`(112); and
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`a lens barrel (102) disposed on the upper surface of the circuit board (50) and
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`that houses the lens (L),
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`wherein the lens barrel (102) has a leg section (101) which is at least a part of
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`the lens barrel (102) other than a part of the lens barrel housing the lens, and the leg
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`section (101) is connected to the circuit board (111) with an adhesive (104) applied in a
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`large application amount to have a thickness.
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`

`

`Application/Control Number: 15/527,367
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`Page 10
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`Art Unit: 2676
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`35 U.S.C. 103 Rejection
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`11.
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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:
`
`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.
`
`12.
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`Claim 4, insofar as the claim is understood, is/are rejected under 35 U.S.C. 103
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`as being unpatentable over Webster et al. (US 2006/0290802 A1).
`
`Regarding claim 4/1, Webster et al. does not explicitly disclose that the
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`application amount of the adhesive is partially changed in accordance with a state of a
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`surface of the circuit board where the leg section of the lens barrel is connected.
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`However, one of ordinary skill in the art would have realized that the circuit board
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`(including base 401) of Webster et al. comprises protrusions within its contact area
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`(upper surface 4011 of 401 in Fig. 2), and that the application of the adhesive must be
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`non-uniform.
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`In order to avoid excessive leakage or gaps of the adhesive between the
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`lens barrel and the circuit board, it would have been obvious to one of ordinary skill in
`
`the art to match the thickness of the adhesive layer to the topology of the contact area
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`between the circuit board and the lens barrel.
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`Therefore, it would have been obvious to one of ordinary skill in the art before the
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`effective filing date of the claimed invention to apply the adhesive in a manner such that
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`the application amount of the adhesive is partially changed in accordance with a state of
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`

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`Application/Control Number: 15/527,367
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`Page 11
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`Art Unit: 2676
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`a surface of the circuit board where the leg section (203) of the lens barrel (301 and 20)
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`is connected.
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`13.
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`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Webster et
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`al. (US 2006/0290802 A1) in view of Watanabe et al. (US 2005/0271375 A1 ).
`
`Regarding claim 8, Webster et al. discussed for claim 1 above does not disclose
`
`that the circuit board (including 401, 4014, 4015, and the PCB) has a mark indicating a
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`position where the leg section (203) of the lens barrel is connected.
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`Watanabe et al. teaches using alignment marks (3e) on a holder (3) to align a
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`lens barrel (2) and the holder (3) when combining the lens barrel (2) and the holder (3)
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`(Figs. 1, 3, and 4, paragraph 0044 and 0045).
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`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to apply the teaching of Watanabe et al. to provide a
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`mark on the circuit board to indicate a position where the leg section (203) of the lens
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`barrel is connected, in order to assist in aligning and combining the lens barrel and the
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`circuit board.
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`14.
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`Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Webster et
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`al. (US 2006/0290802 A1) in view Of Han (US 2013/0222596 A1 ).
`
`

`

`Application/Control Number: 15/527,367
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`Page 12
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`Art Unit: 2676
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`Regarding claim 11, Webster et al. discussed for claim 1 above does not disclose
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`a holding member sealing, with resin, a region surrounding and including the lens barrel
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`and a region surrounding and including the circuit board.
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`However, such a holding member is taught by Han (Figs. 1, 3, and 4, paragraph
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`0057-0060, and 0049-0051). Han teaches the molding unit (130) of resin material to
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`prevent moisture from getting into the body tube (50) where the image sensor (120) is
`
`positioned (paragraph 0050, Figs. 1-4).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to apply the teaching of Han to provide a holding
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`member sealing, with resin, a region surrounding and including the lens barrel and a
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`region surrounding and including the circuit board, in order to prevent moister from
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`getting to the components including the solid-state image sensing device (402).
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`15.
`
`The prior art or art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`Rudmann et al. (US 2017/0012069 A1)
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`Ida et al. (us 2017/0315426 A1)
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`Kume (US 2010/0321563 A1)
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`16.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CHEUKFAN LEE whose telephone number is (571 )272—
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`7407. The examiner can normally be reached on 9:30 am. to 6:00 pm, Mon-Fri.
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`

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`Application/Control Number: 15/527,367
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`Page 13
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`Art Unit: 2676
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`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Marivelisse Santiago-Cordero can be reached on (571) 272-7839. The fax
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`phone number for the organization where this application or proceeding is assigned is
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`571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`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
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/CHEUKFAN LEE/
`
`Primary Examiner, Art Unit 2676
`
`