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
`
`16/190,597
`
`11/14/2018
`
`YOSHIO OHTSUKA
`
`PANDP0313US
`
`7575
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 441 15
`
`TREHAN AKSHAY
`
`ART UNIT
`2698
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/20/2020
`
`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)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`16/190,597
`Examiner
`AKSHAY TREHAN
`
`Applicant(s)
`OHTSUKA, YOSHIO
`Art Unit
`AIA (FITF) Status
`2698
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 11—14—2018.
`CI 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)
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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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`flis/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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`[:1 Claim(ss)
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`is/are allowed.
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`Claim(ss) 1_—7 is/are rejected.
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`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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.
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`Application Papers
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`10). The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 11—14—2018 is/are: a). accepted or b)[:] 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)C] 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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`SD 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)
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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) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20200303
`
`

`

`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 2
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`NON-FINAL 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.
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`Information Disclosure Statement
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`The information disclosure statement (IDS) submitted on 11/14/2018 and
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`8/31/2019 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the
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`information disclosure statement is being considered by the examiner.
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`Specification
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`The title of the invention is not descriptive. A new title is required that is clearly
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`indicative of the invention to which the claims are directed.
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`CLAIM INTERPRETA TION
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`The following is a quotation of 35 U.S.C. 112(f):
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`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`

`

`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 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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`As explained in MPEP § 2181, subsection 1, claim limitations that meet the
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`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph:
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`(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.,
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`“means for”) or another linking word or phrase, such as “configured to” or “so
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`that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
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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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`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 4
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`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
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`acts to entirely perform the recited function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable
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`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites function without reciting
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`sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are
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`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`except as otherwise indicated in an Office action. Conversely, claim limitations in this
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`application that do not use the word “means” (or “step”) are not being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
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`indicated in an Office action.
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`This application includes one or more claim limitations that do not use the word
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`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
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`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 limitation(s), found in claims 1-7, is/are: “sound input unit, display unit and
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`setting unit and controller”.
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`The Examiner interprets the “sound input unit” to correspond to a
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`microphone 111 in Figures 1 & 2 in view of paragraph[0030].
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`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 5
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`The Examiner interprets the “display unit” to correspond to a touch panel
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`LCD or EL display 190 in Figure 1 in view of paragraph[0033].
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`The Examiner interprets the “setting unit” to correspond to operation
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`buttons 180 or touchscreen 190 for receiving user input in Figure 1 in view of
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`parag raph[0038].
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`The Examiner interprets the “controller” to correspond to a processor 130
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`in Figure 1 in view of paragraph[0034].
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`Because this/these claim |imitation(s) is/are being interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to
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`cover the corresponding structure described in the specification as performing the
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`claimed function, and equivalents thereof.
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`|f applicant does not intend to have this/these |imitation(s) interpreted under 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the
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`claim |imitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
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`claimed function); or (2) present a sufficient showing that the claim |imitation(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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`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 6
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`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 of this title, 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.
`
`Claims 1, 3-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Ohtsuka (US 2012/0281112) in view of Ito (US 2018/0367740).
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`As per INDEPENDENT CLAIM 1, Ohtsuka teaches an imaging apparatus that
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`images a subject and records moving image data (Figure 4: camera 100), the imaging
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`apparatus comprising:
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`a sound input unit that inputs a sound and generates a sound signal(Figure 4: sound
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`input 111/301);
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`a display unit that displays a level meter indicating a level of the sound signal output
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`from the sound input unit(Figures 4 & 7b: display 190 and level meter 701,
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`para[0035]);
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`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 7
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`a setting unit that receives first setting for setting ON or OFF of display of the level
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`meter on the display unit(Figure 6: S604, para[0056-0058]),
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`and a controller that controls the display of the level meter on the display unit,
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`wherein when a moving image is captured, the controller is configured such that, (1)
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`when the display of the level meter is ON in the first setting, the level meter is displayed
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`on the display unit, and (2) when the display of the level meter is OFF in the first
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`setting(Figures 4-7: controller 130, para[0025, 0054-0058]).
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`Ohtsuka not teach does not teach Applicant’s claimed feature:
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`“second setting for setting ON or OFF of a mute function, the mute function being
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`a function of recording a sound indicating silence; AND controller configured such that
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`in the second setting, (i) when the mute function is OFF, the level meter is not displayed
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`on the display unit, and (ii) when the mute function is ON, at least one of the level meter
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`and a mute display indicating that the mute function is ON is displayed on the display
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`unit”. However, these features are well known in the art and considered to be an
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`obvious design choice to implement into an audio-video recording device in further view
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`over the teachings of the prior art lt_o (See Figures 13, 15 & 24 and para[0084, 0087,
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`0089-0090, 0094, 0096, 0099]: camera 20, sound input 270, display 210, setting
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`unit 220, controller 240/245 and mute function V227 in Figure 24). Therefore, one of
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`ordinary skill in the prior art would have found it obvious to combine the additional
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`teachings of Ito into suitably modifying the teachings of Ohtsuka for the motivated
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`reason of improving a display interface notification to a user for an audio recording
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`status in the analogous art of an audio-video recording device.
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`

`

`Application/Control Number: 16/190,597
`Art Unit: 2698
`
`Page 8
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`As per claim 3, Ohtsuka in view of Ito teaches the imaging apparatus according
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`to claim 1, wherein when the mute function is ON in the second setting and the level
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`meter is displayed on the display unit, and when the display of the level meter is set to
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`OFF in the first setting, the controller causes the level meter not to be displayed on the
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`display unit(0ver prior art combination teachings of Ohtsuka in view of Ito made in
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`claim 1, this additional feature is considered to be an obvious design variation
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`which would be expected in the art since there are only a finite number of display
`
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`states or non-display states for a mute GUI indicator icon with respect to a level
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`meter GUI icon i.e. both displayed, both non-displayed, or one displayed while the
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`other is not displayed. This feature is considered to be a matter of design choice
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`and/or user preference that one of ordinary skill in the art could would have found
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`easy to implement into an audio-video recording device.).
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`As per claim 4, Ohtsuka in view of Ito teaches the imaging apparatus according
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`to claim 1, wherein the first setting is to select either one of display and non-display of
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`only the level meter on the display unit(ln view of the prior art combination of
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`Ohtsuka in view of Ito, this feature is rendered obvious in view of Ohtsuka,
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`Figures 7A-7B.).
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`As per claim 6, Ohtsuka in view of Ito teaches the imaging apparatus according
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`to claim 1, further comprising an imaging unit that images a subject and generates a
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`moving image signal, wherein the controller records moving image data based on the
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`moving image signal and the sound signal on a recording medium(ln view of the prior
`
`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
`
`Page 9
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`art combination of Ohtsuka in view of Ito, this feature is rendered obvious in view
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`of Ohtsuka, para[0041]).
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`As per INDEPENDENT CLAIM 7, which specifies an imaging apparatus that
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`images a subject and records moving image data, the imaging apparatus comprising:
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`a sound input unit that inputs a sound and generates a sound signal, a setting unit that
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`receives setting of ON or OFF of a mute function, the mute function being a function of
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`recording a sound indicating silence, a display unit that displays a mute display
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`indicating that the mute function is ON, when the mute function is ON, and a controller
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`configured to display the mute display on the display unit(These features are
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`considered obvious over the prior art combination teachings of Ohtsuka in view
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`of Ito discussed in claim 1. See lt_o: Figures 13 & 24 and para[0084, 0087, 0089-
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`0090, 0094, 0096, 0099, 0102, 0145 and 0147], camera 20, sound input 270, display
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`210, setting unit 220, controller 240/245 and mute function V227 in Figure 24).
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`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ohtsuka
`
`(US 2012/0281112) in view of Ito (US 2018/0367740) in view of Bali (US
`
`2006/0291666).
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`As per claim 2, Ohtsuka in view of Ito teaches the imaging apparatus according
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`to claim 1, Regarding the limitation: wherein if the mute function is ON in the second
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`setting and the level meter is displayed on the display unit, the controller is configured
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`such that the mute display is displayed ( 1) by superposing the mute display on the level
`
`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 10
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`meter or (2) at a position near the level meter, these additional features are considered
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`to be an obvious design choice to implement into a display interface of a recording
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`device in further view over the teachings of the prior art E (Figure 3 contrasted
`
`with Figure 4: level meter 144 and mute icon shown, para[0031-0032] to maximize
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`display real-estate. Also see para[0003, 0008 and 0037] and Figure 9). Therefore,
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`one of ordinary skill in the prior art would have found it obvious to combine the
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`additional teachings of Bali into suitably modifying the teachings of Ohtsuka in view of
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`Ito for the motivated reason of improving the spatial arrangement of GUI icons &
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`indicators on a display in the analogous art of an audio recording device.
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`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ohtsuka
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`(US 2012/0281112) in view of Ito (US 2018/0367740) in view of Otsuka (US
`
`2015/0194931).
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`As per claim 5, Ohtsuka in view of Ito teaches the imaging apparatus according
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`to claim 1. Regarding the limitation: wherein the first setting is to select either one of
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`display and non-display of predetermined information including the level meter on the
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`display unit, Examiner first notes that the term “predetermined information” is unclear
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`language. Furthermore, it is well known in the art to configure a display state of a level
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`meter with other types of on-screen display icons according to a user’s preference such
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`as evidenced by the prior art Otsuka (Display setting for microphone level meter
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`may be hidden/visible in Figures 5-6, wherein the microphone level meter 701 and
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`various other display icons “predetermined information” may be hidden or
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`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
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`Page 11
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`displayed in view of para[0038] and Figures 7A-7B). Therefore, one of ordinary skill
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`in the prior art would have found it obvious to combine the additional teachings of
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`Otsuka into suitably modifying the teachings of Ohtsuka in view Ito for the motivated
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`reason of enhancing the customizability of a display interface notification to a user for
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`an audio recording status with other desirable display icons in a display state / non-
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`display state in the analogous art of an audio-video recording device.
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`

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`Application/Control Number: 16/190,597
`Art Unit: 2698
`
`Page 12
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`Contacts
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to TWYLER LAMB HASKINS whose telephone number is
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`571 -270-5252. The examiner can normally be reached on Monday-Thursday 6:00 am -
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`4:30 pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Twyler Haskins can be reached on 571-272-7406. The fax phone number
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`for the 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 Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/AKSHAY TREHAN/
`
`Examiner, Art Unit 2698
`
`/TWYLER L HASKINS/
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`Supervisory Patent Examiner, Art Unit 2698
`
`