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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`16/920,691
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`07/04/2020
`
`Daisuke ITO
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`AOYA.25PUS01
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`A714
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`SAHLE, MAHIDERE §
`
`2872
`
`10/28/2021
`
`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
`following e-mail address(es):
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`ipdocket @rennerotto.com
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`PTOL-90A (Rev. 04/07)
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`

`

`
`
`Disposition of Claims*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)(¥} The drawing(s) filed on 04 July 2020 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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 7/4/2020.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mail Date 20211023
`
`Application No.
`Applicant(s)
`16/920,691
`ITO, Daisuke
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MAHIDERE S SAHLE
`2872
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif 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 04 July 2020.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`

`

`Application/Control Number: 16/920,691
`Art Unit: 2872
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AIA.
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`Priority
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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`Information Disclosure Statement
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`Acknowledgmentis madeofreceipt of Information Disclosure Statement(s) (PTO-1449)
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`filed 07/04/2020. Aninitialed copy is attached to this Office Action.
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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 U.S.C.
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`102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103)is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same undereitherstatus.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent 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.
`
`Claims 1-3, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Tetsuji (JP 20022440134) in view of Yasutomi et al. (USPG Pub No. 2008/0106788),
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`hereinafter “Yasutomi’.
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`Regarding claim 1, Tetsuji discloses a lens barrel (19) having one end and another end
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`(see Fig. 1), the lens barrel comprising: a first frame (69) that is movable in an optical axis
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`direction of the lens barrel, and holds an optical member(L2) (Paragraph 22); a second frame
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`

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`Application/Control Number: 16/920,691
`Art Unit: 2872
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`Page 3
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`(89) that is arranged to be relatively movable toward the other end with respectto the first frame
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`(69), and holds an optical member(L4) (Paragraph 25); and a third frame (79) that is mounted
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`on the first frame so as to be movable in the optical axis direction, and holds an optical member
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`(L3) (Paragraph 23), and the second frame (89) includes a third stopper portion (89a) that has a
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`contact surface located close to the one end with respect to, and that comesinto contact with,
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`when the second frame (89) is located within a range on the optical axis wherethe third frame
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`(79) is movable, the third frame to limit movement toward the other end (see Fig. 1). Tetsuji
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`discloses the claimed invention, but does not specify wherein the first frame includesa first
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`stopperportion that comesinto contact with the third frame to limit movement toward the one
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`end, the first frame includes a second stopperportion that comes into contact with, when the
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`first frame is most distant from the second frame, the third frame to limit movement toward the
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`other end, the second stopperportion. In the same field of endeavor, Yasutomi discloses
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`wherein the first frame (6) includesafirst stopper portion (7) that comesinto contact with the
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`third frame (9) to limit movement toward the one end, the first frame (6) includes a second
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`stopperportion (11) that comesinto contact with, whenthe first frame (6) is most distant from
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`the second frame (10), the third frame (9) to limit movement toward the other end, the second
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`stopperportion (11) (see Figs. 2, 3, Paragraph 29). Therefore, it would have been obvious to
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`one of ordinary skill in the art before the effective filing date of the claimed invention to provide
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`the lens barrel of Tetsuji with wherein the first frame includesa first stopper portion that comes
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`into contact with the third frame to limit movement toward the one end, the first frame includes a
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`second stopper portion that comes into contact with, whenthe first frame is most distant from
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`the second frame, the third frame to limit movement toward the other end, the second stopper
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`portion of Yasutomi for the purpose of providing a more compact system and smoothly driving
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`said system (Paragraph 13) while suppressing blurring of the captured image (Paragraph 93).
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`Furthermore, it has been held that forming in one piece an article which has formerly been
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`formed in two pieces and put together involvesonly routine skill in the art. Howard v. Detroit
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`

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`Application/Control Number: 16/920,691
`Art Unit: 2872
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`Page 4
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`Stove Works, 150 U.S. 164 (1893).It has been held that rearranging parts of an invention
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`involves only routine skill in the art. In re Japikse, 86 USPQ 70.It has been held that a recitation
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`with respect to the manner in which a claimed apparatus is intended to be employed does not
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`differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural
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`limitations. Ex parte Masham, 2 USPQd2d - 164 7 (1987).
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`Regarding claim 2, Tetsuji further discloses further comprising a linear motor (25) that is
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`mounted on the first frame (69) to drive the third frame in the optical axis direction (Paragraph
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`28).
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`Regarding claim 3, Tetsuji discloses wherein the optical member(L3) held by the third
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`frame is a lens (Paragraph 23). Tetsuji and Yasutomi teach the lens barrel as is set forth above
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`for claim 1, Yasutomi further discloses focus lens (Paragraph 46). It would have been obvious to
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`one of ordinary skill in the art to provide the lens barrel of Tetsuji with the teachings of Yasutomi
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`for at least the same reasons set forth above with respect to claim 1. Furthermore, it is known in
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`the art that a lens is moved for the purposeof performing a zooming or focusing action.
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`Regarding claim 6, Tetsuji further discloses wherein the second frame (89) is movable in
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`the optical axis direction (Paragraph 23).
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`Regarding claim 7, Tetsuji discloses a camera comprising the lens barrel according to
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`claim 1 (Paragraph 2).
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`Allowable Subject Matter
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`Claims 4 and 5 are objected to as being dependent upon a rejected baseclaim, but
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`would be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims.
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`The following is a statement of reasons for the indication of allowable subject matter:
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`none of the references, alone or in combination, disclose or teach the lens barrel according to
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`claim 1, specifically comprising a fourth frame that is mounted on the second frame so as to be
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`movable in the optical axis direction, and holds an optical member, wherein the fourth frame is
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`

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`Application/Control Number: 16/920,691
`Art Unit: 2872
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`Page 5
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`mounted on the second frame so asto stroke on the side of the other end with respect to the
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`contact surface of the third stopper portion as is disclosed in claim 4.
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`Prior Art Citations
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`Fujii et al. (USP No. 6,069,745) is being cited herein to showalens barrel that would
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`have read on or made obvious a numberof the aboverejected claims, however, such rejections
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`would have beenrepetitive.
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to MAHIDERE S SAHLE whose telephone numberis (571)270-3329. The
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`examiner can normally be reached Monday-Thursday 8:00 AM to 5:00 PM.
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`using a USPTO supplied web-basedcollaboration tool. To schedule an interview, applicantis
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`encouraged to use the USPTO AutomatedInterview Request (AIR)at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Ricky Mack can be reached on 571 272-2333. The fax phone numberfor the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 16/920,691
`Art Unit: 2872
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`Page 6
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`/MAHIDERE S SAHLE/
`Primary Examiner, Art Unit 2872
`10/23/2021
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`