www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/055,915
`
`11/16/2020
`
`Mitsuo ABE
`
`AOYA44PUSO1
`
`9388
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`CHAUDHURI, ANITA
`
`2173
`
`01/26/2022
`
`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):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 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 11/16/2020 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)Z) 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)X) All
`1.2 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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 11/16/2020,2/12/2021,
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220104
`
`Application No.
`Applicant(s)
`17/055,915
`ABE etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANITA D CHAUDHURI
`2173
`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
`
`1) Responsive to communication(s) filed on 11/16/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`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.
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`DETAILED ACTION
`
`Claims 1-9 are pending, and are rejected.
`
`Specification
`
`The title of the invention is not descriptive. A newtitle is required thatis clearly
`
`indicative of the invention to which the claims are directed.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An elementin a claim for a combination may be
`expressed as a meansor 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 elementin 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 claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
`
`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
`
`a claim element (also commonly referred to as a claim limitation) is limited by the
`
`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is invoked.
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 3
`
`As explained in MPEP § 2181, subsection I, claim limitations that meet the
`
`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph:
`
`(A)—the claim limitation uses the term “means”or “step” or a term used as a substitute
`
`for “means” that is a generic placeholder (also called a nonce term or a non-
`
`structural term having no specific structural meaning) for performing the claimed
`
`function;
`
`(B)
`
`the term “means”or “step” or the generic placeholder is modified by functional
`
`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
`
`that’; and
`
`(C)
`
`the term “means”or“step” or the generic placeholderis not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means”(or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
`
`acts to entirely perform the recited function.
`
`Absenceof the word “means”(or “step”) in a claim creates a rebuttable
`
`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 4
`
`paragraph, is rebutted when the claim limitation recites function without reciting
`
`sufficient structure, material or acts to entirely perform the recited function.
`
`This application includes one or moreclaim limitations that do not use the word
`
`“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
`
`the recited function and the generic placeholderis not precededbyastructural modifier.
`
`Suchclaim limitation(s) is/are: for claim 1: “operation receiver configured to receive ...”
`
`and “a controller configures to control ...” and “operation receiver configured to change
`
`menu items ... ”, for claim 3: “operation receiver is configure to receive ...” and
`
`“controller configured to cause ...”, for claim 4: “operation receiver configured to receive
`
`...” and “controller configured to cause ...” , for claim 6: “operation receiver configured
`
`to receive ...” and “controller is configured to cyclically ...”, for claim 9: “operation
`
`receiver configured to receive ...” and “a controller configured to control ...” and
`
`“controller configured to cause...” .
`
`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
`
`cover the corresponding structure described in the specification as performing the
`
`claimed function, and equivalents thereof.
`
`If applicant does not intend to havethis/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 limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AlA
`
`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 5
`
`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
`
`sufficient structure to perform the claimed function so as to avoid it/them being
`
`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`Claim Objections
`
`Claim 9 is objected to because “the first information” and “the third information” in
`
`the last limitation of the claim lack antecedent basis. It appears the applicant has meant
`
`“the first tab information” and “the third tab information.
`
`The claim language needs to be precise. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. § 103 which forms the basis forall
`
`obviousnessrejections 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 ofthistitle, 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 1-9 are rejected under 35 U.S.C. § 103 as being unpatentable over US.
`
`Patent Apolication Publication Number 2005/43267676 attributed to Yoshiyuki Nezu
`
`(hereafier referred to as Nezu} ari lS. Palent Application Publication Number
`
`20 16/0077687 attributed to Satoshi Watanabe (hereafter referred to as Watanghe).
`
`Regarding claim 1: Nézu discloses an electronic device being portable
`
`comprising: a display configured to display a menu screen including menu items [figure
`
`3, figure 5, 0077]; an operation receiver configured to receive a user operation on the
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 6
`
`menu screen [0077]; and a controller configured to control the display according to the
`
`user operation via the operation receiver, wherein the menu screen further includes: first
`
`tab information indicating a category for classifying the menu items, second tab
`
`information indicating a plurality of sub categories included in the category [0077], and
`
`wherein the controller is configured to change menu items to be displayed on the menu
`
`screen, according to a user operation input via the operation receiver with the first,
`
`second tab information displayed on the menu screen [figure 3, figure 12A, figure 12B].
`
`Nezu does nat disclose third tab information indicating a menu item set number
`
`for each of the sub categories, the menu item set number being the numberof sets into
`
`which menu items in one sub category are partitioned to be displayed per a set on the
`
`menu screens and wherein the controller is configured to change menu items to be
`
`displayed on the menu screen, according to a user operation input via the operation
`
`receiver with the third tab information displayed on the menu screen.
`
`Watanabe discloses third tab information indicating a menu item set number for
`
`each of the sub categories, the menu item set number being the numberof sets into
`
`which menu items in one sub category are partitioned to be displayed per a set on the
`
`menu screens [307, 309 of figure 3A, 0076] and wherein the controller is configured to
`
`change menu items to be displayed on the menu screen, according to a user operation
`
`input via the operation receiver with the third tab information displayed on the menu
`
`screen [figure 3A, figure 3B2].
`
`It would have been obviousto one of ordinary skill in the art, having the
`
`teachings of Nezu and Watanabe before him/her, before the effectivefiling date of the
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 7
`
`claimed invention to incorporate the teachings of Watanabe into Nezu to get an
`
`advanced information on the number of associated sets to be displayed.
`
`Regarding claim 2: The electronic device according to claim 1, wherein in a state
`
`where at least a part of menu items classified into one sub category out of the plurality
`
`of sub categories is displayed on the menu screen, the third tab information displays a
`
`menu item set number for each of the one sub category and remaining sub categories
`
`in the plurality of sub categories [Watanabe: figure SA).
`
`Regarding claim 3: The electronic device according to claim 1, wherein the
`
`operation receiver is configured to receive a user operation for selecting one sub
`
`category from the plurality of sub categories indicated by the second tab information,
`
`and wherein the controller is configured to cause the menu screen to display at least a
`
`part of menu items classified into a selected sub category, and control displaying the
`
`second tab information to specify the selected sub category [Nezu: Figure 3, figure 12A,
`
`0096].
`
`Regarding claim 4: The electronic device according to claim 3, wherein in a case
`
`where the selected sub category is a sub category partitioned into a plurality of sets, the
`
`display is configured to display a plurality of tabs each indicating a setin the plurality of
`
`sets further as the third tab information, the operation receiver is configured to receive a
`
`user operation for selecting one tab from the plurality of tabs, and the controlleris
`
`configured to cause the menu screen to display a menu item of a set indicated by the
`
`selected tab, and control displaying the third tab information to specify a set indicated by
`
`the selected tab [W atanabe: figure 3A).
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 8
`
`Regarding claim 5: The electronic device according to claim 1, wherein the
`
`second tab information includes a plurality of icons each indicating a sub category in the
`
`plurality of sub categories, wherein the icon with a corresponding sub category including
`
`sets of the menu items has an indicator for indicating the menu item set number, and
`
`wherein the third tab information is configured by indicators of the plurality of icons
`
`[Matanabe: figure SA].
`
`Regarding claim 6: The electronic device according to claim 5, wherein the
`
`operation receiver is configured to receive a user operation on the icon, and wherein for
`
`each input of a user operation on the icon, the controller is configured to cyclically
`
`switch a set of menu items to be displayed on the menu screen within the menu item set
`
`number indicated by an indicator of the icon [Nezu: 0073, 0139].
`
`Regarding claim 7: The electronic device according to claim 1, wherein the
`
`operation receiver includes a touch panel configured to receive a touch operation on the
`
`menu screen [Nezu: 807 7].
`
`Regarding claim 8: The electronic device according to claim 1, wherein the
`
`electronic device is an imaging device configured to capture a subject image to
`
`generate image data, and wherein the menu item includes an item related to a setting of
`
`the imaging device [Neziu: figure 12A-BE.
`
`Regarding claim 9: Nezu discloses an electronic device being portable
`
`comprising: a display configured to display a menu screen including menu items [figure
`
`3, figure 5, 0077]; an operation receiver configured to receive a user operation on the
`
`menu screen; and a controller configured to control the display according to the user
`
`operation via the operation receiver, wherein the menu screen further includes: first tab
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 9
`
`information indicating a category for classifying the menu items, second tab information
`
`indicating a plurality of sub categories included in the category[figure 5, 0077].
`
`Nezu does nat disclose third tab information indicating a menu item set number
`
`for each of the sub categories, the menu item set number being the numberof sets into
`
`which menu items in one sub category are partitioned to be displayed per a set on the
`
`menu screens, and wherein the controller is configured to cause the third information in
`
`the menu screen to display every menu item set number for each of the sub categories
`
`included in the category indicated bythe first information.
`
`Watanabe disclosesthird tab information indicating a menu item set number for
`
`each of the sub categories, the menu item set number being the numberof sets into
`
`which menu items in one sub category are partitioned to be displayed per a set on the
`
`menu screens, and wherein the controller is configured to cause the third information in
`
`the menu screen to display every menu item set number for each of the sub categories
`
`included in the category indicated by the first information [307, 309 of figure 3A, 0076].
`
`It would have been obviousto one of ordinary skill in the art, having the
`
`teachings of Nezu and Watanabe before him/her, before the effectivefiling date of the
`
`claimed invention to incorporate the teachings of ¥atanabe into Nezu ic get an
`
`advanced information on the number of associated seis to be displayed.
`
`Conclusion
`
`U.S. Patent Application Publication Number 2013/0111410 attributed to Koichi
`
`Okadaetal. (hereafter referred to as Okada) discloses menu hierarchyin a digital
`
`camera [0022; 0039, figure 3A-C].
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 10
`
`Any prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. Applicant is required under 37 C.F.R. 1.111(c) to consider these
`
`references fully when responding to this action.
`
`The examiner has pointed out particular references contained in the prior arts of
`
`record in the body of this action for the convenience of the applicant. Although the
`
`specified citations are representative of the teachings in the art and are applied to the
`
`specific limitations within the individual claim, other passages and figures may apply as
`
`well. It is respectfully requested from the applicant, in preparing the response, to
`
`consider fully the entire references as potentially teaching all or part of the claimed
`
`invention, as well as the context of the passage as taught bythe prior arts or disclosed
`
`by the examiner.
`
`If there is any prior art made of record and is not relied upon, is considered
`
`pertinent to applicant's disclosure. Applicant is required under 37 C.F.R. 1.111(c) to
`
`consider these references fully when responding to this action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANITA D CHAUDHURI whose telephone numberis
`
`(571) 272-1427. The examiner can normally be reached on Mon-Wed 7-4 ET (1°! week
`
`of the bi-week) and Mon-Tue 7-4 ET (2? weekof the bi-week).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Kieu Vu can be reached at 571 272 4057. The fax phone numberfor the
`
`organization where this application or proceeding is assigned is 571 273 8300.
`
`

`

`Application/Control Number: 17/055,915
`Art Unit: 2173
`
`Page 11
`
`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).
`
`/Anita D. Chaudhuri/
`Examiner, AU 2173
`
`/KIEU D VU/
`Supervisory Patent Examiner, Art Unit 2173
`
`