`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
`
`
`CONF {MATION NO.
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`13/496,516
`
`03/16/2012
`
`Yasushi Ogino
`
`MAT—10549US
`
`1674
`
`52473
`7590
`””000”
`W
`RATNERPRESTIA —
`
`LOTTER, DAV ) E
`PO. BOX 980
`
`VALLEY FORGE, PA 19482-0980
`
`2844
`
`
`
`
`09/30/2014
`
`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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`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Applicant(s)
`Application No.
` 13/496,516 OGINO ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`DAVID LOTTER its“ 2844
`-- 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 CFR1. 136( a).
`after SIX () 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)IZI Responsive to communication(s) filed on 3/16/2012.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)|: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.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`
`5)IZI Claim(s) 1,3 and4 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)|:I Claim(s)
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`7)|Z| Claim(s)_,_1 3 and4 is/are rejected.
`8)|:| Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)|:I 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
`hit
`I/'/\WII‘IN.USOIO. ov/ atentS/init events/
`
`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 3/16/2012is/are: a)|:l accepted or b)lX| 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
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`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20140820
`
`
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`Application/Control Number: 13/496,516
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`Page 2
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`Art Unit: 2844
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
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`DETAILED ACTION
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`Continued Examination under 37 CFR 1. 1 14
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`6/14/2014 has been entered.
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`Drawings
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`Figure 6 should be designated by a legend such as --Prior Art-- because only
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`that which is old is illustrated. See MPEP § 608.02(g).
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`The drawings are objected to under 37 CFR 1.83(a) because they fail to show a
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`“trigger circuit” and “switching unit” as described in the specification. Any structural
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`detail that is essential for a proper understanding of the disclosed invention should be
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`shown in the drawing. MPEP § 608.02(d).
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`It is noted a rectangular box lacks sufficient detail to illustrate a “trigger circuit”
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`and “switching unit” as described in the Specification and as recited in Applicant’s
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`claims.
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`Application/Control Number: 13/496,516
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`Page 3
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`Art Unit: 2844
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`Conventional features disclosed in the description and claims, where their
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`detailed illustration is not essential for a proper understanding of the invention, should
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`be illustrated in the drawing in the form of a graphical drawing symbol or a labeled
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`representation, (e.g., a labeled rectangular box).
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`When the invention consists of an improvement on an old machine the drawing
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`must when possible exhibit, in one or more views, the improved portion itself,
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`disconnected from the old structure, an also in another view, so much only of the old
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`structure as will suffice to show the connection of the invention therewith.
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`(MPEP
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`60802(d)).
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`Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in
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`reply to the Office action to avoid abandonment of the application. Any amended
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`replacement drawing sheet should include all of the figures appearing on the immediate
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`prior version of the sheet, even if only one figure is being amended. The figure or figure
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`number of an amended drawing should not be labeled as “amended.” If a drawing figure
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`is to be canceled, the appropriate figure must be removed from the replacement sheet,
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes made to the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures.
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`Each drawing sheet submitted after the filing date of an application must be
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`labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37
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`CFR 1.121 (d).
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`If the changes are not accepted by the examiner, the applicant will be
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`Application/Control Number: 13/496,516
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`Page 4
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`Art Unit: 2844
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`notified and informed of any required corrective action in the next Office action. The
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`objection to the drawings will not be held in abeyance.
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`Claim Interpretations - 35 USC § 1 12
`
`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.
`
`Claim 1 is interpreted under 35 USC § 112, sixth paragraph because it
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`recites functions and fails to recite sufficiently definite structures, materials or
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`acts to perform the recited function.
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`Claims 1 does not use the word "means". Absence of the word “means” (or “step
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`for”) in a claim creates a rebuttab/e presumption that the claim element is not to be
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`treated in accordance with 35 U.S.C. 112, sixth paragraph. However, the presumption
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`that § 112, sixth paragraph is not invoked is rebutted when the claim element recites
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`function but fails to recite sufficiently definite structure, material or acts to perform that
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`function.
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`Claim 1
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`
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`Application/Control Number: 13/496,516
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`Page 5
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`Art Unit: 2844
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`Claim 1 recites the following limitation: “a control unit, that determines a quantity
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`of light to be emitted by the flash discharge tube, and based on the determination, the
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`control unit controls and directs the trigger circuit to switch between a first mode... and
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`a second mode. .
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`The claim limitation uses the term “control unit” as a substitute for “means”.
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`In
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`other words, the term is used as placeholder.
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`The placeholder is modified by functional language: “determines a quantity of
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`light to be emitted by the flash discharge tube, and based on the determination
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`...controls and directs the trigger circuit to switch between a first mode... and a second
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`mode...”
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`The placeholder is not modified by sufficient structure or material or acts for
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`performing their respective claimed functions.
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`In other words, a control unit alone is
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`insufficient structure to achieve “that determines a quantity of light to be emitted by the
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`flash discharge tube, and based on the determination, the control unit controls and
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`directs the trigger circuit to switch between a first mode... and a second mode. .
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`Since
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`the above limitation invokes 35 U.S.C. 112, sixth paragraph, the limitation is interpreted
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`to cover the corresponding structure described in the specification that achieves the
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`claimed function, and equivalents thereof.
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`A review of the specification shows structure insufficient for achieving the
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`claimed function as described in the specification (see generally paragraphs [0042,
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`[0050], [0063]). There is no description or illustration of structure, material or acts (e.g.,
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`an algorithm, flow chart or process steps) by which control unit determines a quantity of
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`Application/Control Number: 13/496,516
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`Page 6
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`Art Unit: 2844
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`light to be emitted, or by which the control unit controls and directs the trigger circuit to
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`switch between a first mode and a second mode.
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`If applicant wishes to provide further explanation or dispute the examiner’s
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`interpretation of the corresponding structure, applicant must identify the corresponding
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
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`If applicant does not intend to have the claim limitation(s) treated under 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
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`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
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`structure, material, or acts for performing the claimed function to preclude application of
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`For more information, see MPEP § 2173 et seq. and Supplementary Examination
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`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
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`Related Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
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`IN GEN ERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
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`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`
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`Application/Control Number: 13/496,516
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`Page 7
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`Art Unit: 2844
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`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
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`Claim 1
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`is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
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`paragraph, as failing to comply with the written description requirement. The claim(s)
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`contains subject matter which was not described in the specification in such a way as to
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`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
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`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
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`the claimed invention.
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`Claim 1
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`The claim is construed in accordance with 35 USC 112, 6th paragraph as noted
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`above. There is no written description of a structure sufficient to achieve the claimed
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`function “that determines a quantity of light to be emitted by the flash discharge tube,
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`and based on the determination, the control unit controls and directs the trigger circuit to
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`switch between a first mode... and a second mode...” Thus the claim fails convey to
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`one of ordinary skill in the art the invention had possession of the claimed invention.
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`There is no description of structure that determines a quantity of light to be emitted by
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`the flash discharge tube. There is insufficient written description concerning how the
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`control unit controls and directs the trigger circuit to switch between a first mode... and
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`a second mode...”
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`The following is a quotation of 35 U.S.C. 112(b):
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`
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`Application/Control Number: 13/496,516
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`Page 8
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`Art Unit: 2844
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`(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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`Claim 1
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`is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards
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`as the invention.
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`Claim 1 recites in part “a single trigger circuit that outputs a trigger signal to the
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`external triggering electrodes...” It is unclear how a single trigger circuit outputs a trigger
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`signal to “to the external triggering electrodes” when the claim 1 also recites "wherein
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`the single trigger circuit outputs voltage as the trigger signal.”
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`Specifically, in the first mode “the first voltage is applied to one of the plurality of
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`external triggering electrodes” and in the second mode “a voltage is applied to at least
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`one of a) said one of the external triggering electrodes, and b) another of the external
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`triggering electrodes, wherein in said second mode voltage is applied to an area of the
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`flash discharge tube larger than the predetermined attachment area.” The claim is
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`indefinite because there is no corresponding structure found for "wherein in said second
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`mode voltage is applied to an area of the flash discharge tube larger than the
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`predetermined attachment area." There is insufficient structure found that determines
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`an area to which the second mode voltage should be applied or to determine relative
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`Application/Control Number: 13/496,516
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`Page 9
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`Art Unit: 2844
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`area, i.e., an area of the flash discharge tube larger than the predetermined attachment
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`area. A switch alone is not capable of achieving this function.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`Claims 1, 3-4 as best understood are rejected under pre-AIA 35 U.S.C. 103(a) as
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`being unpatentable over Haruhiko (JP 2003-288861) in view of Sugahara (US
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`5,987,261) in view of Inoue (Japan Utility Application no. 857-60857).
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`Regarding claim 1 as best understood Haruhiko discloses
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`a flash discharge tube (Fig. 1, at 1 — flash discharge tube);
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`a plurality of external triggering electrodes (Fig. 1, at 14, 15 - electrodes) formed
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`on an outer surface of the flash discharge tube (Fig. 1, at 14, 15 - electrodes).
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`two trigger circuits (Fig. 3 at 16, 17 and Haruhiko, paragraphs [0021-0023]) that
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`outputs a trigger signal to the external triggering electrodes making the flash discharge
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`tube emit light at a predetermined timing (Haruhiko, Fig. 3, output of 16 and 17 to 14
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`and 15 respectively, and paragraph [0022]);
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`Application/Control Number: 13/496,516
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`Page 10
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`Art Unit: 2844
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`a first mode in which voltage is applied to one of the plurality of external
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`triggering electrodes having a predetermined attachment area to the flash discharge
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`tube (Haruhiko, paragraph [0001 and paragraph [0022]),
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`a second mode (Haruhiko, paragraph [0001] in which a voltage is applied to at
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`least one of
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`a) said one of the external triggering electrodes (Haruhiko, paragraphs
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`[0022-0023]), and
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`b) another of the external triggering electrodes (Haruhiko, paragraphs
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`[0022-0023]), wherein in said second mode voltage is applied to an area of the
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`flash discharge tube larger than the predetermined attachment area,
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`Haruhiko does not explicitly disclose a switching unit that switches
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`between the first mode and the second mode; wherein the trigger circuit outputs
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`voltage as the trigger signal and the switching unit supplies the voltage output
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`from the trigger circuit to said one and said another of the external triggering
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`electrodes.
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`lnoue discloses a switching unit (lnoue, paragraph 1) that switches
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`between the first mode and the second mode (lnoue, paragraph 1); wherein the
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`trigger circuit outputs voltage as the trigger signal (lnoue, paragraph 1) and the
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`switching unit (lnoue, paragraph 1) supplies the voltage output from the trigger
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`circuit to said one and said another of the external triggering electrodes (lnoue,
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`paragraph 1).
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`Application/Control Number: 13/496,516
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`Page 11
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`Art Unit: 2844
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`At the time of the invention it was well known to use a switch to switch between
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`modes, as evidenced by lnoue. (lnoue, paragraph 1) It would have been a matter of
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`obvious design choice to use a switching unit such as that disclosed by lnoue in the
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`device of Haruhiko to switch between modes. lnoue specifically teaches using switches
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`disposed between the trigger circuit and the plurality of electrodes to switch output
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`voltages to the plurality of electrodes
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`Haruhiko in view of lnoue may not explicitly
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`disclose:
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`a control unit, that determines a quantity of light to be emitted by the flash
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`discharge tube, and based on a determination, the control unit controls and directs the
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`trigger circuit.
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`However, Sugahara discloses
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`a control unit (Fig. 6, at 8, CPU), that determines a quantity of light to be emitted
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`by the flash discharge tube (Fig. 6, CPU 8 output to light generation amount controller
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`11) and based on a determination, the control unit controls and directs a trigger circuit
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`(Fig. 6, at 11, light generation amount controller).
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`It would have been obvious to one of ordinary skill in the art to modify the strobe
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`device disclosed by Haruhiko in view of lnoue in accordance with the teaching of
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`Sugahara regarding a controller for a strobe device that controls the quantity of light
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`generated by the strobe (Sugahara, column 1, lines 58-61) to arrive at Applicant’s
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`claimed invention in order have a strobe device that obtains an optimum quantity of light
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`(column 1, lines 45-47).
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`
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`Application/Control Number: 13/496,516
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`Page 12
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`Art Unit: 2844
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`Haruhiko as modified by Inoue and Sugahara discloses all of the features found
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`in claim 1 except for wherein a single trigger circuit outputs voltage as the trigger signal.
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`However, it would have been obvious to a person of ordinary skill in the art at the
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`time the invention was made to integrate the two trigger circuits disclosed by Haruhiko
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`into one trigger circuit, since it has been held that making a device integral requires only
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`routine skill in the art (see In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA
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`1965), see also Howard v. Detroit Stove Works, 150 U.S. 164 (1893)).
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`Regarding claim 3 Haruhiko in view of lnoue as modified by Sugahara discloses
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`the device of claim 1.
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`Sugahara further discloses ‘wherein the control unit applies the voltage to the
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`external triggering electrode after switching the first and second modes (see for
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`example column 3, lines 10-15, see also for example column 3, lines 25-27).
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`At the time of the invention, it would have been obvious to a person of ordinary
`
`skill in the art to modify the flash discharge tube disclosed by Haruhiko in accordance
`
`with the teaching of Sugahara regarding controllers used in flash discharge tubes in
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`order to determine an optimal quantity of light (Sugahara, column 1, lines 45-47, column
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`3, lines 29-34).
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`Regarding claim 4 Haruhiko as modified by Sugahara discloses the device of
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`claim 1.
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`
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`Application/Control Number: 13/496,516
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`Page 13
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`Art Unit: 2844
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`Sugahara further discloses ‘wherein the control unit switches to the first mode
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`when making the flash discharge tube emits a small quantity of light’ (see for example
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`column 3, lines 10-15, see also for example column 3, lines 25-27)
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`and switches to the second mode when making the flash discharge tube emits a
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`large quantity of light (see for example column 3, lines 10-15, see also for example
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`column 3, lines 25-27).
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`It would have been obvious to one of ordinary skill in the art at the time of the
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`invention to modify the flash discharge tube disclosed by Haruhiko in accordance with
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`the teaching of Sugahara regarding a light quantity controller used in flash discharge
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`tubes in order to determine an optimal quantity of light (Sugahara, column 1, lines 45-
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`47, column 3, lines 29-34).
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`Response to Arguments
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`Applicant's arguments filed 9 June 2014 have been fully considered but they are
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`not persuasive.
`
`The Applicant emphasizes having "a predetermined attachment area...“ on page
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`5 however Applicant's arguments do not comply with 37 CFR 1.111(c) because they do
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`not clearly point out the patentable novelty which he or she thinks the claims present in
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`view of the state of the art disclosed by the references cited or the objections made.
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`Further, they do not show how the amendments avoid such references or objections.
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`The Applicant asserts on pages 5-6 that neither Haruhiko nor Sugahara teach
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`using a m trigger circuit which controls a trigger circuit to switch between two modes
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`such that voltages apply to a larger area in the second mode than is applied in the first
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`
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`Application/Control Number: 13/496,516
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`Page 14
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`Art Unit: 2844
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`mode. The Examiner asserts that making a part integral requires only routine skill in the
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`art.
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`In this case integrating two trigger circuits into one single trigger circuit requires
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`only routine skill in the art.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DAVID LOTTER whose telephone number is (571 )270-
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`7422. The examiner can normally be reached on Monday-Friday 7:30am-5PM (off
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`every other Friday).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Alex Taningco can be reached on 571-272—8048. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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