`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`
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`15/145,171
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`05/03/2016
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`Tetsuya UNO
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`AOYAP0166USB
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`5447
`
`01/30/2018 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`GREECE, JAMES R
`1621 EUCLID AVENUE
`19TH FLOOR
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`PAPER NUMBER
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`CLEVELAND, OH 44115
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`2872
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/30/2018
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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 @rennerott0.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 15/145,171 UNO ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JAMES GREECE $2218 2872
`-- 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 10/25/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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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*
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`5)IZI Claim(s) 1-10 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:I Claim(s)
`7)|Z| Claim(s)_1-10 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, 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
`hit
`:/'I’w1rIIW.usnI‘.0. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)IXI The drawing(s) filed on 5/3/2016 is/are: a)lX| accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)IXI 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)IZl All
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`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.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 10/25/2017.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20180119
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`

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`Application/Control Number: 15/145,171
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`Art Unit: 2872
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`Page 2
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`DETAILED ACTION
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`Notice 0fPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 103
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`2.
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`In the event the determination of the status of the application as subject to AIA 35 USC.
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`102 and 103 (or as subject to pre-AIA 35 USC. 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 of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`3.
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`The following is a quotation of 35 USC. 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.
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`4.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`USC. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`

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`Application/Control Number: 15/145,171
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`Art Unit: 2872
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`Page 3
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`5.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`6.
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`Claims 1-3 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito
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`(US 2010/0202068 A1) and fiarther in view ofJP 3-186823.
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`Re claim 1, Ito teaches A lens barrel comprising: a first frame (see at least 0100-0110); a
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`second frame which is arranged on an inner peripheral circumferential side of the first
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`frame, the second frame being movable relative to the first frame (see at least 0100-
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`0110); a third frame which is arranged on an inner peripheral circumferential side of the
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`second frame, the third frame being not rotatable relative to the first frame and
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`rotatable relative to the second frame (see at least 0100-0110); and a fourth frame which
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`is arranged on an outer peripheral circumferential side of the first frame and is not
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`movable relative to the second frame in an optical axis direction (see at least 0100-0110).
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`Re claim 1, Ito does not explicitly disclose all the fixed frames.
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`However, JP 3-186823 teaches holding frames.
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`Therefore, it would have been obvious to one having ordinary skill in the art at the time
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`the invention was filed to modify the device of Ito to include the fixed frames as taught
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`

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`Application/Control Number: 15/ 145,171
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`Art Unit: 2872
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`Page 4
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`by JP 3-186823 for the predictable result of vibration control and therefore device
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`imaging accuracy.
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`Re claim 2, Ito teaches wherein the fourth frame is formed as a single part where an outer
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`peripheral circumferential surface is formed of an external appearance surface, and an
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`inner peripheral circumferential surface is formed of a circular cylindrical surface (see at
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`least 0100-0110).
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`Re claim 3, Ito does not explicitly disclose wherein the second frame and the fourth
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`frame are joined to each other not to be movable in the optical axis direction and in the
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`rotational direction.
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`It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to join the fames together, since it has been held that forming in one
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`piece an article which has formerly been formed into two pieces and put together
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`involves only routine skill in the art. Howard v. Detroit Stove Works, 150 US 164 (1893).
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`Further one would be motivated to do this for the purpose of vibration correction.
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`Re claim 8, Ito does not explicitly disclose wherein the fourth frame is made of a metal.
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`However, these are known materials and known properties of strength and durability, and the
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`use thereof would have been predictable to one of ordinary skill in the art. The benefits of these
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`materials/qualities include durability and longevity of the lens device. In re Kanter, 399 F.2d 249,
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`158 USPQ 331 (CCPA 1968).
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`Re claim 9, Ito does not explicitly disclose wherein an inner peripheral circumferential
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`surface of the fourth frame is formed of a circular cylindrical surface having the
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`approximately same diameter.
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`Application/Control Number: 15/145,171
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`Art Unit: 2872
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`Page 5
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`The office first notes that the term approximately as it’s used provides a wide scope of
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`diameters and therefore broadens the interpretation.
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`It would have been an obvious matter of choice to have the above cited limitation, since
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`such a modification would have involved a mere change in the size of the component. A
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`change of size is generally recognized as being within the level of ordinary skill in the
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`art. In re Rose, 105 USPQ 237 (CCPA 1955).
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`Re claim 10, Ito teaches wherein the second frame is rotatable relative to the first frame
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`and movable relative to the first frame in the optical axis direction (see at least 0100-
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`0110), and the third frame is rotatable relative to the second frame and movement of the
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`third frame relative to the second frame in the optical axis direction is restricted (see at
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`least 0100-0110).
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`Allowable Subject Matter
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`7.
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`Claims 4-7 are objected (if a terminal disclaimer is filed) to as being dependent upon a
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`rejected base claim, but would be allowable if rewritten in independent form including all of the
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`limitations of the base claim and any intervening claims.
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`8.
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`The following is a statement of reasons for the indication of allowable subject matter:
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`The prior art taken singularly or in combination fails to anticipate or fairly suggest the limitations
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`of the independent claims, in such a manner that a rejection under 35 U.S.C. 102 or 103 would
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`be proper.
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`In regard to dependent claim 4, the prior art taken either singly or in combination fails to
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`anticipate or fairly suggest a lens barrel of the claimed structure including the second frame and
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`

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`Application/Control Number: 15/145,171
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`Art Unit: 2872
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`Page 6
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`the fourth frame respectively have optical-axis-direction restricting portions, rotational direction
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`restricting portions, and radial direction restricting portions, thereby making these three kinds of
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`restricting portions contact each other or engage with each other respectively, thereby the relative
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`positions between the second frame and the fourth frame being decided; recited together in
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`combination with the totality of particular features/limitations recited therein
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`Response to Arguments
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`9.
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`Applicant's arguments filed 10/25/2017 with regard to obviousness double patenting have
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`been fully considered but they are not persuasive.
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`10. With regard to the applicant’s statement related to the obviousness double patenting
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`rejection over the ODP references the office notes that the response is merely an allegation that a
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`limitation is not taught. It is possibly implied that because identical language was not used that
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`the rejection is not valid, however claims are interpreted on a broadest reasonable interpretation
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`standard.
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`11.
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`Counsel's assertion regarding untaught limitations is merely an argument unaccompanied
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`by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of
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`obviousness. Arguments of counsel cannot take the place of evidence in the record. In re
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`Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43
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`USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience
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`is just attorney argument and not the kind of factual evidence that is required to rebut a prima
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`facie case ofobviousness.”). MPEP §§ 2145, 2129, 2144.03, 716.01(c).
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`

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`Application/Control Number: 15/ 145,171
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`Art Unit: 2872
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`Page 7
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`12.
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`Furthermore, the applicant does illustrate what is taught in their specification without
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`discussion of how this relates to the claim language or an argument. The office reminds the
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`applicant although the claims are interpreted in light of the specification, limitations from the
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`specification are not read into the claims. See In re Van Genns, 988 F.2d 1181, 26
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`USPQ2d 1057 (Fed. Cir. 1993).
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`13.
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`The elements must be arranged as required by the claim, but this is not an z'psz'ssz'mz's
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`verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d
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`1566 (Fed. Cir. 1990). MPEP § 2131.
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`Furthermore the applicant in section B provides some argument comparing what is presented in
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`the specification of the cited reference as opposed to comparing the claim language directly.
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`Obviousness double patenting rejections are based upon the claim disclosure and not the
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`specification.
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`If the claims of either or both the patent and the application are excessively broad
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`then they may read upon each other although the specification may not match. The office
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`reminds the applicant that although the claims are interpreted in light of the specification,
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`limitations from the specification are not read into the claims. See In re Van Geuns, 988
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`F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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`It appears as if the applicant has employed the same strategy to respond to the
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`other obvious double patenting rejections. Therefore the same response as above would
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`apply to those references as above.
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`14.
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`Applicant’s arguments with respect to claims regarding the prior art have been considered
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`but are moot because the arguments do not apply to any of the references being used in the
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`current rejection.
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`

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`Application/Control Number: 15/145,171
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`Art Unit: 2872
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`Page 8
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`Cited Prior Art
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`US 20090060485 Al
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`Conclusion
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`15.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JAMES GREECE whose telephone number is (571)272-3711.
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`The examiner can normally be reached on M-Th 7:30-6.
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`Examiner interviews are available via telephone, in-person, and video conferencing using
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`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`