`
`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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`15/145,171
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`05/03/2016
`
`Tetsuya UNO
`
`AOYAP0166USB
`
`5447
`
`07/26/2017 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`GREECE, JAMES R
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
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`CLEVELAND, OH 44115
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`2872
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`07/26/2017
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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)
`
`

`

`
`
`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 5/3/2016.
`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: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) 149 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| CIaim(s)_1-9is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`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.
`
`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 5/3/2016 and 5/3/2016.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20170719
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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 ofPre-AIA or 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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`Information Disclosure Statement
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`1.
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`The examiner has reviewed and signed the IDS, however correction and resubmission
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`will be required before a patent can issue. The form requires the publication date as month, day,
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`and year. The applicant has only provided month and year. Proper correction and resubmission
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`is respectfully requested.
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`Double Patenting
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`2.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where
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`the conflicting claims are not identical, but at least one examined application claim is not
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`patentably distinct from the reference claim(s) because the examined application claim is either
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`anticipated by, or would have been obvious over, the reference claim(s). See, e. g., In re Berg,
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`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
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`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
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`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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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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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
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`be used to overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent either is shown to be commonly owned with the
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`examined application, or claims an invention made as a result of activities undertaken within the
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`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
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`under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP
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`§§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor
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`to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1 .32 1 (b).
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`The USPTO Internet website contains terminal disclaimer forms which may be used.
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`Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the
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`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
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`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely
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`online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-
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`processed and approved immediately upon submission. For more information about eTerminal
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`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.j sp.
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`3.
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`Claims 1-9 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-6 of US. Patent No. 9,360,655. Although the claims at issue are not
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`identical, they are not patentably distinct from each other because the claim sets display an
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`anticipatory relationship or obviousness relationship as the limitations set forth in both sets of
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`claims are limited by the same scope when interpreted by the office's broadest reasonable
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`interpretation standard. Further both claim sets require the same frame structures the same or
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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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`similar cam follower, rotation restricting portions, the same or similar conical structures and the
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`same or similar structure of those elements.
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`4.
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`Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims 1-4 of copending Application No. 15/145,191. Although the
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`claims at issue are not identical, they are not patentably distinct from each other because the
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`claim sets display an anticipatory relationship or obviousness relationship as the limitations set
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`forth in both sets of claims are limited by the same scope when interpreted by the office's
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`broadest reasonable interpretation standard. Further both claim sets require the same frame
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`structures the same or similar cam follower, rotation restricting portions, and the same or similar
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`structure of those elements.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have not in fact been patented.
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`5.
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`Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims 1-5 of copending Application No. 15/145,150. Although the
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`claims at issue are not identical, they are not patentably distinct from each other because the
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`claim sets display an anticipatory relationship or obviousness relationship as the limitations set
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`forth in both sets of claims are limited by the same scope when interpreted by the office's
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`broadest reasonable interpretation standard. Further both claim sets require the same frame
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`structures the same or similar cam follower, rotation restricting portions, and the same or similar
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`structure of those elements.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have not in fact been patented.
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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 5
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`Claim Rejections - 35 USC § 102
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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 the appropriate paragraphs of 35 USC. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for
`patent published or deemed published under section 122(b), in which the patent or application, as the
`case may be, names another inventor and was effectively filed before the effective filing date of the
`claimed invention.
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`4.
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`Claim(s) l-7 and 9 is/are rejected under 35 USC. 102a2 as being anticipated by Nuno et
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`al (US 20110273781 A1).
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`Re claim 1, Nuno et al teaches A lens barrel comprising: a first frame (see at least
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`numeral 17); a second frame which is arranged on an inner peripheral side of the first
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`frame, the second frame being movable relative to the first frame (see at least 0117); a
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`third frame which is arranged on an inner peripheral side of the second frame, the third
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`frame being not rotatable relative to the first frame and rotatable relative to the
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`second frame (see at least numeral 31); and a fourth frame which is arranged on an outer
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`peripheral side of the first frame and is not movable relative to the second frame in an
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`optical axis direction (see at least numeral 41).
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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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`Re claim 2, Nuno et al teaches wherein the fourth frame is formed as a single part where
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`an outer peripheral surface is formed of an external appearance surface, and an inner
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`peripheral surface is formed of a circular cylindrical surface (see at least numeral 41).
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`Re claim 3, Nuno et al teaches wherein the second frame and the fourth frame are joined
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`to each other not to be movable in the optical axis direction and in the rotational direction
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`(see at least figure 7 and 8).
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`Re claim 4, Nuno et al teaches wherein the second frame and the fourth frame
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`respectively have optical-axis-direction restricting portions, rotational
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`direction restricting portions, and radial direction restricting portions thereby making
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`these three kinds of restricting portions contact each other or engage with each other
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`respectively, thereby the relative positions between the second frame and the fourth
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`frame being decided (see at least 0150, 0151, 0154, 0168, and 0170).
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`Re claim 5, Nuno et al teaches wherein an inner peripheral surface of the fourth frame is
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`constituted of a surface having no steps, and is continuously formed with the inner
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`peripheral surface of the radial direction restricting portion of the fourth frame having the
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`same diameter as the inner peripheral surface of the radial direction restricting portion
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`(see at least figures 7 and 8).
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`Re claim 6, Nuno et al teaches wherein the second frame and the fourth frame further
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`include optical-axis-direction fixing portions, and rotational-direction fixing portions
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`respectively, thereby making two kinds of fixing portions engage with each other
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`respectively, the second frame and the fourth frame are fixed to each other in the
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`respective directions (see at least 0150, 0151, 0154, 0168, and 0170).
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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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`Re claim 7, Nuno et al teaches wherein an optical-axis-direction restricting portion, a
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`rotational direction restricting portion, a radial direction restricting portion, an optical-
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`axis-direction fixing portion, and a rotational direction fixing portion are arranged within
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`a thickness range ofthe fourth frame (see at least 0150, 0151, 0154, 0168, and 0170).
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`Re claim 9, Nuno et al teaches wherein an inner peripheral surface of the fourth frame is
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`formed of a circular cylindrical surface having the approximately same diameter (see at
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`least figures 7 and 8).
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`Claim Rejections - 35 USC § 103
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`1.
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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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`2.
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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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`3.
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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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`

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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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`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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`4.
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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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`5.
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`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nuno et al (US
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`20110273781 A1).
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`Re claim 8, Nuno et al does not explicitly disclose wherein the fourth frame is made of a
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`metal.
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`It would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to make the fourth frame out of metal, since it has been held to be within the
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`general skill of a worker in the art to select a known material on the basis of its suitability
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`for the intended use as a matter of design choice. The motivation for utilizing metal is
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`due to its strong structure, resistibility to normal wear and tear, and relative affordability.
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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 9
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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. US 8503103 B2
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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 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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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Tom Pham can be reached on 571-272-3689. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`