`
`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
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`Tetsuya UNO
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`AOYAP0166USB
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`5447
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`0mm” —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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`07/12/2018
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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 7/5/2018.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|Z| 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) fl) 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) 1-3 and 8-10 is/are rejected.
`8)|:| Claim(s)_4-7is/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
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`
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`:/'I’w1rIIW.usnI‘.0. ovI’ atentS/init events/
`h/index.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
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`hit
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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) 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
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`Part of Paper No./Mai| Date 20180705
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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 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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`Continued Examination Under 3 7 CFR 1.114
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`2.
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
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`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on 6/18/2018 has been entered.
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`Claim Rejections - 35 USC § 102
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`3.
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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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`4.
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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)(l) the claimed invention was patented, described in a printed publication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
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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
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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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`case may be, names another inventor and was effectively filed before the effective filing date of the
`claimed invention.
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`5.
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`C1aim(s) 1-2 and 9-10 is/are rejected under 35 U.S.C. 102(a1, a2) as being anticipated by
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`Nishio et al (USPAT 5,818,647).
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`Re claim 1, Nishio et al teaches a lens barrel comprising: a first frame that has an
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`approximately cylindrical shape (see at least numeral 31): a second frame which is that
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`has an approximately cylindrical shape arranged radially inward on an inner
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`circumferential side of the first frame, the second frame being movable relative to the
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`first frame (see at least numeral 24); a third frame which is that has an approximately
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`cylindrical shape arranged radially inward on an inner circumferential side of the second
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`frame, the third frame being not rotatable relative to the first frame and rotatable relative
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`to the second frame (see at least numeral 38); and a fourth frame which is that has an
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`approximately cylindrical shape arranged radially outward on an outer circumferential
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`side of the first frame and is not movable relative to the second frame in an optical axis
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`direction (see at least fixed frame numeral 34).
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`Re claim 2, Nishio et al teaches wherein the fourth frame is formed as a single part where
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`an outer circumferential surface is formed of an external appearance surface, and an inner
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`circumferential surface is formed of a circular cylindrical surface.
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`Re claim 9, Nishio et al teaches wherein an inner circumferential surface of the fourth
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`frame is formed of a circular cylindrical surface having the approximately same diameter
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`(see at least figure 7).
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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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`Re claim 10, Nishio et al teaches wherein the second frame is rotatable relative to the first
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`frame and movable relative to the first frame in the optical axis direction (see at least
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`figures 14 and 15), and the third frame is rotatable relative to the second frame and
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`movement of the third frame relative to the second frame in the optical axis direction is
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`restricted (see at least figures 14 and 15).
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`Claim Rejections - 35 USC § 103
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`6.
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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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`7.
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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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`8.
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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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`Application/Control Number: 15/145,171
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`Art Unit: 2872
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`Page 5
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`9.
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`Claims 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishio et
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`al (USPAT 5,818,647).
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`Re claim 3, Nishio et al do not explicitly disclose wherein the second frame and the
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`fourth frame are joined to each other not to be movable in the optical axis direction and in
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`the rotational direction.
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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 form one immobile object, since it has been held that forming in one piece an article
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`which has formerly been formed into two pieces and put together involves only routine skill in
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`the art. Howard v. Detroit Stove Works, 150 US 164 (1893).
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`Re claim 8, Nishio et al do 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 utilize metal, since it has been held to be within the general skill of a worker in the
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`art to select a known material on the basis of its suitability for the intended use as a matter of
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`design choice. In this case metal provides a solid and strong material to provide a durable
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`product.
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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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`Allowable Subject Matter
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`10.
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`Claims 4-7 are objected to as being dependent upon a rejected base claim, but would be
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`allowable if rewritten in independent form including all of the limitations of the base claim and
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`any intervening claims.
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`11.
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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 independent claim 4, the prior art taken either singly or in combination fails
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`to anticipate or fairly suggest the second frame and the fourth frame respectively have optical-
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`axis-direction restricting portions, rotational direction restricting portions, and radial direction
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`restricting portions, thereby making these three kinds of restricting portions contact each other or
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`engage with each other respectively, thereby the relative positions between the second frame and
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`the fourth frame being decided.; recited together in combination with the totality of particular
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`features/limitations recited therein
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`Examiner Notes
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`2.
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`Examiner cites particular columns and line numbers in the references as applied to the
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`claims below for the convenience of the applicant. Although the specified citations are
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`representative of the teachings in the art and are applied to the specific limitations within the
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`individual claim, other passages and figures may apply as well. It is respectfully requested that,
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`in preparing responses, the applicant fully consider the references in entirety as potentially
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`teaching all or part of the claimed invention, as well as the context of the passage as taught by
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`the prior art or disclosed by the examiner.
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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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`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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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/JAMES GREECE/
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`Primary Examiner, Art Unit 2872
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`