`
`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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`15/366,408
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`12/01/2016
`
`Tsutomu MUKAI
`
`PANDP0171USA
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`1065
`
`OMS/2017 —MARK D. SARALINO (PAN) m
`
`7590
`51921
`
`
`V ‘AUX’ GARY C
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
`
`CLEVELAND, OH 44115
`
`2662
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`06/ 16/2017
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`ELECTRONIC
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`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):
`
`ipdocket @rennerott0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/366,408 MUKAI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`GARY c. VIEAUX $2213 2662
`-- 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 12/1/2016.
`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) 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| CIaim(s)_1-4is/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/'/\WII‘IN.USOIO. 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)IZI The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 12/1/2016is/are: a)I:I 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).
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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:
`
`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
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170607
`
`

`

`Application/Control Number: 15/366,408
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`Page 2
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`Art Unit: 2662
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`DETAILED ACTION
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Priority
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`Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C.
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`119(a)-(d). The certified copy of Japanese patent application number 2014-154197,
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`filed in Japan on July 29, 2015, has been received and made of record.
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`Information Disclosure Statement
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`The information disclosure statements (IDS) submitted December 1, 2016, March
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`3, 2017 and March 15, 2017are in compliance with the provisions of 37 CFR 1.97 and is
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`being considered by the Examiner.
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`Drawings
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`15
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`The drawings are objected to because figure 1, element 190 incorrectly labels
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`card slot as “caed slot”. Corrected drawing sheets in compliance with 37 CFR 1.121(d)
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`are required in reply to the Office action to avoid abandonment of the application. Any
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`amended replacement drawing sheet should include all of the figures appearing on the
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`20
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`immediate prior version of the sheet, even if only one figure is being amended. The
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`figure or figure number of an amended drawing should not be labeled as “amended.” If
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`a drawing figure is to be canceled, the appropriate figure must be removed from the
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`

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`Application/Control Number: 15/366,408
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`Page 3
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`Art Unit: 2662
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`replacement sheet, and where necessary, the remaining figures must be renumbered
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`and appropriate changes made to the brief description of the several views of the
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`drawings for consistency. Additional replacement sheets may be necessary to show the
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`renumbering of the remaining figures. Each drawing sheet submitted after the filing date
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`of an application must be labeled in the top margin as either “Replacement Sheet” or
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`“New Sheet” pursuant to 37 CFR 1.121 (d).
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`If the changes are not accepted by the
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`examiner, the applicant will be notified and informed of any required corrective action in
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`the next Office action. The objection to the drawings will not be held in abeyance.
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`Specification
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`The title of the invention is not descriptive. A new title is required that is clearly
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`indicative of the invention to which the claims are directed.
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`Claim Objections
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`Claim 4 is objected to because of the following informalities:
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`the proper
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`antecedent of “an” should precede “identifief’ (e.g., “fl identifief’), instead of the
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`currently claimed “a identifief’ in lines 23 Appropriate correction is required.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of 35 U.S.C. 112(b):
`(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.
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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
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`20
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`25
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`

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`Application/Control Number: 15/366,408
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`Page 4
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`Art Unit: 2662
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`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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`Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`Regarding claim 1, the independent claim, from which claims 2—4 depend and
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`inherit all limitations therefrom, recites the limitation "automatically sets... to a set value
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`more suitable for recording a still image than in the first video mode. More suitable” is
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`a subjective term that implies a personal preference or interpretation and is not a term
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`with defined parameters or limits; as what one skilled in the art may consider “more
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`suitable” may differ greatly from what another skilled in the art considers “more
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`suitable,” or even merely “suitable.”
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`Regarding claim 1, the independent claim, from which claims 2—4 depend and
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`inherit all limitations therefrom, recites the limitation “a set value" in line 7. Claim "i else
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`reeitee the iirnitatien “a set veiue” in line it}.
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`it is; unclear trern the claim whether the set
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`veiiie ei iine 7 is intended it) he the same set value ei tine iii}, er is intended it) be a
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`different set value. Further, it is unclear which et the “a set vettie” instances that ”the
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`set vaiue” et line i2 is intended te be referenced by antecedent heeie. Fineliy, “e set
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`value“ is else recited in line 13, eeueing edditienel eehtueien regarding antecedent
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`constructs; for “set veiiie.” This; lack et clarity causes the claim it) be indefinite for failing
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`to particularly point out and distinctly claim the subject matter which the inventor or a
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`joint inventor, or for pre-AIA the applicant regards as the invention.
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`

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`Application/Control Number: 15/366,408
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`Page 5
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`Art Unit: 2662
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`Regarding claim 1, the independent claim, from which claims 2-4 depend and
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`inherit all limitations therefrom, recites the limitation “a set value” in several locations.
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`The claims set a singular set value, i.e.,"set a set value... in each of the @ video
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`mode... and second video modes", but then changes that singular value "automatically
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`sets the set value... in the second video mode to a set value more suitable. .
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`It is
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`unclear from the claim if the “set value” associated with the first video mode changes
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`when the set value of the second video mode is automatically set or even if the value
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`associated with the first video mode is the same value as the second video mode. The
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`claim, as currently written, creates confusion regarding a singular value applied to
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`multiple modes, and whether that singular “a set value” can represent two distinct
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`values, one for each mode. This confusion may be alleviated by looking to the
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`disclosure and employing similar language, e.g., “image quality (resolution) is set to a
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`value...” (pub at [0071]), instead of a language relating to a singular “set value.”
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`The claims will be examined as best understood and to the extent possible in
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`light of the above indefinite language.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`20
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`25
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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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`

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`Application/Control Number: 15/366,408
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`Page 6
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`Art Unit: 2662
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`Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Japanese Patent Publication No. 2006-0942530 to Yoshihiro in view of U.S. Patent
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`Publication No. 2003/0118329 to Obrador in view of U.S. Patent Publication
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`No.2010/0295966 to Furlan.
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`Regarding claim 1, Yoshihiro teaches an imaging device comprising an imaging
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`unit that generates image data (fig. 3, element 120) from optical information input
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`through an optical system unit (fig. 3, element 118), an image processor that performs a
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`predetermined process to the image data generated by the imaging unit (fig. 3, element
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`130; [0033]), and a controller (fig. 3, element 112) that controls at least one of the
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`1O
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`optical system unit, the imaging unit, and the image processor relating to video
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`capturing so as to generate video data ([0030]), wherein the controller controls the video
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`capturing in each of a first video mode ([0046]) and a second video mode ([0047]), and
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`performs a marking process to designate a frame at a timing of a pressing an operation
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`button when the operation button is pressed during the recording in the second video
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`15
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`mode ([0047]). Yoshihiro, however, has not been found by the Examiner to expressly
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`disclose the controller controlling at least one of the optical system unit, the imaging
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`unit, and the image processor based on a set value relating to video capturing so as to
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`generate video data, wherein the controller sets a set value relating to the video
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`capturing in each of a first video mode and a second video mode, and automatically
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`sets the set value relating to the video capturing in the second video mode to a set
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`value more suitable for recording a still image than in the first video mode.
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`

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`Application/Control Number: 15/366,408
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`Page 7
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`Art Unit: 2662
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`Nevertheless, Obrador teaches capturing video at low resolution and capturing a
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`high resolution still image during low resolution video capture in response to user input
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`([0015]-[0016]).
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`It would have been obvious to one of ordinary skill in the art before the
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`effective date of the claimed invention to have employed the teachings of Obrador as
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`the second video mode as taught by Yoshiro, resulting in an imaging device wherein a
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`set value is set relating to the video capturing in each of a first video mode and a
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`second video mode (low resolution value, e.g. '329 [0015]), and the set value relating to
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`the video capturing in the second video mode is automatically set to a set value more
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`suitable for recording a still image than in the first video mode (high resolution at still
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`image capture, e.g. '329 [0015]), and providing the advantage of higher resolution still
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`images in the second video mode.
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`Further to this, Furlan teaches the specifics of a controller (fig. 2, element 230;
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`[0023]) that controls at least one of the imaging unit (fig. 2, element 210; [0023]) and the
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`image processor ([0023]) based on a set value relating to video capturing so as to
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`15
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`generate video data in which a high resolution still image is captured during low
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`resolution video capture ([0023] and [0025]).
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`It would have been obvious to one of
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`ordinary skill in the art before the effective date of the claimed invention to have
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`employed the controller as taught by Furlan with the imaging device as taught by
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`Yoshiro and Obrador as a way of expressly implementing the functionality via a
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`controller/processor.
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`The Examiner notes that the claim, as currently written, does not associated any
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`still image to the frame designated by a marking process.
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`

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`Application/Control Number: 15/366,408
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`Page 8
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`Art Unit: 2662
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`Regarding claim 2, Yoshiro, Obrador and Furlan teach all the limitations of claim
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`2 (see the 35 U.S.C. 103 rejection of claim 1, supra) including teaching wherein the
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`recording in the second video mode is performed from start to end of a video recording
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`(e.g., ‘253 — [0047]).
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`Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Yoshiro, Obrador and Furlan in view of U.S. Patent Publication No. 2012/0183271 to
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`Forutanpour et al (hereinafter “Forutanpour”).
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`Regarding claim 3, Yoshiro, Obrador and Furlan teach all the limitations of claim
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`1O
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`3 (see the 35 U.S.C. 103 rejection of claim 1, w) except for being found by the
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`Examiner to expressly disclose wherein the controller records information indicating a
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`marking timing in association with the video data when a marking instruction is issued.
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`Nevertheless, Forutanpour teaches recording information indicating a marking
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`timing in association with the video data when a marking instruction is issued ([0022]
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`15
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`encoded with the frame, in a header or in a separate file; timestamp: [0029], [0044],
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`[0058]).
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`It would have been obvious to one of ordinary skill in the art before the
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`effective date of the claimed invention to have incorporated the functionality as taught
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`by Forutanpour with the imaging device as taught by Yoshiro, Obrador and Furlan as a
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`way to locate the image at a later time or later determine the location of the image
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`20
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`relative to the video.
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`Regarding claim 4, Yoshiro, Obrador and Furlan teach all the limitations of claim
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`4 (see the 35 U.S.C. 103 rejection of claim 1, supra) except for being found by the
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`

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`Application/Control Number: 15/366,408
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`Page 9
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`Art Unit: 2662
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`Examiner to expressly disclose wherein the controller records information indicating a
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`marking timing and an identifier for identifying a marking in association with the video
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`data when a marking instruction is issued.
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`Nevertheless, Forutanpour teaches recording information indicating a marking
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`timing ([0029], timestamp) and a identifier for identifying a marking in association with
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`the video data when a marking instruction is issued ([0044], sequence identification
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`number/frame number).
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`It would have been obvious to one of ordinary skill in the art
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`before the effective date of the claimed invention to have incorporated the functionality
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`as taught by Forutanpour with the imaging device as taught by Yoshiro, Obrador and
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`Furlan as a way to locate the image at a later time or later determine the location of the
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`image relative to the video.
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`Examiner’s Note
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`The Examiner cites particular figures, paragraphs, columns and line numbers in
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`15
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`the reference(s), as applied to the claims above. Although the particular citations are
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`representative teachings and are applied to specific limitations within the claims, other
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`passages, internally cited references, and figures may also apply.
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`In preparing a
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`response, it is respectfully requested that the Applicant fully consider the references, in
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`their entirety, as potentially disclosing or teaching all or part of the claimed invention, as
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`well as fully consider the context of the passage as taught by the reference(s) or as
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`disclosed by the Examiner.
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`

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`Application/Control Number: 15/366,408
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`Page 10
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`Art Unit: 2662
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`U.S. Patent Publication No. 2013/0107070 to Hsu et al teaches two video modes,
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`each mode having at least a different resolution.
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`U.S. Patent Publication No. 2003/0031469 to Hirai teaches two video modes,
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`one mode including high quality images.
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`U.S. Patent Publication No. 2009/0158315 to Bendall et al teaches embedding
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`high quality images in a video stream when a button is pressed.
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`1O
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`U.S. Patent No. 7,443,424 to lto teaches adding a marking to an image.
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`Contact
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to GARY C. VIEAUX whose telephone number is
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`15
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`(571 )272—731 8. The examiner can normally be reached on IFW.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`20
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Roberto Velez can be reached on 571 -272—8597. 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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`

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`Application/Control Number: 15/366,408
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`Page 11
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`Art Unit: 2662
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`5
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
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`10
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`/GARY C VIEAUX/
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`Primary Examiner, Art Unit 2662
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`