`
`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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`15/366,557
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`12/01/2016
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`TSUTOMU MUKAI
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`PANDP0171USD
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`9290
`
`06/21/2017 —MARK D. SARALINO (PAN) m
`
`7590
`51921
`
`
`V ‘AUX’ GARY C
`RENNER, OTTO, BOIS SELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
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`PAPER NUMBER
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`CLEVELAND, OH 44115
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`2662
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/21/2017
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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)
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`

`

`
`
`Applicant(s)
`Application No.
` 15/366,557 MUKAI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2662GARY c. VIEAUX $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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 CFR 1.136(a).
`after SIX (6) 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).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 12/1/2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| 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)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_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)
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`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 20170614
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`Disposition of Claims*
`5)|XI Claim(s) His/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L7 is/are rejected.
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`is/are objected to.
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`) )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l 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
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
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`, or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)IXI The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 12/1/2017is/are: a)I:I accepted or b)lZl 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
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I 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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`Application/Control Number: 15/366,557
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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 on December 1, 2016,
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`December 2,2016, March 3, 2017 and March 15, 2017 are in compliance with the
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`provisions of 37 CFR 1.97 and are being considered by the Examiner.
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`Drawings
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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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`Application/Control Number: 15/366,557
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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 Rejections - 35 USC § 1 12(b)
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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:
`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 1-7 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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`Application/Control Number: 15/366,557
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`Page 4
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`Art Unit: 2662
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`Regarding claim 1, the independent claim, from which claims 2-7 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." “[M]ore 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 2-7 depend and
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`inherit all limitations therefrom, recites the limitation “a set value” in line 7. Claim 1 also
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`recites the limitation “a value” in line 9 and again recites "a set value" in lines 11-12.
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`It
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`is unclear from the claim whether the value of line 9 is intended to be the same value of
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`line 7, or is intended to be a new, different value.
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`It is also unclear from the claim
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`whether the value of lines 11-12 is intended to be the same value of line 7, line 9, or is
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`intended to be a new, different value. This lack of clarity causes the claim to be
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`indefinite for failing to particularly point out and distinctly claim the subject matter which
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`the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
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`Regarding claim 1, the independent claim, from which claims 2-7 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.,"seta 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 it the “set value” associated with the first video mode changes
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`Page 5
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`Art Unit: 2662
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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...” (U.S. Publication at [0071]), instead of a language relating to a singular “set
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`value.”
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`Regarding claim 1, the independent claim, from which claims 2-7 depend and
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`inherit all limitations therefrom, recites the limitation “wherein a bracket capturing...”
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`without reciting specific structure to perform the recited functionality; a situation that
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`creates confusion regarding the elements of an apparatus claim. "[A]pparatus claims
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`cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch &
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`Lomb Inc., 909 F.2d 1464, 1469, 15 USPQZd 1525, 1528 (Fed. Cir. 1990).
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`Regarding claims 2-7, these apparatus claims do not recite sufficient structure to
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`perform the functionality for the material recited in each of the claims, creating confusion
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`regarding the metes and bounds of the material recited. "[A]pparatus claims cover what
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`a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
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`F.2d 1464, 1469, 15 USPQZd 1525, 1528 (Fed. Cir. 1990).
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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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`Application/Control Number: 15/366,557
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`Page 6
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`Art Unit: 2662
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the 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)(1) 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 case may be, names another inventor and was effectively filed
`before the effective filing date of the claimed invention.
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`Claims 1-7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by
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`U.S. Patent Publication No. 2011/0279709 to Nonaka et al (hereinafter “Nonaka”).
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`Regarding claim 1, Nonaka teaches an imaging device comprising an imaging
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`unit that generates image data from optical information input through an optical system
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`unit (fig. 1, element 21 through element 11), an image processor that performs a
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`predetermined process to the image data generated by the imaging unit (fig. 1, element
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`30; [0039], via elements 31 -35), and a controller (fig. 1, element 30) that controls at
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`least one of the optical system unit, the imaging unit, and the image processor based on
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`a set value relating to video capturing so as to generate video data ([0039], [0045]),
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`wherein the controller sets a set value relating to the video capturing in each of a first
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`video mode and a second video mode (e.g., [0044]), and automatically sets the set
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`value relating to the video capturing in the second video mode to a set value more
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`suitable for recording a still image than in the first video mode ([0044]-[0045]), and
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`wherein a bracket capturing that creates a plurality of image data by changing at least
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`one of capturing setting conditions is performed at a time of recording in the second
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`Page 7
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`Art Unit: 2662
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`video mode ([0045]; see 35 U.S.C. 112 rejection, supra, regarding lack of structural
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`element recited for performing the last clause).
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`Regarding claim 2, Nonaka teaches all of the limitations of claim 2 (see the 35
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`U.S.C. 102 rejection of claim 1, w) including teaching wherein while the bracket
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`capturing that creates the plurality of image data by the changing at least one of the
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`capturing setting conditions is performed, the recording in the second video mode is
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`performed from start to end of a video recording (fig. 3; see 35 U.S.C. 112 rejection,
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`supra, regarding lack of structural element recited for performing the functionality).
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`Regarding claim 3, Nonaka teaches all of the limitations of claim 3 (see the 35
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`1O
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`U.S.C. 102 rejection of claim 1, w) including teaching wherein at least one of the
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`capturing setting conditions is at least one of an exposure value ([0045]), a shutter
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`speed, a focus point, and a color tone (see 35 U.S.C. 112 rejection, supra, regarding
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`lack of structural element recited for performing the functionality).
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`Regarding claim 4, Nonaka teaches all of the limitations of claim 4 (see the 35
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`U.S.C. 102 rejection of claim 1, w) including teaching wherein the bracket capturing
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`that creates the plurality of image data by changing a plurality of the capturing setting
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`conditions is performed at the time of recording in the second video mode (e.g., fig. 3;
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`see 35 U.S.C. 112 rejection, supra, regarding lack of structural element recited for
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`performing the functionality).
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`Regarding claim 5, Nonaka teaches all of the limitations of claim 5 (see the 35
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`U.S.C. 102 rejection of claim 1, w) including teaching wherein the bracket capturing
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`is performed in a GOP (group of picture) ([0045], group of 3 images; see 35 U.S.C. 112
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`Application/Control Number: 15/366,557
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`Page 8
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`Art Unit: 2662
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`rejection, supra, regarding lack of structural element recited for performing the
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`functionality).
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`Regarding claim 6, Nonaka teaches all of the limitations of claim 6 (see the 35
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`U.S.C. 102 rejection of claim 1, w) including teaching wherein when the video data
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`acquired by the bracket capturing is reproduced, only | image in a GOP (group of
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`picture) is reproduced (fig. 6, [0051] on 28A2, wherein image A is interpreted as the first
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`image shot, | image in a group of 3 images; see 35 U.S.C. 112 rejection, supra,
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`regarding lack of structural element recited for performing the functionality, with
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`particular note to reproduction of the video data).
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`Regarding claim 7, Nonaka teaches all of the limitations of claim 7 (see the 35
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`U.S.C. 102 rejection of claim 1, w) including teaching wherein when the video data
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`acquired by the bracket capturing is reproduced frame by frame, images other than I
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`image in a GOP (group of picture) are displayed (fig. 6, [0051] on 28A1 and 28A3,
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`wherein images B and C are interpreted as other than the first image shot in a group of
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`3 images; see 35 U.S.C. 112 rejection, supra, regarding lack of structural element
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`recited for performing the functionality, with particular note to reproduction of the video
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`data).
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`Examiner’s Note
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`20
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`The Examiner cites particular figures, paragraphs, columns and line numbers in
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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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`Application/Control Number: 15/366,557
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`Page 9
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`Art Unit: 2662
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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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`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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`10
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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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`U.S. Patent No. 8,897,617 to Park et al teaches displaying still shots recorded
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`during a video capture mode.
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`U.S. Patent Publication No. 2015/0015774 to Sugie teaches multiple video
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`capture modes that adjust settings such as exposure, ISO and diaphragm.
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