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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/766,145
`
`05/21/2020
`
`Shingo HASHIMOTO
`
`SHIN4PUSO1
`
`1061
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`CUTLER, ALBERT H
`
`2696
`
`08/06/2021
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-2 and 4-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 4-7 is/are rejected.
`Claim(s) 8 is/are objectedto.
`£] Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) 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).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210802
`
`Application No.
`Applicant(s)
`16/766, 145
`HASHIMOTO, Shingo
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ALBERT H CUTLER
`2696
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 14 July 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 2
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`DETAILED ACTION
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`1.
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`This office action is responsive to communication filed on July 14, 2021.
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`Responseto Arguments
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`2.
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`Applicant asserts on page6 of the reply, that claim 1
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`is amendedto incorporate
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`previously presented claim 3, whereby a controller within the imaging device is
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`configured to detect whether or not the battery has been fitted in the imaging device.
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`The Examiner respectfully disagrees that claim 1 has the same scope as previously
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`presented claim 3, as claim 3 did not require the step of detecting whether or not an
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`external device connected to the USB cable is a USB PD-compliant device.
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`3.
`
`Applicant's arguments with respect to claims 1-6 have been considered but are
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`mootin view of the new grounds of rejection.
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`Information Disclosure Statement
`
`4.
`
`The IDS filed June 30, 2021 was received and has been considered by the
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`Examiner.
`
`Notice of Pre-AlA or AIA Status
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`5.
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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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`Specification
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`6.
`
`The objection to the Title is hereby removedin view of Applicant’s response.
`
`7.
`
`No claim limitations are interpreted to invoke 35 USC 112(f) at this time.
`
`Claim Interpretation
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 3
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`Claim Rejections - 35 USC § 103
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`8.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`9.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth in this Office action:
`
`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.
`
`10.
`
`‘The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized asfollows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`11.
`
`Claims 1, 2, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Shioji (US 2013/01821 78) in view of Nemoto (US 2018/0004694).
`
`Consider claim 1, Shioji teaches:
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 4
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`An imaging device (figure 1) in and from which a battery (34) can befitted and
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`removed(i.e. “installed”, paragraph 0047), the imaging device comprising:
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`an imaging sensor (“a CMOS imagerunit”) configured to image a subject
`
`(paragraph 0018);
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`a power supply terminal (USB terminal, 30) configured to supply power to the
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`imaging device via a USB cable (see paragraphs 0032, 0033 and 0036); and
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`a controller (CPU, 16) configured to detect whether or not the battery (34) has
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`been fitted in the imaging device (see paragraphs 0035 and 0047, step S3 offigure 3),
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`the controller (16) configured to:
`
`detecting whether or not an external device (USB mobile power source, 32)
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`connected to the USB cable is supplying power (step S1 of figure 3, paragraphs 0032,
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`0033 and 0047), and in a case the external device (32) is supplying power (“Yes’”, step
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`1 figure 1, “Batt_EXT<1”, step 2, figure 1):
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`(i) enable an action of the imaging sensor by means of the power from the power
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`supply terminal when the battery is fitted in the imaging device(i.e. to enable moving
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`image photographing in step 37 of figure 4 when the battery is determined to be
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`connected in step 35, paragraphs 0056, 0057 and 0047), and
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`(ii) disable the action of the imaging sensor that rely on the power from the power
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`supply terminal when the battery is notfitted in the imaging device (i.e. preventing
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`moving image photographing when the battery is determined not to be connected in
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`step 35, paragraphs 0058, 0059, 0047 and 0040-0042).
`
`However, Shioji does not explicitly teach detecting whether the external device
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`connected to the USB cable is a USB PD-compliant device.
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 5
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`Nemoto similarly teaches an imaging device (digital camera, 100, figure 3)
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`connectable to a battery (battery unit, 200, figure 3) and to an external device (smart
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`phone, 401, figure 4A) via a USB cable (403, figure 4A, paragraph 0043), and of
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`detecting whether or not the external device is a connected USB device (step 904 of
`
`figure 9, paragraph 0076).
`
`However, Nemoto additionally teaches detecting whether or not the external
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`device (401) connected to the USB cable (403) is a USB PD-compliant device (step 907
`
`of figure 9, paragraph 0078), and of performing USB PD feeding when the external
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`device is a USB PD-compliant device (see step 908, paragraphs 0079 and 0043).
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`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`before the effective filing date of the claimed invention to have the detecting of the USB-
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`connected external device taught by Shioji comprise detecting whether or not the
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`external device is a USB PD-compliant device as taught by Nemotoasthis only
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`involves combining prior art elements according to known methods to yield predictable
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`results such as enabling USB PD-compliant feeding when appropriate and available
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`while effectively avoiding apparatus failure (Nemoto, paragraph 0095).
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`The Examiner notesthat steps (i) and (ii) taught by Shioji are performed based
`
`upon detection of a USB connection to a power supply (Shioji, paragraph 0047), and
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`are thus performedirrespective of the type of USB connection.
`
`Consider claim 2, and as applied to claim 1 above, Shioji further teaches that the
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`controller (16) is configured to detect a remaining charge of the battery (34) when the
`
`battery is fitted in the imaging device (see paragraphs 0035 and 0048, step 5 offigure
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`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 6
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`3), and enable the action of the imaging sensor by means of the power from the power
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`supply terminal only when the remaining charge of the battery is sufficient for the action
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`of the imaging device (see paragraph 0057, step 37 of figure 4).
`
`Consider claim 6, and as applied to claim 1 above, Shioji further teaches that the
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`controller (16) is configured to give a warning upon sensing that the battery is taken out
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`when the action of the imaging sensor is being performed by means of the power from
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`the power supply terminal(i.e. in step 39 of figure 4, paragraphs 0058 and 0047).
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`Consider claim 7, and as applied to claim 1 above, Shioji further teaches that the
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`controller (16) is configured to enable the action of the imaging sensor by turning ON
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`power source when the batteryis fitted in the imaging device (i.e. so as to start the
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`moving image photography, paragraphs 0057 and 0047).
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`12.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over the
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`combination of Shioji and Nemoto, as applied to claim 1 above, and further in view of
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`Inai (US 2020/0106291).
`
`Consider claim 4, and as applied to claim 1 above, Shioji further teaches that the
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`controller (16) is configured to enable the action of the imaging sensor that rely on the
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`power from the power supply terminal when the external device connected to the USB
`
`cable (i.e. the USB mobile power source, 32) is not a USB PD-compliant device and the
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 7
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`battery (34)is fitted in the imaging device(i.e. in step 37 of figure 4, paragraphs 0057
`
`and 0047).
`
`However, the combination of Shioji and Nemoto doesnotexplicitly teach that the
`
`controller is configured to prohibit charging of the battery when the external device
`
`connected to the USB cable is not a USB PD-compliant device and the battery is fitted
`
`in the imaging device.
`
`Inai similarly teaches an imaging device (image capturing apparatus, 100, figure
`
`3C) connectable to a power source through a USB connector (201) and connectable to
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`a battery (battery grip, 200), see paragraphs 0023 and 0024.
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`Inai similarly teaches
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`determining whether or not the battery (200) is connected (e.g. in step 100 of figure 4A,
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`paragraph 0070).
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`Inai further teaches that the controller is configured to prohibit charging of the
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`battery when the external device connected to the USB cable is not a USB PD-
`
`compliant device (i.e. when the external device (800) uses another USB standard,
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`paragraph 0018) and the batteryis fitted in the imaging device (see steps 100-103 of
`
`figure 4A, paragraphs 0070-0073).
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`Therefore, it would have been obvious to a person having ordinary skill in the art
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`before the effective filing date of the claimed invention to have the controller taught by
`
`the combination of Shioji and Nemoto be configured in the manner taughtby Inai for the
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`benefit of enabling an improved power supply path (Inai, paragraph 0005).
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 8
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`13.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the
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`combination of Shioji and Nemoto, as applied to claim 1 above, and furtherin view of
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`Hasegawa (US 2020/0335995).
`
`Consider claim 5, and as applied to claim 1 above, Shioji further teaches that the
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`imaging device comprises a display unit (LCD, 20) configured to display information in
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`accordance with a command of the controller (see paragraph 0058).
`
`Nemoto teachesthat the external device is a USB PD-compliant device (see
`
`paragraph 0078, claim 1 rationale).
`
`However, the combination of Shioji and Nemoto doesnotexplicitly teach that the
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`displayed information indicates whether or not an external device connected to the USB
`
`cable is a USB PD-compliant device.
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`Hasegawasimilarly teaches an image capturing apparatus (100, figure 1)
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`comprising a display unit (display panel, 107, paragraph 0019), wherein the image
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`capturing apparatus (100) is connected to a power supply apparatus (200) via a USB
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`unit (108, paragraphs 0019 and 0025).
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`However, Hasegawaadditionally teaches that the display unit (107) displays
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`information indicating whether or not the external device connected to the USB cable is
`
`a USB PD-compliant device (see step 309 of figure 3, paragraph 0045).
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`before the effective filing date of the claimed invention to have the display unit taught by
`
`the combination of Shioji and Nemoto be configured to display information indicating
`
`whether or not an external device connected to the USB cable is a USB PD-compliant
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 9
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`device as taught by Hasegawafor the benefit of enabling the user to determine when
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`the device is unable to receive power compliant with the USB PD specification
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`(Hasegawa, paragraph 0045).
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`Allowable Subject Matter
`
`14.
`
`Claim 8 is objected to as being dependent upon a rejected base claim, but would
`
`be allowable if rewritten in independent form including all of the limitations of the
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`base claim and any intervening claims.
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`15.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
`
`Consider claim 8, the prior art of record does not teach nor reasonably suggest
`
`that the controller is configuredto: (iii) enable the action of the imaging sensor and
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`prohibit charging of the battery in case of a power switch of the image device being ON,
`
`whenthe external device connected to the USB cable is not a USB PD-compliant
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`device and the batteryis fitted in the imaging device; and (iv) enable the action of the
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`imaging sensor and allow charging of the battery in case of the power switch of the
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`image device being ON, when the external device connected to the USB cable is a USB
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`PD-compliant device and the batteryis fitted in the imaging device, in combination with
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`the other elements recited in parent claim 1.
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 10
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`Conclusion
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`16.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
`
`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
`
`17.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALBERT H CUTLER whosetelephone number is
`
`(571)270-1460. The examiner can normally be reached on approximately Mon- Fri
`
`8:00-4:30.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 11
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Sinh Tran can be reached on (571)272-7564. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`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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`272-1000.
`
`/ALBERT H CUTLER/
`Primary Examiner, Art Unit 2696
`
`