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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
`
`SHIN.4PUSO1
`
`1061
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`CUTLER, ALBERT H
`
`2696
`
`05/25/2021
`
`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*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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://www.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) filed on 21 May 2020is/are: a)(¥ accepted or b)(J 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received 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 20210520
`
`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 21 May 2020.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)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.
`
`This office action is responsive to application 16/766,145 filed on May 21, 2020.
`
`Claims 1-7 are pending in the application and have been examined by the Examiner.
`
`Information Disclosure Statement
`
`2.
`
`The Information Disclosure Statement(IDS) filed on 5/21/20 and 11/09/20 were
`
`received and have been considered by the Examiner.
`
`Priority
`
`3.
`
`Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which
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`papers have been placedof recordin the file.
`
`Notice of Pre-AlA or AIA Status
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`4.
`
`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.
`
`Specification
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`5.
`
`The title of the invention is not descriptive. A newtitle is required that is clearly
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`indicative of the invention to which the claims are directed.
`
`6.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. — An elementin a claim for a combination may be
`expressed as a meansor step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An elementin a claim for a combination may be expressed as a meansor step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`suchclaim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 3
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`7.
`
`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
`
`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
`
`a claim element (also commonly referred to as a claim limitation) is limited by the
`
`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that meet the
`
`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph:
`
`(A)—the claim limitation uses the term “means”or “step” or a term used as a substitute
`
`for “means” that is a generic placeholder (also called a nonce term or a non-
`
`structural term having no specific structural meaning) for performing the claimed
`
`function;
`
`(B)
`
`the term “means”or “step” or the generic placeholderis modified by functional
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`language, typically, but not always linked by the transition word “for” (e.g.,
`
`“means for’) or anotherlinking word or phrase, such as “configured to” or “so
`
`that’: and
`
`(C)
`
`the term “means”or“step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means”(or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
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`Page 4
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`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
`
`acts to entirely perform the recited function.
`
`Absenceof the word “means”(or “step”) in a claim creates a rebuttable
`
`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AlIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites function without reciting
`
`sufficient structure, material or acts to entirely perform the recited function.
`
`Claim limitations in this application that use the word “means”(or “step”) are
`
`being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph,
`
`except as otherwise indicated in an Office action. Conversely, claim limitations in this
`
`application that do not use the word “means”(or “step”) are not being interpreted under
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
`
`indicated in an Office action.
`
`8.
`
`This application includes one or more claim limitations that do not use the word
`
`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
`
`that is coupled with functional language without reciting sufficient structure to perform
`
`the recited function and the generic placeholder is not precededby a structural modifier.
`
`Suchclaim limitation(s) is/are: “imaging unit” in claims 1-7.
`
`Becausethis/these claim limitation(s) is/are being interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 5
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`cover the corresponding structure described in the specification as performing the
`
`claimed function, and equivalents thereof.
`
`If applicant does not intend to have this/these limitation(s) interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the
`
`claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AlA
`
`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
`
`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
`
`sufficient structure to perform the claimed function so as to avoid it/them being
`
`interpreted under 35 U.S.C. 112(f) or pre-AlIA 35 U.S.C. 112, sixth paragraph.
`
`9.
`
`Claim limitations are interpreted under 35 USC 112(f) as follows:
`
`The “imaging unit” corresponds to a CMOSimage sensor (page 13, lines 4 and 5
`
`of the specification).
`
`Claim Rejections - 35 USC § 102
`
`10.
`
`‘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
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`11.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 6
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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 effectivefiling date of the claimed
`invention.
`
`12.
`
`Claims 1, 2, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Shioji (US 2013/0182178).
`
`Consider claim 1, Shioji teaches:
`
`An imaging device (figure 1) in and from which a battery (34) can befitted and
`
`removed(i.e. “installed”, paragraph 0047), the imaging device comprising:
`
`an imaging unit (“a CMOS imager unit”) configured to image a subject (paragraph
`
`0018);
`
`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
`
`been fitted in the imaging device (see paragraphs 0035 and 0047, step S3 offigure 3),
`
`the controller (16) configured to:
`
`(i) enable an action of the imaging unit by means of the power from the power
`
`supply terminal when the battery is fitted in the imaging device (i.e. to enable moving
`
`image photographing in step 37 of figure 4 when the battery is determined to be
`
`connected in step 35, paragraphs 0056, 0057 and 0047), and
`
`(ii) disable the action of the imaging unit that rely on the power from the power
`
`supply terminal when the battery is notfitted in the imaging device (i.e. preventing
`
`moving image photographing when the battery is determined not to be connectedin
`
`step 35, paragraphs 0058, 0059, 0047 and 0040-0042).
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 7
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`Consider claim 2, and as applied to claim 1 above, Shioji further teaches that the
`
`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
`
`3), and enable the action of the imaging unit by means of the power from the power
`
`supply terminal only when the remaining charge of the battery is sufficient for the action
`
`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
`
`controller (16) is configured to give a warning upon sensing that the battery is taken out
`
`when the action of the imaging unit is being performed by means of the power from the
`
`power supply terminal(i.e. in step 39 of figure 4, paragraphs 0058 and 0047).
`
`Consider claim 7, and as applied to claim 1 above, Shioji further teaches that the
`
`controller (16) is configured to enable the action of the imaging unit by turning ON
`
`power source when the batteryis fitted in the imaging device (i.e. so as to start the
`
`moving image photography, paragraphs 0057 and 0047).
`
`13.—In the event the determination of the status of the application as subject to AIA 35
`
`Claim Rejections - 35 USC § 103
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 8
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`14.—The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`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.
`
`15.
`
`+The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`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.
`
`16.
`
`Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shioji (US 2013/0182178) in view of Inai (US 2020/0106291).
`
`Consider claim 3, and as applied to claim 1 above, Shioji teaches that the
`
`controller (16) configuredto:
`
`(i) enable an action of the imaging unit by means of the power from the power
`
`supply terminal when the battery is fitted in the imaging device (i.e. to enable moving
`
`image photographing in step 37 of figure 4 when the battery is determined to be
`
`connected in step 35, paragraphs 0056, 0057 and 0047), and
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 9
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`(ii) disable the action of the imaging unit that rely on the power from the power
`
`supply terminal when the battery is notfitted in the imaging device (i.e. preventing
`
`moving image photographing when the battery is determined not to be connectedin
`
`step 35, paragraphs 0058, 0059, 0047 and 0040-0042).
`
`Shioji does not explicitly teach that an external device connected to the USB
`
`cable is a USB PD-compliant 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
`
`a battery (battery grip, 200), see paragraphs 0023 and 0024.
`
`Inai similarly teaches
`
`determining whether or not the battery (200) is connected(e.g. in step 100 of figure 4A,
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`paragraph 0070).
`
`However, Inai additionally teaches that an external device (adaptor, 300)
`
`connected to the USB cable (see figure 3C) is a USB PD-compliant device (“USB
`
`Power Delivery standards”, paragraph 0018).
`
`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 steps(i) and (ii) taught by
`
`Shioji be performed when an external device connected to the USB cable is a USB PD-
`
`compliant device as taught by Inai for the benefit of enabling an improved power supply
`
`path (Inai, paragraph 0005).
`
`Consider claim 4, and as applied to claim 3 above, Shioji further teaches that the
`
`controller (16) is configured to enable the action of the imaging unit that rely on the
`
`power from the power supply terminal when the external device connected to the USB
`
`

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`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 10
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`cable (i.e. the USB mobile power source, 32) is not a USB PD-compliant device and the
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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, Shioji does not explicitly 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 further teaches 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 (i.e. when the external device (800) uses another USB standard,
`
`paragraph 0018) and the batteryis fitted in the imaging device (see steps 100-103 of
`
`figure 4A, paragraphs 0070-0073).
`
`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 controller taught by
`
`Shioji be configured in the manner taughtby Inai for the benefit of enabling an improved
`
`power supply path (Inai, paragraph 0005).
`
`17.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shioji (US
`
`2013/01821 78) in view of Hasegawa (US 2020/0335995).
`
`Consider claim 5, and as applied to claim 1 above, Shioji further teaches that the
`
`imaging device comprises a display unit (LCD, 20) configured to display information in
`
`accordance with a command of the controller (see paragraph 0058).
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 11
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`However, Shioji does not explicitly teach that the information indicates whether or
`
`not an external device connected to the USB cable is a USB PD-compliant device.
`
`Hasegawasimilarly teaches an image capturing apparatus (100, figure 1)
`
`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).
`
`However, Hasegawaadditionally teaches that the display unit (107) displays
`
`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
`
`Shioji be configured to display information indicating whether or not an external device
`
`connected to the USB cable is a USB PD-compliant device as taught by Hasegawafor
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`the benefit of enabling the user to determine when the device is unable to receive power
`
`compliant with the USB PD specification (Hasegawa, paragraph 0045).
`
`18.=Any inquiry concerning this communication or earlier communications from the
`
`Conclusion
`
`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
`
`

`

`Application/Control Number: 16/766,145
`Art Unit: 2696
`
`Page 12
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Sinh Tran can be reached on (571)272-7564. The fax phone number for the
`
`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.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-
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`272-1000.
`
`/ALBERT H CUTLER/
`Primary Examiner, Art Unit 2696
`
`