www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/911,464
`
`06/25/2020
`
`Koji SHIBUNO
`
`AOYA22PUSO01
`
`8030
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`NGUYEN, LUONG TRUNG
`
`2698
`
`09/20/2021
`
`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*
`1-5 and 7-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-5 and 7-9 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`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 6/25/2020 is/are: a). accepted or b)@ 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)Z) 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)X) All
`1.2 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 20210914
`
`Application No.
`Applicant(s)
`16/911,464
`SHIBUNO, Koji
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LUONG T NGUYEN
`2698
`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 6/20/2021.
`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: 16/911,464
`Art Unit: 2698
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Information Disclosure Statement
`
`2.
`
`The information disclosure statements (IDS) submitted on 04/28/2021 and 05/14/2021 areis in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis
`
`being considered by the examiner.
`
`Drawings
`
`3.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of
`
`the invention specified in the claims. Therefore, the “user interface’” as amended in claims 1,2, 7, 9,
`
`must be shownor the feature(s) canceled from the claim(s). No new matter should be entered.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office
`
`action to avoid abandonmentof the application. Any amended replacement drawing sheet should
`
`include all of the figures appearing on the immediateprior version of the sheet, even if only one figureis
`
`being amended. The figure or figure number of an amended drawing should not be labeled as
`
`“amended.”If a drawing figure is to be canceled, the appropriate figure must be removed from the
`
`replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate
`
`changes made to the brief description of the several views of the drawings for consistency. Additional
`
`replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing
`
`sheet submitted after the filing date of an application must be labeled in the top margin as either
`
`“Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 3
`
`the examiner, the applicant will be notified and informed of any required corrective action in the next
`
`Office action. The objection to the drawings will not be held in abeyance.
`
`Specification
`
`4.
`
`The specification is objected to asfailing to provide proper antecedent basis for the claimed
`
`subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(0). Correction of the following is required:
`
`The specification fails to provide proper antecedentbasis for the claim limitation “user
`
`interface,” as amended in claims 1, 2, 7, 9.
`
`5.
`
`Claims 8-9 are objected to because of the following informalities:
`
`Claim Objections
`
`Claim 8 (line 4), “an evaluation value” should be changed to --the evaluation value--.
`
`Claim 9 (line 3), “a user operation” should be changed to --the user operation--.
`
`Claim 9 (line 4), “a position” should be changed to --the position--.
`
`Appropriate correction is required.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine grounded
`6.
`in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
`extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple
`assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not
`identical, but at least one examined application claim is not patentably distinct from the reference
`claim(s) because the examined application claim is either anticipated by, or would have been obvious
`over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
`Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164
`USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
`overcome an actual or provisional rejection based on nonstatutory double patenting provided the
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 4
`
`reference application or patent either is shown to be commonly owned with the examined application,
`or claims an invention made as a result of activities undertaken within the scope of a joint research
`agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146et seq. for applications not subject
`to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be
`signed in compliance with 37 CFR 1.321(b).
`The USPTOInternet website contains terminal disclaimer forms which may be used. Pleasevisit
`www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed
`determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A
`web-based eTerminal Disclaimer maybefilled out completely online using web-screens. An eTerminal
`Disclaimer that meetsall requirements is auto-processed and approved immediately upon submission.
`For more information about eTerminal Disclaimers, refer to
`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`7.
`
`Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of copending Application No. 16/911,496 (Amendmentfiled on 6/30/2021) in
`
`view of Onozawa (US 7,324,151).
`
`Regarding instant application claim 1, copending application claim 1 discloses an imaging
`
`apparatus, comprising:
`
`an imager (an imager, copending application claim 1, lines 2-3) configured to capture a subject
`
`image formed via an optical system including a focus lens (a focus lens, copending application claim 1,
`
`lines 2-3), to generate image data;
`
`a user operation to reduce or increase a distance to a subject to be focused automatically
`
`(copending application claim 1, lines 9-13); and
`
`a controller configured to control a focusing operation for adjusting a position of the focus lens
`
`along an optical axis in the optical system according to an evaluation value for a focus state (copending
`
`application claim 1, lines 4-6),
`
`in response to the user operation in a case wherea first subject and a second subject having a
`
`different distance from the imaging apparatus than the first subject are within an autofocus area and
`
`the focusing operation automatically focuses on the second subject with the first subject being out of
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 5
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`focus (copending application claim 1, lines 9-13), the controller is operable to control the focusing
`
`operation to shift the position of the focus lens (copending application claim 1, lines 19-20).
`
`Copending application claim 1 fails to disclose:
`
`a display configured to display an imageindicated by the imagedata;
`
`a user interface configured to receive a user operation to reduce or increase a distance to a
`
`subject to be focused automatically
`
`wherein the controller is operable to cause the display to display a graph indicating the
`
`evaluation value for the focus state in each position of the focus lens.
`
`However, Onozawadiscloses:
`
`a display (display unit 8, figures 1-3, column 3, line 60 — column 4, line 30) configured to display
`
`an imageindicated by the image data;
`
`user interface (operation section 9, figure 1, column2, lines 42-67) configured to receive a user
`
`operation, and
`
`wherein the controller is operable to cause the display to display a graph indicating the
`
`evaluation value for a focus state in each position of the focus lens (the focusing condition display is
`
`shown on the screen of the LCD 82 as a distribution graph, figures 1-3, column 3, line 60 — column 4,line
`
`30).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify the device in Copending application claim 1 by the
`
`teaching of Onozawain order to let a user to visually recognize a current position of the focus lens
`
`corresponds to obtained focus evaluation value (column 3, lines 30-35).
`
`This is a provisional nonstatutory double patenting rejection.
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 6
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`Claim Rejections - 35 USC § 103
`
`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-AlA 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 eitherstatus.
`
`9.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth 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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`10.
`
`Claims 1-4, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brunner et al. (US
`
`9,477,138) in view of Onozawa (US 7,324,151).
`
`Regarding claim 1, Bruner etal. discloses an imaging apparatus, comprising:
`
`an imager(image sensor 205, figures 2A-2C, 14, column 3, lines 45-67; column 8, lines 37-67)
`
`configured to capture a subject image formed via an optical system (lens assembly 215, figures 2A-2C,
`
`14, column 3, lines 45-67; column 8, lines 37-67) including a focus lens (focus lens included in lens
`
`assembly 215, figures 2A-2C, 14, column 3, lines 45-67; column 8, lines 37-67), to generate image data;
`
`a display (display 1410, figures 1, 14, column 1, lines 35-50; column 8, lines 37-67) configured to
`
`display an imageindicated by the image data;
`
`user interface (user interface 1415, figures 3, 14, column 4, lines 6-19; column 4 line 46 - column
`
`5, line 23; column 8, lines 37-67) configured to receive a user operation to reduce or increase a distance
`
`to a subject to be focused automatically; and
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 7
`
`a controller (processor 1405, figures 2A-2C, 3, 5, 8, 14; column 3, lines 45-67; column 4,lines 6-
`
`19; column 4, line 46 - column 5,line 23; column 8, line 37 — column 9, line 34) configured to control a
`
`focusing operation for adjusting a position of the focus lens along an optical axis in the optical system
`
`according to an evaluation value for a focus state, wherein
`
`in responseto the user operation in a case wherea first subject (flower 110, figure 1, column 1,
`
`lines 25-50) and a second subject (grass 115, figure 1, column 1, lines 25-50) having a different distance
`
`from the imaging apparatus than the first subject are within an autofocus area (autofocus area 105,
`
`figure 1, column 1, lines 25-50) and the focusing operation automatically focuses on the second subject
`
`(grass 115, figure 1, column 1, lines 25-50) with the first subject (flower 110, figure 1, column 1, lines 25-
`
`50) being out of focus, the controller is operable to control the focusing operation to shift the position of
`
`the focus lens (the autofocus system judges the lens position needed to bring the background grassinto
`
`focus as proper, figure 1, column 1, lines 25-50).
`
`Bruner etal. fail to disclose wherein the controller is operable to cause the display to display a
`
`graph indicating the evaluation value for a focus state in each position of the focus lens.
`
`However, Onazawadiscloses wherein the controller is operable to cause the display to display a
`
`graph indicating the evaluation value for a focus state in each position of the focus lens (the focusing
`
`condition display is shown on the screen of the LCD 82 as a distribution graph, figures 1-3, column 3,line
`
`60 — column 4,line 30).
`
`Therefore, it would have been obvious to one of ordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify the device in Brunner et al. by the teaching of Onozawain
`
`orderto let a user to visually recognize a current position of the focus lens corresponds to obtained
`
`focus evaluation value (column 3, lines 30-35).
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 8
`
`Regarding claim 2, Onozawa discloses wherein the controller is operable to move the focus
`
`lens according to a user operation input to the user interface with the graph being displayed (figures 1-
`
`5, column 5,line 55 — column 6,line 21).
`
`Regarding claim 3, Onozawa discloses wherein the controller is operable to cause the display to
`
`display a pointer (bar 123, figures 2-3, column 3, line 60 — column 4,line 15) indicating a current position
`
`of the focus lens in the graph.
`
`Regarding claim 4, Onozawa discloses wherein the controller is operable to cause the display
`
`to display a marker (bar 123, figures 2-3, column 3, line 60 — column 4,line 15) indicating a focus
`
`position detected by the focusing operation in the graph.
`
`Regarding claim 7, Brunner et al. discloses wherein in response to the instruction given during
`
`an operation of continuously repeating the focusing operation, the controller is operable to shift the
`
`position of the focus lens and perform the focusing operation again (figure 3, column 4,lines 6-19;
`
`column 4,line 46 - column 5,line 23).
`
`Regarding claim 8, Onozawa discloses when the focusing operation is controlled to shift the
`
`position of the focus lens with the graph being displayed on the display (figures 2, 3,column 3, line 59 —
`
`column 4, line 30), the controller updates the displayed graph to add therein an evaluation value
`
`obtained after the position of the focus lens is shifted (figures 2, 3,column 3, line 59 — column 4,line 30).
`
`11.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Brunner etal. (US 9,477,138)
`
`in view of Onozawa (US 7,324,151) further in view of CHEONG etal. (US 2016/0103830).
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 9
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`Regarding claim 5, Brunner et al. and Onozawafail to disclose wherein the marker includes a
`
`thumbnail image based on the image data generated by the imager at the focus position.
`
`However, CHEONG etal. discloses wherein the marker includes a thumbnail image based on
`
`the image data generated by the imager at the focus position (CHEONG etal. discloses a thumbnail
`
`correspondingto a position of the scene marker whichis closest to the current pause position 110is
`
`displayed, figures 1A-1D, 3A-3D, paragraphs [0055], [0069]-[0070)).
`
`Therefore, it would have been obvious to one of ordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify the device in Brunner et al. and Onozawabythe teaching
`
`of CHEONG etal. in order to let a user to visually select a desire scene to be focus.
`
`12.
`
`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Brunner etal. (US 9,477,138)
`
`in view of Onozawa (US 7,324,151) further in view of Matsumoto (US 2019/0394409).
`
`Regarding claim 5, Brunner et al. and Onozawafail to disclose wherein
`
`the user interface is operable to receive a user operation on the displayed graph for pointing a
`
`position of the focus lens in the displayed graph, and
`
`the controller is operable to move the focus lens to the pointed position according to the user
`
`operation on the displayed graph.
`
`However, Matsumoto discloses disclose wherein
`
`the user interface (display unit 28, figures 2A, 3, paragraphs [0025], [0061]-[0071]) is operable to
`
`receive a user operation on the displayed graph (bar 305, figures 2A, 3, paragraphs [0025], [0061]-
`
`[0071]) for pointing a position of the focus lens (focus distance indicator 305 indicates a position of focus
`
`lens, figure 3, paragraphs [0025], [0071], [0075]) in the displayed graph, and
`
`the controller is operable to move the focus lens to the pointed position according to the user
`
`operation on the displayed graph (figure 3, paragraphs [0025], [0071]-[0075]).
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 10
`
`Therefore, it would have been obvious to one of ordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify the device in Brunner et al. and Onozawabythe teaching
`
`of Matsumotoin order to provide an electronic device capable of appropriately assisting focus
`
`adjustment operation madeby a user in accordance with the properties of a lens unit (paragraph
`
`[0005]).
`
`Conclusion
`
`13.
`
`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 shortened statutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
`
`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHS from the date of this final action.
`
`14.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to LUONG TRUNG NGUYEN whose telephone number is (571)272-7315. The
`
`examiner can normally be reached on 7:30AM-5:00PM, MONDAY- THURSDAY.
`
`

`

`Application/Control Number: 16/911,464
`Art Unit: 2698
`
`Page 11
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`TWYLER HASKINS can be reached on (571) 272-7406. The fax phone number for the organization where
`
`this application or proceedingis 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 PAIR system, contact
`
`the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LUONG T NGUYEN/
`Primary Examiner, Art Unit 2698
`9/15/2021
`
`