Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 1 of 11 PageID #: 6895
`Case 5:19-cv-00036—RWS Document 161-16 Filed 12/09/19 Page 1 of 11 PageID #: 6895
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`EXHIBIT O
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`EXHIBIT 0
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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 2 of 11 PageID #: 6896
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`
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`UNITED STATES DEPARTMENT OF COMNHZRCE
`United States Patent and Trademark Office
`Address: COMMISS IONER FOR PATIENTS
`PO. Box 1450
`.AIexandria1 Virginia 22313-1450
`www.mspto.gov
`
`APPLICATION NO
`FILING DATE
`FIRST NAMIfl) INVENTOR
`ATTORNEY DOC KEI NO.
`CONFIRMATION NO.
`
`500.38315VC3
`9653
`12/845,266
`07/28/2010
`Takahiro Nakano
`
`03/14/2012
`7590
`20457
`ANTONETTT, TERRY, STOUT & KRAus, UT
`1300 NORTH SEVENTEENTH STREET
`
`SUITE 1800
`ARLINGTON, VA 22209—3873
`
`i
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`‘
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`‘
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`{
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`NGUYEN, LUONG'I‘RUNG
`
`‘
`2622
`
`‘
`PAPER “UMBER
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`MAIL DATE
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`03/ 14/2012
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`DELIVERY MODE
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`PAPER
`
`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.
`
`PTOL—90A (Rev. 04/07)
`
`MAXELL_APPLE0001452
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`

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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 3 of 11 PageID #: 6897
`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 3 of 11 PagelD #: 6897
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`12/845,266
`NAKANO ET AL.
`
`Examiner
`Art Unit
`LUONG T. NGUYEN
`2622
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1 136(a).
`In no event however may a reply be timely filed
`after SIX ( 6) MONTHS from the mailing date of this communication
`It 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. § 138).
`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).
`
`Status
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`1). Responsive to communication(s) filed on 28 July 2010.
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`2a)[:] This action is FINAL.
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`2b)- This action is non—final.
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`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)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 0.6. 213.
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` Attachment(s)
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`Disposition of Claims
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`5)Xl Claim(s)1—_16is/are pending in the application.
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`5a) Of the above Claim(s) _ is/are withdrawn from consideration.
`6 E] Claim 3) _ is/are allowed.
`_161- is/are rejected.
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`is/are objected to.
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`are subject to restriction and/or election requirement.
`
`Application Papers
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`10)I:l The specification is objected to by the Examiner.
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`11)|Xl The drawing(s) filed on 28 July 2010 is/are: a). accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO—152.
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`Priority under 35 U.S.C. § 119
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`13)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)- All
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`b)[:] Some * c)[:I None of:
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`1.. Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. _
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`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)).
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`* See the attached detailed Office action for a list of the certified copies not received.
`
`1) E Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) E information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mail Date _.
`U.S. Patent and Trademark Office
`
`4) [I Interview Summary (PTO—413)
`Paper NOIS )/Mail Date. _
`5)I:I Notice OI Informal Patent Application
`6)I:I Other:—
`
`PTOL—326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20120310
`
`MAXELL_APPLE0001453
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`

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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 4 of 11 PageID #: 6898
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 4 of 11 PageID #: 6898
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`Application/Control Number: 12/845,266
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`Page 2
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`Art Unit: 2622
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`DETAILED ACTION
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`Priority
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`1.
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`Receipt is acknowledged of papers submitted under 35 U.S.C. ll9(a)—(d), which papers
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`have been placed of record in the file.
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`Information Disclosure Statement
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`2.
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`The information disclosure statement (IDS) submitted on 07/28/2010 is in compliance
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`with the provisions of 37 CFR 197. Accordingly, the information disclosure statement is being
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`considered by the examiner.
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`Claim Objections
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`3.
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`Claims 1—4, 9, 11—16 are objected to because of the following informalities:
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`Claim 1 (line 8), “a display screen” should be changed to ——the display screen——.
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`Claim 4 (line 7), “a moving video mode” should be changed to ——the moving video mode—
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`Claim 9 (line 3), “a display screen” should be changed to ——a display screen.——.
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`Claim ll (line 10), “the static image mode” should be changed to ——a static image mode——
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`Claim 11 (lines ll, 12), “a static image mode” should be changed to ——the static image
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`mode——.
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`Claims 2—4 are objected as being dependent from claim 1.
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`MAXELL_APPLE0001454
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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 5 of 11 PageID #: 6899
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`Application/Control Number: 12/845,266
`Art Unit: 2622
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`Page 3
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`Claims 12-16 are objected as being dependent from claim 11.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 112
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`4.
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`The following is a quotation of the first paragraph of 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the manner and process of making
`and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it
`pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode
`contemplated by the inventor of carrying out his invention.
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`5.
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`Claims 6 and 12 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply
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`with the enablement requirement. The claim(s) contains subject matter which was not described
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`in the specification in such a way as to enable one skilled in the art to which it pertains, or with
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`which it is most nearly connected, to make and/or use the invention.
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`Claim 6 recites limitation "wherein when recording an image in the moving video mode,
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`the pixel lines do not include one or more pixel lines at a top and/or bottom of the sensor, and the
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`portion of the pixel lines used does not include one or more pixels at a left extreme and/or right
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`extreme of the pixel lines," contains subject matter which was not described in the specification
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`in such a way as to enable one skilled in the art to which it pertains, or with which it is most
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`nearly connected, to make and/or use the invention.
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`Claim 12 recites limitation "wherein when recording an image in the moving video mode,
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`the pixel lines do not include one or more pixel lines at a top and/or bottom of the sensor, and the
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`portion of the pixel lines used does not include one or more pixels at a left extreme and/or right
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`extreme of the pixel lines," contains subject matter which was not desc1ibed in the specification
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`MAXELL_APPLE000 1455
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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 6 of 11 PageID #: 6900
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 6 of 11 PageID #: 6900
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`Application/Control Number: 12/845,266
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`Page 4
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`Art Unit: 2622
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`in such a way as to enable one skilled in the art to which it pertains, or with which it is most
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`nearly connected, to make and/or use the invention.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
`6.
`grounded 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 obviousness—type 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 017mm, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
`
`Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and 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 a nonstatutory double patenting
`ground provided the conflicting application or patent either is shown to be commonly owned
`with this application, or claims an invention made as a result of activities undertaken within the
`scope of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR
`3.73(b).
`
`7.
`
`Claims 1—5, 7—1 1, 13—16 are rejected on the ground of nonstatutory obviousness—type
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`double patenting as being unpatentable over claims 1, 2, 6, 8, 13, 14, 18, 20 of U.S. Patent No.
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`6,765,616. Although the conflicting claims are not identical, they are not patentably distinct
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`from each other because of the following reasons.
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`Claim 1 of the instant application is anticipated by patent claims 1 and 6 in that patent
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`claims 1 and 6 contain all the limitations of claim 1 of the instant application. Noted that patent
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`claims 1 and 6 disclose an electronic camera and displaying images on a display screen in
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`MAXELL_APPLE0001456
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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 7 of 11 PageID #: 6901
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 7 of 11 PageID #: 6901
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`Application/Control Number: 12/845,266
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`Page 5
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`Art Unit: 2622
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`moving images mode and still images mode. This indicates that the electronic camera has
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`function of recording in a moving video mode and static image mode. Claim 1 of the instant
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`application therefore is not patently distinct from the earlier patent claim and as such is
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`unpatentable for obvious—type double patenting.
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`All the limitations of the instant application claim 2 are encompassed by the limitation of
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`the patent claims 1 and 6.
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`All the limitations of the instant application claim 3 are encompassed by the limitation of
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`the patent claims 1 and 6.
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`All the limitations of the instant application claim 4 are encompassed by the limitation of
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`the patent claims 1 and 8.
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`Claim 1 of the instant application is anticipated by patent claims 13 and 18 in that patent
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`claims 13 and 18 contain all the limitations of claim 1 of the instant application. Noted that
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`patent claims 13 and 18 disclose an electronic camera and displaying images on a display screen
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`in moving images mode and still images mode. This indicates that the electronic camera has
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`function of recording in a moving video mode and static image mode. Claim 1 of the instant
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`application therefore is not patently distinct from the earlier patent claim and as such is
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`unpatentable for obvious—type double patenting.
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`MAXELL_APPLE0001457
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`

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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 8 of 11 PageID #: 6902
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 8 of 11 PageID #: 6902
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`Application/Control Number: 12/845,266
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`Page 6
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`Art Unit: 2622
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`All the limitations of the instant application claim 2 are encompassed by the limitation of
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`the patent claims 1 and 18.
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`All the limitations of the instant application claim 3 are encompassed by the limitation of
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`the patent claims 1 and 18.
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`All the limitations of the instant application claim 4 are encompassed by the limitation of
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`the patent claims 1 and 20.
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`Regarding application claim 5, application claim 5 is rejected for the same reason given
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`in application claim 1 as discussed above.
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`Regarding application claim 7, application claim 7 is rejected for the same reason given
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`in application claim 4 as discussed above.
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`Regarding application claim 8, application claim 8 is rejected for the same reason given
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`in application claim 2 as discussed above.
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`All the limitations of the instant application claim 9 are encompassed by the limitation of
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`the patent claims 1 and 2.
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`MAXELL_APPLE0001458
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`

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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 9 of 11 PageID #: 6903
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 9 of 11 PageID #: 6903
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`Application/Control Number: 12/845,266
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`Page 7
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`Art Unit: 2622
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`All the limitations of the instant application claim 10 are encompassed by the limitation
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`of the patent claims 1 and 2.
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`All the limitations of the instant application claim 9 are encompassed by the limitation of
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`the patent claims 13 and 14.
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`All the limitations of the instant application claim 10 are encompassed by the limitation
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`of the patent claims 13 and 14.
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`Instant application claims 11, 13—16 are method claims of instant application apparatus
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`claims 5, 7—10, respectively. Therefore, instant application claims 1 1, 13—16 are rejected for the
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`same reason given in instant application apparatus claims 5, 7—10, respectively.
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`8.
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`Claims 6, 12 are rejected on the ground of nonstatutory obviousness—type double
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`patenting as being unpatentable over claims 1, 6, 13, 18 of US. Patent No. 6,765,616 in view of
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`Hijishiri et al. (US 6,906,746).
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`Regarding instant application claims 6, 12. Patent claims 1 and 6 fail to disclose wherein
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`when
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`recording
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`an
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`image
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`in
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`the
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`moving
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`video
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`mode,
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`the
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`pixel
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`lines do not
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`include one or more pixel
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`lines at a top and/or bottom of the sensor,
`
`and the portion of
`
`the pixel
`
`lines used does not
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`include one or more pixels at a
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`left extreme and/or right extreme of the pixel lines.
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`MAXELL_APPLE0001459
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`

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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 10 of 11 PageID #: 6904
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 10 of 11 PageID #: 6904
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`Application/Control Number: l2/845,266
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`Page 8
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`Art Unit: 2622
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`However, Hijishiri et al. discloses a digital camera in which when in a display movie
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`image (figure 2, step 22), image data in a cropping area as shown in figures 2, 4, step 26) is
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`stored in image memory, column 6, lines l2—65. Therefore, it would have been obvious to
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`ordinary skill in the art at the time the invention was made to modify the device in Patent claims
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`1 and 6 in order to increase the number of image data stored in image memory.
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`Regarding instant application claims 6, l2. Patent claims 13 and l8 fail to disclose
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`wherein when recording an image in the moving video mode, the pixel lines do not include one
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`or more pixel lines at a top and/or bottom of the sensor, and the portion of the pixel lines used
`
`does not include one or more pixels at a left extreme and/or right extreme of the pixel lines.
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`However, Hijishiri et al. discloses a digital camera in which when in a display movie
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`image (figure 2, step 22), image data in a cropping area as shown in figures 2, 4, step 26) is
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`stored in image memory, column 6, lines l2—65. Therefore, it would have been obvious to
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`ordinary skill in the art at the time the invention was made to modify the device in Patent claims
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`13 and 18 in order to increase the number of image data stored in image memory.
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`Conclusion
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`9.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`Udagawa (US 6,519,000) discloses image pickup apparatus with mode switching
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`between a still picture mode and a moving picture mode.
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`lizuka (US 5,847,758) discloses color CCD solid—state image pickup device.
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`MAXELL_APPLE0001460
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`Case 5:19-cv-00036-RWS Document 161-16 Filed 12/09/19 Page 11 of 11 PageID #: 6905
`Case 5:19-cv-OOO36-RWS Document 161-16 Filed 12/09/19 Page 11 of 11 PageID #: 6905
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`Application/Control Number: l2/845,266
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`Page 9
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`Art Unit: 2622
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`10.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LUONG T. NGUYEN whose telephone number is (571)272—
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`7315. The examiner can normally be reached on 7:30AM — 5:00PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, DAVID L. OMETZ can be reached on (571) 272—7593. The fax phone number for
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`the organization Where this application or proceeding is assigned is 571—273—8300.
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`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 http://pair—direct.uspto.gov. Should you have questions on access to 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
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272— 1000.
`
`/LUONG T NGUYEN/
`
`Primary Examiner, Art Unit 2622
`03/10/12
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`MAXELL_APPLE0001461
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`