UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/322,422
`
`01/31/2019
`
`Kazuo SHIKAMA
`
`243045000083
`
`9661
`
`759°
`698°
`TROUTMAN SANDERS LLP
`
`08/28/2019
`
`600 Peachtree St., NE, Suite 3000
`Atlanta, GA 30308
`
`FULLER” RODNEY EVAN
`
`ART UNIT
`
`2852
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`08/28/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`
`jim. schutz @ troutmansanders .Com
`patents @ troutmansanders . com
`ryan. sehneider@ troutmans anders . com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`16/322,422
`Examiner
`RODNEY FULLER
`
`Applicant(s)
`SHIKAMA et al.
`Art Unit
`AIA (FITF) Status
`2852
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 01/31/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—18 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`Claim(s) fl is/are objected to.
`
`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 01/31/2019 is/are: a). 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:
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`a). All
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`b)|:] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.|:] Certified copies of the priority documents have been received in Application No.
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`3D Copies of the certified copies of the priority documents have been received in 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.
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`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190822
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`

`

`Application/Control Number: 16/322,422
`Art Unit: 2852
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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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.
`
`Claim Rejections - 35 USC § 1 12
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`3.
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`Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards
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`as the invention.
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`Claim 4 includes the limitation “a stepped portion, wherein content is
`”
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`supported by the frame ..... It is unclear to what structure the term “content” is
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`referring to in the claims.
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`Claim Rejections - 35 USC § 102
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`4.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or othenNise available to the public before the effective filing date of the claimed
`invention.
`
`

`

`Application/Control Number: 16/322,422
`Art Unit: 2852
`
`Page 3
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`5.
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`Claim(s) 1-4, 7, 8 and 11-18 is/are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Sakai Katsuhiro, et al. (JP 2007033650).
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`(Note: The following rejection
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`corresponds to the Written Opinion for PCT/JP2017/019646.)
`
`Regarding claim 1, Sakai Katsuhiro discloses “a driving member (Fig. 3, rate 4);
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`a frame (Fig. 3, ret.# 5) equipped with a driving frame chamber that centairts the driving
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`member; a hiade supporting member (Fig. 3, retrt t) that has an cpening (Fig. 3, ref.#
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`ta), and that structures a hiade chamber that is separate trcm the driving trame
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`chamber; and a biade memher (Fig. :33 retit 3) that is centained in the hiade chamber
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`and that is met/ed hy the driving member te advance irttc the cpehihg (Fig. 3, ref.# 1a).”
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`Regarding ctaim 2, Sakai Katsuhiro discieses “wherein: the hiade supperting chit
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`(Fig, 3, ref. i) is dispcsed with a pcrtien thereet pretrtidihg tc the etitside et the frame
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`(Fig. 3, refit 5}, with the epenihg eutside at the frame,” (See Figure)
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`Regarding ciaim 3, Sakai Katsuhiro discieees “wherein: in the irame, a recessed
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`pertien is formed in art etiter peripherai edge, and the hiade suppcrting chit protrudes
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`mm the receesed pertich.” {See Figure 3}
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`Regarding eiaim 4, Sakai Katsuhiro discieses “wherein: a stepped pertieri,
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`whereih centerit is supperted by the frame, is previded in the recessed pertiprt {Fig 3,
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`refit ti,).”
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`Regarding ciaim 7, Sakai Katsuhiro discteses “a magnet is dispesed in the frame
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`or the driving member, and a ceii is dispcsed in the ether. arid wherein the driving
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`member metres en a piane.“ (abstract: retcr)
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`Regarding ctaim 8, Sakai Katsuhiro discicses “a cennecting memper (Fig. 3, refit
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`4c} cennecting the driving member and the hiade member is previded within the frame.”
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`

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`Application/Control Number: 16/322,422
`Art Unit: 2852
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`Page 4
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`Regarding cieim ‘it, Sakai Katsuhiro disciceee “whereiri: the biede edppcrting
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`unit it; previded with a stepped eerticn (Fig. 3, refit ti} structuring the hiede chamber.”
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`Regarding ctaim 12, Sakai Katsuhiro diecieeee ”wherein: the hiede (Fig, 3, refit
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`3} member biecke tight that eeeeee threegh the eperiihg (Fig. 3, refit tat”
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`Regarding cteim 13, Sakai Katsuhiro diecideee “wherein: the hiade member (Fig.
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`3, rettt 3} adjusts veriahiy brightness of iight that peeeee threugh the opening (Fig. 3,
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`rettt ted.”
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`Regarding eieim t4, Sakai Katsuhiro diecieeee “wherein: the hiade member (Fig,
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`3, rettt 3) iimite e waveiength or hrightheee at tight that eeeeee thrcugh the ceenirtg
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`(Fig. 3, retti 1.3).”
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`Regarding ctaim 15, Sakai Katsuhiro diecieeee 'e detecting member detecting
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`movement et the driving member or the hiade member." (Abstract: camera, The
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`camera wctitd detect irtterteity change and thee mewernent ct the hiede mertther.)
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`Regarding cieim 155$ Sakai Katsuhiro diecieeee "Ah cpticei unit provided with e
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`biede driving device as set terth ih eny Cieim t,” (Abstract: camera)
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`Regarding eieim 17’, Sakai Katsuhiro diecieeee “A camera previded with a hiede
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`driving device as set forth irt Cieim t.” {Ahetrect camera)
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`Regarding cteim 18, Sakai Katsuhiro diecleeee “A mehiie eiectrditic device
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`prcvided with e hiede driving device es eet terth in Ciairn 1: (Abstract: camera)
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`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`

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`Application/Control Number: 16/322,422
`Art Unit: 2852
`
`Page 5
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`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.
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`7.
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`Claim 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Sakai Katsuhiro, et al. (JP 2007033650) in view of Nakagome Kazukimi (JP
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`200303330059).
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`(Note: The following rejection corresponds to the Written Opinion for
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`PCT/JP2017/019646.)
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`Regarding claims 5 and 6, Sakai Katsuhiro discloses all the structure set forth in
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`the claims except (Claim 5) “e tens ireme that has a siit into which is inserted the biade
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`soppertihg unit is contained in the recessed portion” and {Cieirn 6) “wherein: the tens
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`trerne supeerts integreiiy tenses that are dieeesed te the trent end to the rear oi the
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`bisde supporting unit.” Hewever, inserting a blade driving device into a lens frame
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`integrally supporting a lens was well known in the art prior to the effective filing date of
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`the claimed invention as taught by Nakagome Kazukimi.
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`(See Abstract and Figures 1-
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`2). Thus, it would have been obvious to one having ordinary skill in the art to modify
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`Sakai Katsuhiro by including "a iens frame that hes a siit into which is inserted the hiede
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`supporting unit is eenteined in the recessed pedien" and “wherein: the tens ti’erne
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`supports integreiiy tenses that are disposed to the front and to the rear oi the hiede
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`supporting unit,“ in erder te rninirnize space requirements for the hiade driving device
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`integration with the camera system,
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`

`

`Application/Control Number: 16/322,422
`Art Unit: 2852
`
`Page 6
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`8.
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`Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakai
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`Katsuhiro, et al. (JP 2007033650) in view of Takano Osamu (JP 2005189657).
`
`(Note:
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`The following rejection corresponds to the Written Opinion for PCT/JP2017/019646.)
`
`Regarding claim 9, Sakai Katsuhiro discloses all the structure set forth in the
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`claim except “wherein: the connecting member is supported through an eiestio member
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`preventing rettiing.” However, using an eiaetic member or the connecting member to
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`prevent rattling was known in the art prior to the etteetive tiiing date of the oieimed
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`invention as taught by Takano Osamu (See Abstract; Figures 3 and 4). Thus, it would
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`have been obvious to one having ordinary skill in the art prior to the effective filing date
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`of the claimed invention to modify Sakai Katsuhiro by wherein: the connecting member
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`is supported through an eiestio member preventing rettiing in order to reduce shaking
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`and improve image queiity of the resetting image.
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`9.
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`Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakai
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`Katsuhiro, et al. (JP 2007033650) in view of Komaba Hiroyoshi, et al. (JP 2008083203).
`
`(Note: The following rejection corresponds to the Written Opinion for
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`PCT/JP2017/019646.)
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`Regarding claim 10, Sakai Katsuhiro discloses all the structure set forth in the
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`claim except “wherein: in the biacie member, a piuraiity of members ere provioeo
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`everiapping, where at ieeet one of the biede members is seotired eirectiy to the driving
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`member.” However, a eemere biede system “wherein: in the biede member, a pioreiity
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`ot members are provided overiapping, where at teest one of the bieoe members is
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`secured direotiy to the driving member” was weii imewrt in the ert prior to the effective
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`

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`Application/Control Number: 16/322,422
`Art Unit: 2852
`
`Page 7
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`ftting deie ef the eiaimed inventterr as taught by Komaba Hiroyoshi (See Abstract,
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`Figure 4). Thus, it would have been obvious to one having ordinary skill in the art prior
`
`to the effective filing date of the claimed invention to modify Sakai Katsuhiro by wherein:
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`in the biede member" a piureiity di members are provided evertappii’ig, where at Beast
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`we at the biede members; is secured directly ie the driving member in erder te bteck the
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`aperture with variabie apertures; in the center at the epenieg and etiieientty reduce
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`intensity at the trimming tight tr: a desired ametiiit,
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`Conclusion
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`10.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Ito; Hisatoshi et al. US 20190146307 A1
`
`Choi; Myung-won et al.
`
`US 20190049692 A1
`
`MASUZAWA; Koichi et al. US 20170075193 A1
`
`BAI; Longji US 20090034046 A1
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`Naganuma, Hiroaki et al. US 20040222709 A1
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`11.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to RODNEY FULLER whose telephone number is
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`(571)272-2118. The examiner can normally be reached on 8:00 am - 4:30 pm, Monday
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`- Friday.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`

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`Application/Control Number: 16/322,422
`Art Unit: 2852
`
`Page 8
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Clayton Laballe can be reached on 571-272-1594. The fax phone number
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`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
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`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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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`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.
`
`/RODNEY E FULLER!
`
`Primary Examiner, Art Unit 2852
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`August 22, 261%}
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`