DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see pg.1, filed 3/5/2026, with respect to the objection to the drawings and the specification have been fully considered and are persuasive. The objections of 12/31/2025 have been withdrawn.
Applicant’s arguments with respect to claim(s) 1-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
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.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2019/0261842 to Miyahara (hereinafter “Miyahara”) in view of US Patent Application Publication 2020/0045213 to Sakamoto (hereinafter “Sakamoto”). Miyahara discloses an image pickup module comprising:
Regarding Claim 1, Miyahara teaches an image sensor (Element 90), a laser element (Element 31), a laser driver circuit (Element 30), an optical fiber (Element 50), an electric signal wiring (Element 60), and a layered substrate (Elements 19B, 20), a first cap (combination of Elements 40 and 20) including: a first through hole that accommodates at least a part of the optical fiber (Element H10, [0088]); and a recess that accommodates the laser element and the laser driver circuit (Figs. 12 and 13, Element 30); and a second cap (combination of Elements 99 and 95) surrounding the first cap and filled with a molding agent (Element 45) that fixes the image sensor, the laser element, the laser driver circuit, at least a part of the optical fiber, at least a part of the heat dissipation wiring, at least a part of the electric signal wiring, and the layered substrate ([0087]). However, Miyahara does not disclose heat dissipation wiring. Sakamoto discloses an image pickup (Fig. 1, Element 1) comprising heat dissipation wiring ([0040]). It would have been obvious before the effective filing date of the claimed invention to modify Miyahara to include heat dissipation wiring such as that taught by Sakamoto in order to effectively and efficiently dissipate heat from the imaging element as suggested by Sakamoto in [0010] [0049]).
Regarding claim 2, Miyahara teaches wherein the first cap is made of glass ([0051] [0060])
Regarding claim 3, Miyahara does not teach that the first cap further includes a second through hole that accommodates at least a part of the heat dissipation wiring. However, Sakamoto discloses that the heat dissipation wiring can go through a plurality of through holes that accommodates at least a part of the heat dissipation wiring ([0040]). It would have been obvious before the effective filing date of the claimed invention to modify Miyahara to include multiple through holes through which heat dissipation wiring can be accommodated such as that taught by Sakamoto in order to effectively and efficiently dissipate heat from the imaging element as suggested by Sakamoto in [0010] [0049]).
Regarding claim 4, Miyahara does not disclose that the first cap member includes a cutout that covers only a part of the heat dissipation wiring in the circumferential direction. However, Sakamoto discloses that the first cap (Element 6) covers a first portion of the heat dissipating wiring (Element 47), but the first cap does not cover an additional portion of the wiring (Element 43). It would have been obvious before the effective filing date of the claimed invention to modify Miyahara to include only a portion of the heat dissipating wiring being covered such as that taught by Sakamoto in order to effectively and efficiently dissipate heat from the imaging element as suggested by Sakamoto in [0010] [0049]).
Regarding claim 6, Miyahara teaches wherein a diameter of the optical fiber changes along an axial direction, and a diameter of the first through hole changes along an axial direction depending on a change in the diameter of the optical fiber (see Fig. 12, Elements 50 and 40, [0034] [0088])
Regarding Claim 7, Miyahara teaches wherein the second cap has a tubular shape ([0066]).
Regarding Claim 8, Miyahara teaches that the layered substrate includes an intermediate portion (Fig. 13, [0090])
Regarding Claim 9, Miyahara and Sakamoto teach the limitations of claim 1 above, additionally Miyahara discloses that the invention is attached to an endoscope ([0097]-[0099]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyahara in view of Sakamoto as applied to claim 2 above, and further in view of US Patent Application Publication 2008/0300457 to Hosaka (hereinafter “Hosaka”). While demonstrated above that the combination of Miyahara and Sakamoto disclose heat dissipating wiring, Miyahara and Sakamoto do not disclose that the first cap does not cover the heat dissipation wiring. However, Hosaka discloses an image pickup module where in the first cap does not cover the heat dissipation wiring (Fig. 58, Element 221). It would have been obvious before the effective filing date of the claimed invention to modify Miyahara and Sakamoto to include that the first cap does not cover the heat dissipation wiring such as that taught by Hosaka in order to move heat away from light generating members (Hosaka [0113]).
Conclusion
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 event a first reply is filed within TWO MONTHS of the 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JAMES CAREY whose telephone number is (571)270-7235. The examiner can normally be reached Monday-Friday (8am-5pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached at 571-270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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