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 .
Reply Under 37 CFR 1.111
The submission of the reply filed on 5/21/2026 to the non-final Office action of 03/23/2026 is acknowledged. The Office action on currently pending claims 1-18 follows.
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.
Claims 1-18, are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-141229 to Yasuaki et al. (“Yasuaki”, cited in IDS) in view of JP 2008-245144 to Teru (cited in IDS ) and JP 2017-5455 to Shogo (cited in IDS).
Regarding claims 1 and 16, Yasuaki discloses (Fig. 2 and English translation of record) a camera module (10), comprising: a substrate (16); an inner housing (41) disposed on a first surface of the substrate, but does not disclose:
a heat transfer member, comprising a thermoelectric element, and disposed on a second surface of the substrate, wherein the substrate includes a heat transfer portion, wherein the heat transfer portion comprises a plurality of holes which penetrate the substrate, and wherein a heat transfer material is disposed in the plurality of holes to thermally connect the inner housing to the heat transfer member.
Teru discloses a camera module (Figs. 3-7 and English translation of record) comprising: a heat transfer member (25, 35), disposed on a second surface of a substrate (26, 36), wherein the substrate includes a heat transfer portion (around (25b)), wherein the heat transfer portion comprises a plurality of holes (26b, 36b) which penetrate the substrate, and wherein a heat transfer material (25b) is disposed in the plurality of holes to thermally connect the inner housing (21) to the heat transfer member (see the Abstract).
Furter, Shogo discloses an imaging device (Fig. 1 and English translation of record) comprising: a heat transfer member (108), comprising a thermoelectric element (see “Peltier element” on p. 3, par. 5 of the English translation of record), and disposed on a second surface of a substrate (109), wherein the substrate includes a heat transfer portion, wherein the heat transfer portion comprises a plurality of holes (110) which penetrate the substrate, and wherein a heat transfer material (106) is disposed in the plurality of holes to thermally connect the image sensor (100) to the heat transfer member (see “The screw 106 attached to the through hole 110 is made of a member having excellent heat conduction such as metal”, p. 3 of the English translation of record).
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have modify to Yasuaki according to the combined teachings of Teru and Shogo by providing a heat transfer member, comprising a thermoelectric element, and disposed on a second surface of the substrate, wherein the substrate includes a heat transfer portion, wherein the heat transfer portion comprises a plurality of holes which penetrate the substrate, and wherein a heat transfer material is disposed in the plurality of holes to thermally connect the inner housing to the heat transfer member, as claimed, in order to predictably enhance cooling of the camera module of Yasuaki. Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Regarding claims 2, 3, 6, 7, Teru as modified discloses that the heat transfer portion is formed around a periphery of the image sensor (23, 24) (see the area on the substrate (26, 36) where the members (25b) are present on Fig. 7), wherein the heat transfer portion is disposed along a lower surface of the inner housing (21) (Fig. 7), wherein the heat transfer portion overlaps the lower surface of the inner housing (21) in a direction, parallel to an optical axis (Fig. 7), wherein the lower surface of the inner housing (21) is disposed to contact the heat transfer portion (Fig. 7). Furter, Shogo also discloses that the heat transfer portion (i.e., the portion of the substrate (109) accommodating through holes (110) on Fig. 1) is formed around the image sensor (100) (Fig. 1).
Further, Shogo also discloses the heat transfer portion (106, 110) (see “The screw 106 attached to the through hole 110 is made of a member having excellent heat conduction such as metal”, p. 3 of the English translation of record) is formed around a periphery of the image sensor (100), (Fig. 1).
Regarding claims 4 and 5, Teru and Shogo disclose that the heat transfer material is a metal aluminum material (see Teru, p. 7, line 1 of the English translation of record; see Shogo, p. 5, second paragraph of the English translation of record). Also, it has been held to be within the general skill of a worker in the art to select a known material (i.e., aluminum) on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Regarding claims 8 and 9, Yasuaki discloses (Fig. 2) that a first lens (40) disposed in front of the lens module (20), wherein an outer peripheral surface of the first lens (40) is disposed to contact an inner peripheral surface of the inner housing (41), wherein an outer surface of the lens module (20) is disposed to contact an inner surface of the inner housing (41). Furter, Teru also discloses (Fig. 7) that a first lens (22) disposed in front of the lens module (20), wherein an outer peripheral surface of the first lens (22) is disposed to contact an inner peripheral surface of the inner housing (21), wherein an outer surface of the lens module (20) is disposed to contact an inner surface of the inner housing (21).
Regarding claim 10, Yasuaki discloses that an adhesive (43) is applied between the lower surface of the inner housing (41) and the heat transfer portion (on the substrate (16), Fig. 2). Teru also teaches similar subject matter (see “adhesion” in par, 1 on p. 7 of the English translation of record).
Regarding claims 11 and 12, Shogo discloses (Fig. 1) that the heat transfer member further comprises a heat dissipation plate (107, 114) which has a first surface on which the thermoelectric element / heat dissipation pin (108) is disposed, and wherein a second surface of the heat dissipation plate is disposed to contact the substrate (109). Also, Teru also discloses (Fig. 7) a heat dissipation pin (35) that is disposed on a first surface of the heat dissipation plate (25).
Regarding claims 13 and 14, Teru and Shogo disclose that the heat dissipation plate is a metal aluminum material (see Teru, p. 7, line 1 of the English translation of record; see Shogo, p. 4, fourth paragraph of the English translation of record). Also, it has been held to be within the general skill of a worker in the art to select a known material (i.e., aluminum) on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Regarding claims 17 and 18, Yasuaki discloses (Fig. 2) a lens barrel (20) disposed in, and coupled to, the inner housing (41); and an image sensor (14, 15) disposed on the substrate (16). Furter, Teru also discloses (Fig. 7) a lens barrel (20) disposed in, and coupled to, the inner housing (21); and an image sensor (23-25) disposed on the substrate (26, 36).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The gist of the Applicant’s arguments pertained to the Yasuaki-Teru-Shogo combination as it relates to independent claims 1 and 16, is that allegedly, in Teru “the cover 26/heat sink cover 36 cannot be said to correspond to the claimed substrate, as Teru already discloses a substrate 24 that has an image sensor 23 disposed on a top surface thereof. Instead, Teru discloses that the cover 26/heat sink cover 36 are disposed on a bottom surface of the substrate 24. Thus, one of ordinary skill in the art would clearly appreciate that the substrate 24 of Teru corresponds to the substrate 16 of Yasuaki, for example. Under such interpretation, as would be obvious to one of ordinary skill in the art, it is clear that Teru fails to teach the claimed feature of the substrate 24 including a plurality of holes which penetrate the substrate 24, as no such holes are taught by Teru, and because the holes 26b/36b in the cover 26/heat sink cover 36 of Teru have no relevance to the substrate 24.”
On the contrary, as can be clearly seen on Figs. 3 and 7 of Teru, the member (26/36) is a plate-shaped substrate. The presence of another substrate in the image sensor assembly of Teru, does not negate the fact that said member (26/36) is also a substrate, whether it’s called the “heat sink cover” or something else. One of ordinary skill in the art would clearly appreciate that the substrate (26/36) of Teru corresponds to the substrate (16) of Yasuaki, since both of them support image sensor assemblies (i.e., (14, 15) in Yasuaki and (23-25) in Teru).
Furthermore, regarding the Shogo reference as it relates to claims 1 and 16, the Applicant provided just a single conclusory statement: “Shogo fails to make up for the deficiencies in Yasuaki and Teru discussed above with respect to the features recited in claim 1.”
Furthermore, it appears that the Applicant is attempting to interpret combination of references too literally. The Office would like to remind the Applicant that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures”). The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971). References are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. See In re Bozek, 163 USPQ 545 (CCPA) 1969.
In view of the above, in the instant case the combined teachings of Teru and Shogo, taken as a whole, would have suggested to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have modified to Yasuaki as explained above in the body of the rejection.
Regarding claim 2, the Applicant contends that, allegedly, “the combination of Yasuaki, Teru, and Shogo clearly fails to teach or suggest "wherein the heat transfer portion is formed around a periphery of the image sensor," as the protrusions 25b and holes 26b/36b of Teru clearly overlap the image sensor 23, and thus are not formed around a periphery of the image sensor 23.”
In response, the Office directs the Applicant’s attention to the fact that even if the protrusions (25b) and holes (26b/36b) of Teru overlap the image sensor (23), they still disposed around the periphery thereof as claimed, since the periphery of the image sensor extends from all sides (i.e., around all sides) thereof including the top and bottom sides thereof, wherein the heat transfer portion of Teru is formed at least around the bottom periphery of the image sensor. The claim is broader than argued.
Also, Shogo also discloses the heat transfer portion (106, 110) (see “The screw 106 attached to the through hole 110 is made of a member having excellent heat conduction such as metal”, p. 3 of the English translation of record) is formed around a periphery of the image sensor (100), (Fig. 1).
Regarding claim 6, Applicant contends that, allegedly, “the combination of Yasuaki, Teru, and Shogo clearly fails to teach or suggest "wherein the heat transfer portion overlaps a lower surface of the inner housing in a direction, parallel to an optical axis," as the protrusions 25b and holes 26b/36b of Teru clearly do not overlap any portion of the lower surface of the lens barrel 21.”
The aforementioned Applicant’s statement is conclusory and lacks merit. On the contrary, in Teru the heat transfer portion (around (25b)) overlaps the lower surface of the inner housing (21) in a direction, parallel to an optical axis (see annotated Fig. 7 below).
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Regarding claim 7, Applicant contends that, allegedly, “the combination of Yasuaki, Teru, and Shogo clearly fails to teach or suggest "wherein a lower surface of the inner housing is disposed to contact the heat transfer portion," as the protrusions 25b and holes 26b/36b of Teru clearly do not contact any portion of the lower surface of the lens barrel 21.”
The aforementioned Applicant’s statement is conclusory and lacks merit. On the contrary, in Teru the lower surface of the inner housing (21) is disposed to contact the heat transfer portion (around (25b)) at least thermally (Fig. 7). The claim is broader than argued.
Regarding claim 16, Applicant contends that, allegedly, “the combination of Yasuaki, Teru, and Shogo also fails to teach of suggest that a heat transfer material is disposed in the plurality of holes to thermally connect the inner housing to the heat transfer member, as neither the protrusions 25b of Teru nor the screw 106 of Shogo thermally connects any portion of the housing (lens barrel 21 in Teru and the housing 10 in Shogo) to the heat transfer member.”
On the outset, the Office would like to point out that it appears that the Applicant misinterpreted the outstanding rejection of claim 16, since for teachings of the aforementioned subject matter the rejection relies on Yasuaki (i.e., not on Teru or Shogo).
However, to say more, contrary to the Applicant’s possiiton, Teru discloses a camera module (Figs. 3-7 and English translation of record) comprising: a heat transfer member (25, 35), disposed on a second surface of a substrate (26, 36), wherein the substrate includes a heat transfer portion (around (25b)), wherein the heat transfer portion comprises a plurality of holes (26b, 36b) which penetrate the substrate, and wherein a heat transfer material (25b) is disposed in the plurality of holes to thermally connect the inner housing (21) to the heat transfer member (see the Abstract). Also, it can be clearly seen on Fig. 7 of Teru that all components of the camera module are inherently thermally interconnected at least to some degree.
Furter, Shogo also discloses an imaging device (Fig. 1 and English translation of record) comprising: a heat transfer member (108), comprising a thermoelectric element (see “Peltier element” on p. 3, par. 5 of the English translation of record), and disposed on a second surface of a substrate (109), wherein the substrate includes a heat transfer portion, wherein the heat transfer portion comprises a plurality of holes (110) which penetrate the substrate, and wherein a heat transfer material (106) is disposed in the plurality of holes to thermally connect the image sensor (100) to the heat transfer member (see “The screw 106 attached to the through hole 110 is made of a member having excellent heat conduction such as metal”, p. 3 of the English translation of record). Also, it can be clearly seen on Fig. 1 of Shogo that all components of the camera module are inherently thermally interconnected at least to some degree.
In view of the above the rejection is hereby maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anatoly Vortman/
Primary Examiner
Art Unit 2841
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