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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because the text in Figs. 1-6 is unreadable. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is 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 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “power supply component” in claims 1-2, 5, 8-10, and 12 given structural recitation in the Applicant’s specification paragraph [0040].
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claims 2-4 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regards to claim 2, Claim 2 recites the limitation “comprising a first power storage component and a second power storage component.” It is unclear from the claim if the applicant’s intent was to split the power storage component from claim 1 into two power storage components OR add the recited power storage components from claim 2 to the power storage component in claim 1 making three total power storage components. For the sake of examination, the examiner has interpreted claim 2 as splitting the power storage component from claim 1 into two power storage components in claim 2. Claims 3-4 have been rejected accordingly based on their dependency to claim 2.
In regards to claim 3, neither claim 1 or claim 2 recite that a second power pack comprises capacitors, therefore the capacitors of the second power pack lack antecedent basis.
In regards to claim 7, claim limitations “first power pack” and “second power pack” lack antecedent basis.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-5, and 8-9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S. Patent Application Publication 2009/0112058 to Kagawa (hereinafter “Kawaga”). In regards to claims 1-2, 4-5, and 8-9, Kagawa discloses a capsule endoscope (Element 3) comprising:
a power supply component (Element 20) and a power utilization component (Abstract, “power executing units”), the power supply component supplying power to the power utilization component, the power utilization component comprising an image acquisition component (Element 30), further comprising: at least one power storage component (Element 23), and a first electronic switch (Element 24); the power storage component is connected in parallel with the power supply component to form a power pack (Fig. 5), jointly providing power to the image acquisition component ([0031]), wherein the power storage component is a single capacitor or two or more capacitors connected in parallel ([0031]); and the first electronic switch (Element 24) is disposed between the power pack and the image acquisition component, for controlling the connection and disconnection between the power pack and the image acquisition component [0038]
a first power storage component (Element 23) and a second power storage component (Element 21), wherein the image acquisition component (Element 30) comprises a camera component (Element 32) and an illumination component (Element 10), wherein the first power storage component is connected in parallel with the power supply component to form a first power pack, supplying power to the illumination component ([0031]), and the second power storage component (Element 21) is connected in parallel with the power supply component to form a second power pack, supplying power to the camera component ([0024] [0026])
wherein the first electronic switch comprises a first branch switch (Element 25) and a second branch switch (Element 24), wherein the first branch switch is disposed between the first power pack and the illumination component, for controlling the connection and disconnection between the first power pack and the illumination component ([0031]), and the second branch switch is disposed between the second power pack and the camera component, for controlling the connection and disconnection between the second power pack and the camera component ([0038])
a power switch, wherein the power switch is disposed at the output end of the power supply component, for controlling the connection and disconnection between the power supply component and the power storage component, and the power utilization component; and wherein when the power switch is disconnected, the power supply component and the power storage component, and the power supply component and the power utilization component are both in a disconnected state (Element 26, [0032])
a second electronic switch (Element 25), wherein the power utilization component further comprises at least one functional component, and the second electronic switch is disposed between the power supply component and the functional component, for controlling the connection and disconnection between the power supply component and the functional component ([0031], controls at least illumination)
a third electronic switch, wherein the third electronic switch is disposed between the power supply component and the power storage component, for controlling the connection and disconnection between the power supply component and the power storage component, and between the power supply component and the image acquisition component (Element 26, [0032])
Claim Rejections - 35 USC § 103
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) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kagawa. In regards to claim 3, Kawaga further teaches that the number of capacitors in the first power pack and the second power pack is determined by the power consumption of the power utilization component they supply power to, and the number of capacitors in the power pack corresponding to the high-power-consumption power utilization component is greater than the number of capacitors in the power pack corresponding to the low-power-consumption power utilization component. Kawaga further teaches in paragraphs [0030][0031] that the battery 21 and power source circuit 22 are capable of supplying power to some components, but not all components, such as that high-power demand from the illumination component. Kawaga teaches that additional power stored in the electric power storing unit 23 can be supplied to these high-power demand components. However, Kawaga does not specifically disclose determining a number of capacitors based on the power demands of the components. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make/set the number of capacitors since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, Kawaga’s electric power storing unit would not operate differently any number of capacitors except for the amount of charge stored. Further, Applicant places no criticality on the number of capacitors claimed, indicating that in paragraph [0033] in the Applicant’s specification that “it should be understood that the specific number of capacitors selected is determined by the power consumption of the corresponding power utilization component, and is not limited to the above situation.”
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawaga in view of U.S. Patent Application 2013/0025893 to Ota (hereinafter “Ota”). Kawaga discloses first and second power packs (Elements 23 and 21, respectively); however, Kawaga does not disclose a voltage regulator with step-up/step-down circuits. However, Ota discloses a voltage management device between a power pack and a tool comprising:
a voltage regulator, wherein the voltage regulator is disposed between the power pack and the image acquisition component ([0040])
wherein the voltage regulator comprises a step-up circuit and a step-down circuit, wherein the step-up circuit is disposed between the first power pack and a first tool component, and the step-down circuit is disposed between the second power pack and a second tool component ([0043])
It would have been obvious before the effective filing date of the claimed invention to modify Kawaga to include the voltage regulator with step-up/step-down circuits such as that taught by Ota as Ota teaches that “a supply voltage from the battery pack to the electric power [component] can be regulated to a level corresponding to the rated voltage of the electric power [component], even if a nominal voltage of the battery pack is different from the rated voltage of the electric power [component].”
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kagawa in view of U.S. Patent Application Publicaiton 2011/0166416 to Katayama (hereinafter “Katayama”). Kagawa does not disclose a thermal insulating layer or a sealing layer. However, Katayama discloses a capsule endoscope comprising:
In regards to claim 10, a thermal insulation material layer, wherein the thermal insulation material layer is disposed between the power supply component and an enclosure of the capsule endoscope (Element 813, [0158])
In regards to claim 11, wherein the thermal insulation material layer comprises insulating glue, aerogel material, or solid insulating material ([0160])
It would have been obvious before the effective filing date of the claimed invention to modify Kawaga with a thermal insulating layer such as that taught by Katayama in order to prevent the overheating the power components from heat associated with the functional units.
In regards to claim 12, a sealing layer, wherein the sealing layer is disposed between the power supply component and the thermal insulation material layer (Element 814)
It would have been obvious before the effective filing date of the claimed invention to modify Kagawa to include the sealing layer such as that taught by Katayama in order to be able to change out used batteries from the device.
Conclusion
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, Jonathan Moffat can be reached at 571-272-4390. 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