DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine 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 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 Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Against Patent 8325270
Claims 21, 24, 25, and 27-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 7+2, 7+2, 7, 7, 2, 2, and 2 respectively of U.S. Patent No. 8325270. Although the claims at issue are not identical, they are not patentably distinct from each other because, the claims of the instant application are obvious variant of the corresponding ones of the US Patent No. 8325270. Furthermore, the scopes of the claims on the instant application are also met and encompassed by the corresponding ones of the Patent No. 8325270.
The apparent difference between the conflicting claims mainly arises from the style of limitation recitation and relative placement of conflicting elements within the claims’ body.
In few cases, subject matters of more than one claims are added from the Patent to yield the conflicting claim of the instant application. Combining claims would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to yield subject matter of the conflicting claim in the instant application, because, both the patent and the instant application pertains to same/similar invention.
Against Patent 8638392
Claims 21, 24, 25, and 27-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4+5, 4+5, 4+5, 4+5, 4+5, 5, 5, and 5 respectively of U.S. Patent No. 8638392. Although the claims at issue are not identical, they are not patentably distinct from each other because, the claims of the instant application are obvious variant of the corresponding ones of the US Patent No. 8638392. Furthermore, the scopes of the claims on the instant application are also met and encompassed by the corresponding ones of the Patent No. 8638392.
The apparent difference between the conflicting claims mainly arises from the style of limitation recitation and relative placement of conflicting elements within the claims’ body.
In few cases, subject matters of more than one claims are added from the Patent to yield the conflicting claim of the instant application. Combining claims would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to yield subject matter of the conflicting claim in the instant application, because, both the patent and the instant application pertains to same/similar invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 33, 36-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 33 recites wherein the expansion module comprises ‘an expansion battery that supplements the internal battery when the camera and the expansion module are connected’ – description of which is not found within the specification.
Also, claim 36 recites limitation, a speaker that provides audio while the display screen displays the stored images, videos, or previews – description of which is not found within the specification.
Based on the base claim 29 recitation, the expansion module takes the structure of display module 410. In ¶0040 of the specification (see PGPUB US 20250047961 for reference) the structure and functionalities of the expansion module as display module 410 is described. However, there is no mention of the aforementioned feature is found within the specification. In ¶0045 the Expansion Power Supply is described, wherein the aforementioned feature could possibly described. However, there is no mention within specification that features of Display Module 410 and Expansion Power Supply can be combined.
A generic statement is found in ¶0039, reciting,
An expansion module 130 may also comprise a module that includes a combination of functions (e.g., a storage module 440 and an audio capture module 460 enclosed within a single housing portion 140).
However, such a broad generic statement is not sufficient for meeting the written description requirement describing under 35 USC 112 (a) for specific species claim like claim 33.
Regarding claim 36, the term ‘speaker’ is not found in anywhere within the specification.
Dependent claims 37-40 also carry similar defects like base claim 36 and thus are rejected for same/similar reason(s) stated above for base claim 36.
Claim 37, has further issues with lack of written description for reciting limitation ‘expansion module comprises an expansion battery’ – description of which is not found within specification. Reasons discussed above for claim 33, also applies for claim 36 rejection, since the disclose similar features of expansion module having battery, which the base claim settles the structure as display module 410.
MPEP § 2163.I.B describes –
New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).
MPEP § 2163.II.A.3(a).ii.(b) describes –
To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.
Thus, based on the explanations provided above, claims 33, and 36-40 fail to comply with the written description requirement of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and thus rejected. Dependent claims 8-11, and 17-20 are rejected as being dependent on the base claims which are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for failing to sufficiently meet the written description requirement.
Examiner’s note
Regarding examination of claims 33, and 36-40 on their merits, MPEP section 2163.06(I) provides that, if new matter is added to the claims, "the examiner should reject the claims under 35 U.S.C. 112, first paragraph - written description requirement”. Further, "The examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant." (Underlining added). In light of the above requirement the claims have been examined on their merits as currently claimed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 21, 22, 24-33 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Fuchimukai et al. (US 6741287 B1, hereinafter Fuchimukai).
Regarding claim 21, Fuchimukai discloses a camera system (fig. 1, abstract) comprising:
a camera (10, figs. 1, 2, 11; Col. 4, lines 26-43) comprising:
a camera body (camera 10 has an inherent camera body, ibid);
a lens window (12, figs. 2-3; Col. 4, lines 26-43) extending from a forward side of the camera body (figs. 2-3);
a first fastening structure (34, 32, fig. 1, col. 5, lines 1-3);
a first connector (22, figs. 1, 11, Col. 5, lines 18-24); and
a shutter button (20, fig. 1, col. 14, lines 20-32);
an expansion module (100, figs. 1, 11) that is detachably couplable to the camera (abstract, fig. 1, Col. 4, lines 26-37), the expansion module comprising:
a second connector (108, figs. 1, 11, Col. 6, 21-28) extendable into the first connector so that the first connector and the second connector are in communication (ibid, Col. 6, 21-28); and
a second fastening structure (132, 135, figs. 1-3) connectable to the first fastening structure so that the expansion module is connected to the camera when the first fastening structure and the second fastening structure are connected (Col. 6, line 51 – col. 7, line 10).
Regarding claim 22, Fuchimukai discloses the camera system of claim 21, wherein a power supply (battery 88, fig. 11) is located within the camera (Col. 14, lines 46-55).
Regarding claim 24, Fuchimukai discloses the camera system of claim 21, wherein the expansion module includes a display screen that allows stored images, videos, or previews of images from the camera to be displayed (…said monitor device comprising an image display portion in which an object image obtained by the photographic optical system is displayed – claim 1).
Regarding claim 25, Fuchimukai discloses the camera system of claim 24, wherein the camera is free of a built-in display (no display or monitor device in camera 100 as observed from fig. 1).
Regarding claim 26, Fuchimukai discloses the camera system of claim 25, wherein the expansion module includes display control logic (200, fig. 11) that adds display functions to the camera because the camera does not include the built-in display (Col. 14, lines 32-45).
Regarding claim 27, Fuchimukai discloses the camera system of claim 21, wherein the first connector is located within a recess of the camera (Col. 5, lines 18-25, figs. 1, 11) and the second connector extends into the recess within the camera (Col. 6, lines 21-28, figs. 1-3, 11).
Regarding claim 28, Fuchimukai discloses the camera system of claim 27, wherein the expansion module comprises an expansion function button (104, 106, fig. 1, Col. 6, lines 7-21).
Regarding claim 29, Fuchimukai discloses, a camera system (figs. 1, 11) comprising:
a camera (10, figs. 1, 2, 11; Col. 4, lines 26-43) comprising:
a camera body (camera 10 has an inherent camera body, ibid);
a lens window (12, figs. 2-3; Col. 4, lines 26-43) extending from a forward side of the camera body (figs. 2-3);
a first connector (22, figs. 1, 11, Col. 5, lines 18-24); and
a shutter button that is configured to operate the camera (20, fig. 1, col. 14, lines 20-32);
an expansion module (100, figs. 1, 11) that is detachably couplable to the camera (abstract, fig. 1, Col. 4, lines 26-37), the expansion module comprising:
a second connector (108, figs. 1, 11, Col. 6, 21-28) that extends into the first connector so that the first connector and the second connector are in communication when the expansion module is coupled to the camera (ibid, Col. 6, 21-28);
a display screen (102, figs. 1, 11) that allows stored images, videos, or previews to be displayed (…said monitor device comprising an image display portion in which an object image obtained by the photographic optical system is displayed – claim 1); and
an expansion function button (104, 106, fig. 1) that is configured to operate the expansion module (Col. 6, lines 7-21).
Regarding claim 30, Fuchimukai discloses the camera system of claim 29, wherein the camera further comprises a first fastening structure (34, 32, fig. 1, col. 5, lines 1-3), and wherein the expansion module further comprises a second fastening structure (132, 135, figs. 1-3) that is configured to connect the expansion module to the camera when the first fastening structure and the second fastening structure are connected (Col. 6, line 51 – col. 7, line 10).
Regarding claim 31, Fuchimukai discloses the camera system of claim 29, wherein the first connector electrically connects the camera with the expansion module via the second connector Col. 6, 21-28.
Regarding claim 32, Fuchimukai discloses the camera system of claim 29, wherein camera includes an internal battery (battery 88, fig. 11, Col. 14, lines 46-55).
Regarding claim 33, Fuchimukai discloses the camera system of claim 32, wherein the expansion module comprises an expansion battery (208, fig. 11) that supplements the internal battery when the camera and the expansion module are connected (Col. 14, lines 56-61).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claims 23, 34 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fuchimukai in view of Maemori (US 4837817 A).
Regarding claim 23 and 34, Fuchimukai discloses the camera system of claims 21 and 33 respectively, except, wherein the camera includes a microphone.
However, Maemori discloses that camera includes a microphone (col. 1, lines 62-64).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the invention of Fuchimukai such that in includes a microphone therein, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Furthermore, microphone would allow the camera to record sound/audio for later playback, thus expanding the usability of the system.
Claims 35 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fuchimukai in view of Kanamori (US 6138826 A, hereinafter Kanamori).
Regarding claim 35, Fuchimukai discloses the camera system of claim 29, except, wherein the lens window comprises a waterproof seal that assists in maintaining the camera as waterproof.
However, Kanamori discloses a waterproof case for camera, wherein the lens window is secured inside a waterproof case that assists in maintaining the camera as waterproof (abstract, Col. 2, lines 40-45, Col. 2, lines 26-30, Col. 11, lines 33-45, claims 18-19).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the invention of Fuchimukai such that the camera system of Fuchimukai is enclosed inside a waterproof case as disclosed by Kanamori, to obtain, wherein the lens window comprises a waterproof seal that assists in maintaining the camera as waterproof, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Futhermore, such combination would enhance the operability of the camera system by enabling it being capable of being used in vicinity of water.
Claims 36-39 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fuchimukai in view of Ahn et al. (US 20070273786 A1, hereinafter Ahn).
Regarding claim 36, Fuchimukai discloses a camera system (fig. 1, abstract) comprising:
a camera (10, figs. 1, 2, 11; Col. 4, lines 26-43) comprising:
a camera body (camera 10 has an inherent camera body, ibid);
a lens window (12, figs. 2-3; Col. 4, lines 26-43) extending from a forward side of the camera body (figs. 2-3);
a first connector (22, figs. 1, 11, Col. 5, lines 18-24) located on a rear side of the camera body (fig. 1); and
a shutter button (20, fig. 1) that operates the camera (col. 14, lines 20-32);
an expansion module (100, figs. 1, 11) that is detachably couplable to the camera (abstract, fig. 1, Col. 4, lines 26-37), the expansion module comprising:
a second connector (108, figs. 1, 11, Col. 6, 21-28) that extends into the first connector so that the first connector and the second connector are in communication (ibid, Col. 6, 21-28);
a display screen (102, figs. 1, 11) that displays stored images, videos, or previews (…said monitor device comprising an image display portion in which an object image obtained by the photographic optical system is displayed – claim 1).
a speaker that provides audio while the display screen displays the stored images, videos, or previews; and
a microphone configured to capture audio when the camera captures images.
Fuchimukai is not found disclosing expressly the limitation of, expansion module comprising, a speaker that provides audio while the display screen displays the stored images, videos, or previews; and a microphone configured to capture audio when the camera captures images.
However, Ahn discloses, expansion module (200, figs. 1-4) comprising, a speaker (160, fig. 1a, ¶0061)
Ahn, does not expressly disclose the use cases of the speaker and microphone, however, in ¶0003, Ahn discloses the invention discloses a multi-function portable electronic device with a camera having a plurality of functions including static and moving image capture, audio capture, MP3 playback, Digital Multimedia Broadcasting (DMB) and web camera functions.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to use the speaker 160 of Ahn to provide audio while the display screen displays the stored images, videos, or previews, and use the microphone 250 configured to capture audio when the camera captures images, because, the functionalities sought through the use cases commensurate to the intended use described in ¶0003 of Ahn, which can be achieved by combining prior art elements ready to be improved according to known method to yield predictable results.
Regarding claim 37, Fuchimukai in view of Ahn discloses, the camera system of claim 36, wherein the camera comprises an internal battery (Fuchimukai: 88, fig. 11) and the expansion module comprises an expansion battery (Fuchimukai: 208, fig. 11, Col. 14, lines 46-61).
Regarding claim 38, Fuchimukai in view of Ahn discloses, the camera system of claim 37, wherein the camera is free of a built-in display (Fuchimukai: no display or monitor device in camera 100 as observed from fig. 1).
Regarding claim 39, Fuchimukai in view of Ahn discloses, the camera system of claim 36, wherein the camera and the expansion module snap together to form a connection via a first fastening structure of the camera and a second fastening structure of the expansion module (Fuchimukai: Col. 5, lines 30-59, fig. 1).
Claims 40 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fuchimukai in view of Ahn and further in view of Murata et al. (US 5159458 A, hereinafter Murata) and Yamazaki et al. (US 5481406 A, hereinafter Yamazaki).
Regarding claim 40, Fuchimukai in view of Ahn discloses, the camera system of claim 39, wherein the first fastening structure or the second fastening structure
Fuchimukai in view of Ahn is not found disclosing expressly the limitation of second fastening structure include a button assembly, and shutter button is covered by a pliable material.
However, Murata discloses ejection button 10 for releasing a well-known locking means (Col. 4, lines 65-66, Col. 5, lines 3-6).
Yamazaki on the other hand discloses, operation buttons can be covered with pliable plastic material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the invention of Fuchimukai in view of Ahn to include the teachings of Murata and Yamazaki in order to make second fastening structure include a button assembly so that operating the button releases the fastening structure and shutter release buttons can be covered with pliable plastic material, to obtain, second fastening structure include a button assembly, and shutter button is covered by a pliable material, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Furthermore, such combination would enhance the quick release of the fastening of the display expansion element of Fuchimukai, and better ergonomics in operating the shutter release button, thus improving the overall operability of the camera system.
Conclusion
The prior and/or pertinent art(s) made of record and not relied upon is considered pertinent to applicant's disclosure, are – Shiomi (US 8036469 B2), Hayes et al. (US 20080100712 A1), Lee (US 20030179306 A1), who disclose different camera system structures of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHBAZ NAZRUL whose telephone number is (571)270-1467. The examiner can normally be reached M-Th: 9.30 am-3 pm, 6.30 pm-9 pm, F: 9.30 am-1.30 pm, 4 pm-8 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lin Ye can be reached on 571-272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAHBAZ NAZRUL/Primary Examiner, Art Unit 2638