DETAILED ACTION
Non-final Office 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 .
Reissue
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
This action is responsive to communications: The instant application filed August 28, 2024 which is a reissue of application 17/229,435 (U.S. Patent No. 11,585,514, published February 21, 2023).
Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
Claims 1-15 were published in US Patent 11,585,514. A preliminary amendment was filed concurrently with the application on August 28, 2024. By way of the preliminary amendment, original claims 1-15 were cancelled and new claims 16-35 were added. Therefore, claims 16-35 are currently pending in the application.
Information Disclosure Statement (IDS)
The IDS filed August 28, 2024 has been considered. It should be noted that none of the Non-Patent Literature (NPL) has a publication date associated with them. For the purposes of examination, all the NPL (Apocalypse, Supon, Olympus, Canon, 18” Ring light, Paul C, Buff) is considered to be before the effective filing date of the underlying ‘514 patent (April 3, 2021).
Specification
The following is a quote from 37 C.F.R. 1.173(d):
“(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1)The matter to be omitted by reissue must be enclosed in brackets; and
(2)The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “U” and end with “/U” to properly identify the material being added.” (emphasis examiner)
The disclosure is objected to because of the following informalities:
The amendment to the specification on column 1, between lines 9 and 10 needs to be underlined, as it is added relative to the patent.
Appropriate correction is required.
Claims
The present reissue includes new claims 16-35. Independent claims 16, 26 and 35 are reproduced below.
16. (New) A ring flash light diffusion device comprising:
a first converter ring;
a diffuser adapter connected to the first converter ring;
a flash ring configured to connect to a ring flash, the flash ring connected to the diffuser adapter at a position along a length of the diffuser adapter; and
a light diffuser connected to the diffuser adapter, wherein the light diffuser comprises a cavity such that light emitted from the ring flash passes through the cavity of the light diffuser.
26. (New) A ring flash light diffusion device comprising:
a flash ring;
a ring flash attached to the flash ring; and
a light diffuser attached to the flash ring, the light diffuser comprising at least one surface that is angled relative to a direction of light propagating from the ring flash such that light emitted by the ring flash passes through the at least one surface.
35. (New) A ring flash light diffusion device comprising:
a light diffuser body, the light diffuser body forming a cavity defined by an inner wall, an outer wall, and a semitransparent ring connecting the inner wall and outer wall;
a ring flash connected to the light diffuser body; and a flash ring connected to the ring flash such that light emitted from a light emitting portion of a ring flash connected to a passes through the cavity of the ring flash light diffusion device.
Claim Objections
The following is a quote from 37 C.F.R. 1.173(d):
“(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1)The matter to be omitted by reissue must be enclosed in brackets; and
(2)The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “U” and end with “/U” to properly identify the material being added.”
(emphasis examiner)
New claims 16-35 are objected to because of the following informalities:
Claims 16-35 need to be underlined in their entirety as they are added relative to the patent (37 C.F.R. 1.173(d)(2)).
Appropriate correction is required.
Oath/Declaration
From MPEP 1414:
“The ‘at least one error’ which is relied upon to support the reissue application must be set forth in the oath/declaration. It is not necessary, however, to point out how (or when) the error arose or occurred. Further, it is not necessary to point out how (or when) the error was discovered. If an applicant chooses to point out these matters, the statements directed to these matters will not be reviewed by the examiner, and the applicant should be so informed in the next Office action. What is needed for the oath/declaration statement as to error is the identification of ‘at least one error’ relied upon. For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration ‘states at least one error’ in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required…
Likewise, a statement of the error as ‘…the inclusion of claims 3-5 which were unduly broad…’ and then canceling claims 3-5, would not be considered a sufficient "error" statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain. The statement of what the remaining claims contain need not identify specific limitations, but rather may provide a general identification, such as ‘Claims 3-5 did not provide for any of the tracking mechanisms of claims 6-12, nor did they provide an attachment mechanism such as those in claims 1-2 and 9-16.’” (Emphases examiner).
The error statement:
“Applicant claimed less than Applicant had a right to claim. During the prosecution of U.S. Patent No. 11,585,514, the claims were inadvertently limited to narrower embodiments involving semitransparent material for the device body. This broadening reissue seeks to broaden the claims to cover the broader disclosed embodiments, including configurations with converter rings, diffuser adapters, and angled light diffuser surfaces, as described in the specification. Specifically, claim 1 of the issued patent is being broadened. This corrects the original over-narrowing, by incorporating claims, such as claims 16, 26, and 35, that reflect a fuller scope of the invention as disclosed.”
does NOT: identify a single word, phrase, or expression in the specification or in an original patented claim, and how it renders the original patent wholly or partly inoperative or invalid. Further, from the error statement, as there was no identification of specific claim language contained in claim 1, it is not clear if “involving semitransparent material for the device body” is referring to the body as a whole, or the second circular wall, both of which are claimed as having semitransparent material.
For broadening reissues, either of the following examples as explaining “how” the original patent is rendered wholly or partly inoperative or invalid is acceptable:
The claims are “unduly narrow,” or
The quoted language of the claim to be broadened in the error statement is not necessary for patentability.
Claim Rejections - 35 USC § 251
Claims 16-35 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claims 16-35 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The determination for whether any newly presented claims are subject to recapture is made by the three step test for recapture (MPEP 1412.02):
For Claims 16, 26 and 35:
Step One:
New independent claims 16, 26 and 35 are broader in at least one respect than the patented independent claim 1. With respect to patented claims 16, 26 and 35, none of the new claims recite “a second circular wall, comprising the semitransparent material”, and none of the independent claims recite “wherein the body forms a concave cavity defined by the first circular wall, the second circular wall, and the ring such that light emitted from a light emitting portion of a ring flash positioned at the end of the first circular wall passes through the cavity and the body of the ring flash light diffusion device.”
Step Two:
The broadened aspects of claims 16, 26 and 35 mentioned above relate to subject matter surrendered in applicant's responses filed in US Application 17/229,435.
Both in the remarks filed by Applicant, on 10/11/2022, and in the examiner’s Reasons for Allowance, mailed 10/26/2022, the language “a second circular wall, comprising the semitransparent material” (emphasis examiner) has been established as critical to the patentability of independent patented claim 1. This is a Surrender Generating Limitation (SGL).
Specifically on page 7 of the response filed on October 11, 2022, then-applicant argues:
“Schileo is directed to ‘a lighting attachment and more specifically relates to a lighting attachment which provides white and/or UV lighting to a hand-held magnifying lens or loupe. (Schileo, para. 0001.) Notably, Schileo lacks any mention of a ring flash or ring flash diffusers.
Claim 1 recites, inter alia, ‘a second circular wall, comprising the semitransparent material, ... and wherein the body forms a concave cavity defined by the first circular wall, the second circular wall, and the ring such that light emitted from a light emitting portion of a ring flash positioned at the end of the first circular wall passes through the cavity and the body of the ring flash light diffusion device’.
The Office Action cites inner wall 12 as well as collectively the outer wall 11, annular flange 13, and light guide 7 from para. 0022 and Fig. 1 of Schileo as allegedly teaching these features as previously recited. However, Schileo does not disclose a second circular wall, comprising the semitransparent material, ... and wherein the body forms a concave cavity defined by the first circular wall, the second circular wall, and the ring such that light emitted from a light emitting portion of a ring flash positioned at the end of the first circular wall passes through the cavity and the body of the ring flash light diffusion device. There is no indication in Schileo that the inner 12 is formed of a semitransparent material. Further, noting that there is no ring flash taught, suggested or disclosed in Schileo to the extent any light emitting elements are disclosed, the light from them does not pass through a cavity and body of the ring flash diffusion device.
Therefore, Schileo does not anticipate at least ‘a second circular wall, comprising the semitransparent material, ... and wherein the body forms a concave cavity defined by the first circular wall, the second circular wall, and the ring such that light emitted from a light emitting portion of a ring flash positioned at the end of the first circular wall passes through the cavity and the body of the ring flash light diffusion device’ as recited in independent claim 1. For at least the reasons stated above, Schileo fails to disclose all of the features of claim 16. Therefore, applicant respectfully submits that claim 16 is patentable over the cited reference.”
Step Three:
New independent claims 16, 26 and 35 are narrower than patented claim 1 in the following respects:
Claim 16: a first converter ring; a diffuser adapter connected to the first converter ring; a flash ring configured to connect to a ring flash, the flash ring connected to the diffuser adapter at a position along a length of the diffuser adapter; and a light diffuser connected to the diffuser adapter.
Claim 26: a flash ring; a ring flash attached to the flash ring; and a light diffuser attached to the flash ring, the light diffuser comprising at least one surface that is angled relative to a direction of light propagating from the ring flash such that light emitted by the ring flash passes through the at least one surface.
Claim 35: a ring flash connected to the light diffuser body; and a flash ring connected to the ring flash such that light emitted from a light emitting portion of a ring flash connected to a passes through the cavity of the ring flash light diffusion device.
Thus, independent claims 16, 26 and 35 are considered to be materially narrowed in other aspects not related to the SGL.
See MPEP 1412.02 (C).
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.
Claim 35 is 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.
With respect to claim 35, Patent Owner recites “such that light emitted from a light emitting portion of a ring flash connected to a passes through the cavity of the ring flash light diffusion device” (emphasis examiner).
Connected to what? Is there some claim term missing, maybe the “light diffuser body”? As of now, the missing language of claim 35 makes the scope unclear.
Claim Rejections - 35 USC § 102
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.
Claims 26, 30 and 32-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20-2011-009084 (Lee et al.).
With respect to claim 26, Lee et al. teaches a ring flash light diffusion device comprising:
a flash ring 30;
a ring flash 100,200,202,300 attached to the flash ring; and
a light diffuser 300 attached to the flash ring (via housing 100), the light diffuser comprising at least one surface that is angled relative to a direction of light propagating from the ring flash such that light emitted by the ring flash passes through the at least one surface. The at least one surface (face of diffuser 300) is angled at an angle of 90° with respect to the light emitted from the flash ring.
With respect to claim 30, Lee et al. teaches wherein the light diffuser 300 at least partially covers a light emitting portion 202 of the ring flash (See figure 3b- last figure).
With respect to claim 32, Lee et al. teaches wherein a diameter of the flash ring 30 is different from a diameter of the ring flash 100,200,202. It can be seen from figure 3b of Lee et al.
With respect to claim 33, Lee et al. teaches wherein the light diffuser 300 has a body 100 that forms a concave cavity defined by an inner wall and an outer wall (See figure 3b, annotated below).
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With respect to claim 34, Lee et al. teaches further comprising: a ring 300 of semitransparent material (See English translation. “300” is translucent/semitransparent) connecting the inner wall and the outer wall, wherein the inner wall defines an opening extending from an inner circumference of the ring. See figure 3b.
With respect to claim 35, Lee et al. teaches a ring flash light diffusion device comprising:
a light diffuser body 100,300, the light diffuser body forming a cavity defined by an inner wall, an outer wall (See figure 3b, annotated above), and a semitransparent ring 300 (See English translation. “300” is translucent/semitransparent) connecting the inner wall and outer wall;
a ring flash 200,202 connected to the light diffuser body 100; and a flash ring 30 connected to the ring flash such that light emitted from a light emitting portion of a ring flash 202 connected to body 100 passes through the cavity of the ring flash light diffusion device.
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.
Claim(s) 27, 28 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. in combination with DE 3235819 to Ackerman (Ackermann).
With respect to claim 27, Lee et al. teaches a flash ring 30 connected to a ring flash 100,200,202,300, but is silent as to how the two elements are connected.
The publication to Ackermann teaches (figure 4) a camera 1 having a lens 7, upon which is mounted a flash device 8. This flash device is mounted to an adapter ring (“flash ring”) 14 via a circumferential groove 23 on an interior surface of the flash and a protrusion 25 on the adapter configured to secure the ring flash thereon.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the ring flash and flash ring of Lee et al. to have a circumferential groove and a corresponding protrusion, in view of the teaching of Ackermann, in order to connect the ring flash and the flash ring. This modification would have the same relationship as taught by Ackermann (ring flash surrounding flash ring).
Further, it would be obvious to modify the connection of Lee et al. in combination with Ackermann to have the circumferential groove on an exterior surface of the flash ring and corresponding protrusion on the ring flash to secure the ring flash thereon, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
With respect to claim 28, Lee et al., as modified by Ackermann above, would teach/render obvious wherein the ring flash is connected to the flash ring by attachment means located along an inner circumference of the ring flash that interlock with corresponding attachment means located along an outer circumference of the flash ring.
With respect to claim 31, Lee et al. teaches a flash ring 30 connected to a ring flash 100,200,202,300, but is silent as to how the two elements are connected.
The publication to Ackermann teaches (figure 4) how various elements (48, 45, 14) are all threaded/screwed together (via 49, 46, 47, 44).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the light diffuser 100,300 is attached to the flash ring 30 by screwing attachment means, in view of the teaching of Ackermann, as such are known mechanical equivalents and selection of any type of mechanical fastener yields predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 11,585,514 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely appraise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The publications to Mackay, Arce, Zeng et al. and EP publication to Tsuchiya et al. show the current state of the art in camera adapters for additional lenses/accessories.
Telephone Numbers for reexamination inquiries:
Central Reexam Unit (CRU) (571) 272-7705Reexamination Facsimile Transmission No. (571) 273-9900
Future Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRENCE R TILL whose telephone number is (571)272-1280. The examiner can normally be reached on Monday through Thursday and every other Friday 6:45-4:15 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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All correspondence relating to this reissue proceeding should be directed as follows:
By Patent Center:
https://patentcenter.uspto.gov
By U.S. Postal Service Mail to:
Mail Stop Ex Parte Reexam
ATTN: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
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By FAX to: (571) 273-9900
Central Reexamination Unit
By hand to: Customer Service Window
Knox Building
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Alexandria, VA 22314
/TERRENCE R TILL/Reexamination Specialist, Art Unit 3993
Conferees: /Laura Davison/ and /Patricia L Engle/
Laura Davison Patricia L. Engle
Reexam Specialist Supervisory Reexam Specialist
AU 3993 AU 3993