NON-FINAL OFFICE ACTION
This Office Action is a Non-Final office action of Reissue of U.S. Application No. 17/023,982 now US Patent 11,557,024 issued on Jan 17, 2023 to Mitsybayashi et al. (the ‘024 patent).
The status of the claims amended on 5/13/2025 is as follows;
Claims 1-17 are original.
Claims 18-48 are new.
Claims 18-48 are rejected.
Reissue
The Examiner has determined that there are no other continuations, reissues, reexaminations, inter partes reviews, or other AIA trials or appeals currently pending with respect to the ‘024 Patent. A litigation search has determined there to be no pending litigation as to the ‘024 Patent.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,217,288 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 apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. 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.
Because the instant ‘024 Patent is deemed not to contain claims having an effective date prior to March 16, 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions apply, rather than the pre-AIA provisions. See 35 U.S.C. § 100 (note) and 35 U.S.C. § 100 (pre-AIA ). In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of any statutory basis for a 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.
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 26-28 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.
Claims 25-28 were reviewed against the specification and the examiner could not determine where in the specification the “plurality of instructions” outlined in the claims is explained. Accordingly, these claims contain new matter.
Original Patent Requirement
Claims 18-48 are rejected as not being for the same invention as that disclosed as being the invention in the original patent, as required by § 251.
The entire disclosure, not just the claim(s), is considered in determining what the patentee objectively intended as the invention. The determination of the original patent requirement is "an essentially factual inquiry confined to the objective intent manifested by the original patent." In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975)) (emphasis added); See also In re Mead, 581 F.2d 251, 256, 198 USPQ 412, 417 (CCPA 1978) ("Thus, in Rowand and similar cases, ‘intent to claim’ has little to do with ‘intent’ per se, but rather is analogous to the requirement of § 112, first paragraph, that the specification contain ‘a written description of the invention, and of the manner and process of making and using it.’").
The "original patent" requirement of § 251 must be understood in light of In re Amos, supra, where the Court of Appeals for the Federal Circuit stated:
We conclude that, under both Mead and Rowand, a claim submitted in reissue may be rejected under the "original patent" clause if the original specification demonstrates, to one skilled in the art, an absence of disclosure sufficient to indicate that a patentee could have claimed the subject matter. Merely finding that the subject matter was "not originally claimed, not an object of the original patent, and not depicted in the drawing," does not answer the essential inquiry under the "original patent" clause of § 251, which is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentees. In short, the absence of an "intent," even if objectively evident from the earlier claims, the drawings, or the original objects of the invention is simply not enough to establish that the new claims are not drawn to the invention disclosed in the original patent. 953 F.2d at 618-19, 21 USPQ2d at 1275.
Similarly, the disclosure requirement in Amos must be understood in light of Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares Pharma, Inc., the court found "[n]owhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention." Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Specifically, the court stated "[a]lthough safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification." Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. In other words, the court found that the patent only disclosed one invention, which was a particular class of jet injectors, due to the clearly repetitive use of "jet injector" in the title, the abstract, the summary of the invention, and the entirety of the specification of the patent. As a result, the claims in the reissue patent to the safety features on a generic injector (e.g., a non-jet injector) were held to violate the original patent requirement of § 251.
To satisfy the original patent requirement where a new invention is sought by reissue, "… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention." Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Accordingly, claims drawn to an invention comprising a newly claimed combination of features that were only disclosed in the original patent as suggested alternatives (and not as a single combination) or only as part of the original invention and not as an invention separate from the original invention would not satisfy the original patent requirement. See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019) ("nowhere do the written description or drawings disclose that arbors are an optional feature of the invention. Even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals [315 U.S. 668 (1942)] and Antares."). "The ‘original patent’ standard and the written description requirement are not the same. Where the written description requirement is based on what the skilled artisan would have understood was within the possession of the inventor, recent Federal Circuit case law indicates that the original patent requirement under § 251 requires something more." See Ex parte Sandwick, Appeal No. 2018-008369, op. at 22 (PTAB July 23, 2019) (Rejection under § 251 was affirmed because the patent did not describe any fabrication method other than casting. While one of ordinary skill in the art would have understood that other fabrication methods, such as injection molding or 3D printing, were possible or conventional, the reissue claims that did not include casting did not comply with the original patent requirement.)
Here, independent reissue claims 18, 32, and 39 have been amended to remove update register settings to provide control information. The issued claims stated instead “update register settings to provide control information respectively corresponding to each of the image sensors, the control information including a frame start packet indication and a frame end packet indication, and” which as described in the ‘024 patent specification at 6:3-8 and 10:61-11:10 which identifies a register as a recording medium.
“Also, the control information transmitted by the processing unit 102 is recorded into, for example, a register (an example of a recording medium) included in each sensor 200. The sensors 200 output an image on the basis of the control information stored in the respective register, as described below.
…
FIG. 3 is an explanatory diagram showing a configuration example of the sensor 200 included in the system 1000 according to the present embodiment. The sensor 200 has, for example, a processor 250, a ROM 252, a register 254, a sensor device 256, and a communication device 258. Also, these constituent elements in the sensor 200 are connected together by, for example, an internal bus 260. The sensor 200 is driven by power supplied from an internal power supply (not shown), such as a battery or the like, included in the system 1000, or power supplied from a power supply external to the system 1000.
(124) The processor 250 has a function of controlling the entire sensor 200. Examples of the control performed by the processor 250 include control of recording of received control information into the register 254, control of operation of the sensor device 256, control of communication of the communication device 258, and the like.
‘024 patent 6:3-8 and 10:61-11:10 emphasis added by the examiner
Instead, now the claims as broadened encompass removing the register; the ‘024 Patent discusses as noted above and in figure 3 that the sensor 200 must include the register. However, this newly-claimed invention is not disclosed in a manner such that the specification "clearly and unequivocally disclose[s] the newly claimed invention as a separate invention." Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871.
Further, the embodiment which corresponds to the instant claims, namely the removal of the register as originally claimed. This has been removed from the instant claims 18-48, however, there is no clear and unequivocal disclosure in the specification of this embodiment operating without the register. Id.
7 C.F.R. 1.173 Reissue specification, drawings, and amendments.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims. [AltContent: rect]
The examiner finds that there is no explanation for support for the additional claims. An explanation of support is required for the new claims and may obviate the 35 U.S.C. §112(1st ¶) rejections presented below.
The examiner finds that the Declaration for Claims 18-48 rejected as being based upon a defective reissue Declaration under 35 U.S.C. 251 as set forth above with respect to the Original Patent Requirement. See 37 CFR 1.175.
The nature of the defect(s) in the declaration currently has no error presented as set forth in the discussion above in this Office action.
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) 18, 19, 32 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Rothig et al US Patent Pub. 2016/0261375 in view of Hunter US Patent 9,485,381.
18. (New) A processing apparatus comprising:
a processing circuitry configured to
connect to a plurality of image sensors via a data bus,
control the plurality of image sensors to capture images and to output image data corresponding to the images to the data bus,
Roethig discloses in FIG. 2 is a block diagram illustrating a device having a baseband processor and an image sensor and implementing an image data bus and a control data bus as required by claim 39.
wherein outputting respective image data with a respective image sensor includes inserting a frame start packet before a first line of the respective image data and inserting a frame end packet after a last line of the respective image data.
.
Roethig does not specifically disclose the control information including a frame start packet indication and a frame end packet indication. Instead, Roethig ¶ 62 discloses the use of special data symbols to indicate the start and end of the nested packet In an analogous invention to Hunter (US Patent 9,485,381) discloses in the abstract an apparatus for transferring data over a Mobile Industry Processor Interface (MIPI) includes a scan bar for scanning an image, an analog front end (AFE) module in communication with the scan bar for receiving a plurality of video images of the image that is scanned by the scan bar, a translation logic module in communication with the AFE module to convert the plurality of video images into a scanlink frame using a MIPI communication protocol, wherein the scanlink frame comprises a frame start packet, a scanlink header packet, the plurality of video images and a frame end packet, a MIPI input interface in communication with the translation logic module to receive the scanlink frame and a processor in communication with the MIPI input interface to process the scanlink frame to generate a scanned image file using the scanlink frame.
One would be motivated to incorporate Hunter with Roethig in that they are both in the same field of endeavor of an apparatus and method for transferring data over a Mobile Industry Processor Interface (MIPI). Roethig discloses that many standards have the bandwidth requirements between 1.5 Mbps and 10 Mbps including MIPI. Accordingly, the examiner finds that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately.
Claims 32 and 39 are rejected for the dame reasons as claim 18.
Claim 19
19. (New) The processing apparatus of claim 18, wherein the data bus is configured to transmit the frame start packet and the frame end packet specified by CSI-2 standard.
With respect to claim 19 and the frame start and frame end packet specified by the CSI-2 standard please see Hunter 3:25-40 which discloses the following;
(16) In one embodiment, the MIPI communication protocol may be a RAWxx format as defined by a MIPI Camera Serial Interface 2 (CSI-2) standard. In one embodiment the “xx” of the RAWxx format may represent a number of bits per pixel as defined by the MIPI CSI-2 standard.
(17) In one embodiment, a new scanlink frame may be used to transmit the video images converted into the RAWxx format for transmission over a MIPI connection 122. The format of the scanlink frame is discussed in further detail below with reference to FIG. 2.
Hunter 3:25-40 emphasis added by the examiner
The scanlink frame contains the header and footer with the start and end packet. See Hunter 4:20-30.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M HOTALING II whose telephone number is (571)272-4437. The examiner can normally be reached 730-4 Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew J. Fischer can be reached at 571 272 6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M HOTALING II/Reexamination Specialist, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights