DETAILED ACTION
Examiner’s Remarks
Regarding the amendment filed 3/27/2026:
The amendments to claims 1, 2 and 5-8 are acknowledged and accepted.
The amendments to the abstract and title are acknowledged and accepted.
Rejections based on the newly discovered reference(s) Oki (US 2026/0120491) follow.
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 .
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.
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:
“a first imaging element that converts light received by the first fixed focus optical system” in claim 1
“a second imaging element that converts light received by the second fixed focus optical system” in claim 1
“a third imaging element that converts light received by the variable focus optical system” in claim 1
“focal length changing device that changes the focal length” in claim 1
“an illumination device that irradiates illumination light...” in claims 4, 9 and 10
“a focus determination unit that determines the focal length of the variable focus camera...” in claim 7
“a storage device that stores information...” in claim 8
“an aiming light irradiation device that irradiates aiming light...” in claims 9 and 10
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 5-7 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.
Claim 5 recites the control device controls the focal length changing device such that the focal length of the variable focus optical system becomes shorter than the first focal length, and reads symbol information based on the third image, which is focused at a shorter distance than the first image and which is generated by the variable focus camera whose focal length is shorter than the first focal length. However, claim 1 already recites the opposite, i.e. the control device...controls the focal length changing device such that the focal length of the variable focus optical system is longer than the first focal length and shorter than the second focal length, and reads information of the symbol based on the third image focused at a distance farther than the first image and closer than the second image, wherein the third image is generated by the variable focus camera under the focal length. It is not clear if “the third image” in claim 5 is the same as, or different than that in claim 1, since claim 5 contradicts claim 1 (i.e. in claim 5, “the third image, which is focused at a shorter distance than the first image and which is generated by the variable focus camera whose focal length is shorter than the first focal length” and in claim 1 “the third image focused at a distance farther than the first image and closer than the second image, wherein the third image is generated by the variable focus camera under the focal length...the focal length of the variable focus optical system is longer than the first focal length and shorter than the second focal length”). If different, then the claim language needs to differentiate the two third images.
Additionally, it is unclear if the applicant intended the controlling of the focal length in claim 5 to occur after that in claim 1, since that in claim 1 is required. Please clarify. If so, the claim language needs to clarify better that the changing of the focal length and reading the symbol based on the third image which is focused at a shorter distance than the first image and which is generated by the variable focus camera whose focal length is shorter than the first focal length occurs after the steps in claim 1, e.g. “wherein the control device further controls the focal length changing device...” and indicate that the variable focus camera generates a fourth image since this cannot be the same third image as that in claim 1.
Claim 6 recites the control device controls the focal length changing device such that the focal length of the variable focus optical system becomes longer than the second focal length, and reads symbol information based on the third image, which is focused at a longer distance than the second image and which is generated by the variable focus camera whose focal length is longer than the second focal length. However, claim 1 already recites the opposite, i.e. the control device...controls the focal length changing device such that the focal length of the variable focus optical system is longer than the first focal length and shorter than the second focal length, and reads information of the symbol based on the third image focused at a distance farther than the first image and closer than the second image, wherein the third image is generated by the variable focus camera under the focal length. It is not clear if “the third image” in claim 5 is the same as, or different than that in claim 1, since claim 5 contradicts claim 1 (i.e. in claim 6, “the third image, which is focused at a longer distance than the second image and which is generated by the variable focus camera whose focal length is longer than the second focal length” and in claim 1 “the third image focused at a distance farther than the first image and closer than the second image, wherein the third image is generated by the variable focus camera under the focal length...the focal length of the variable focus optical system is longer than the first focal length and shorter than the second focal length”). If different, then the claim language needs to differentiate the two third images. Additionally, it is unclear if the applicant intended the controlling of the focal length in claim 6 to occur after that in claim 1, since that in claim 1 is required. Please clarify. If so, the claim language needs to clarify better that the changing of the focal length and reading the symbol based on the third image which is focused at a longer distance than the second image and which is generated by the variable focus camera whose focal length is longer than the second focal length occurs after the steps in claim 1, e.g. “wherein the control device further controls the focal length changing device...” and indicate that the variable focus camera generates a fourth image since this cannot be the same third image as that in claim 1.
Regarding claim 7, the claim limitations “a focus determination unit for determining the focal length of the variable focus camera” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification is devoid of adequate structure to perform the claimed functions. There is no way to determine the metes and bounds of these limitations, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structures perform(s) the claimed function. The specification does not disclose a corresponding algorithm associated with a computer or microprocessor. As stated in MPEP 2181(II)(B), “a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor. Aristocrat, 521 F.3d at 1337-38, 86 USPQ2d at 1242. For example, in Advanced Ground Information Systems, Inc. v. Life360, Inc., 830 F.3d 1341, 119 USPQ2d 1526 (Fed. Cir. 2016)” Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 7 is 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.
As described above, the disclosure does not provide adequate structure to perform the claimed function of “determining the focal length of the variable focus camera“. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Because there is inadequate disclosure of the claimed invention, the inventor has also not provided sufficient disclosure to show possession of the invention. Correction is required.
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)(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 and 9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Oki (US 2026/0120491).
With respect to claims 1 and 9, Oki discloses an optical information reading device that captures an image of a symbol to be read and reads information of the symbol, comprising:
an imaging device and a control device ([0074]), wherein the imaging device includes:
a first fixed focus camera (short-distance camera) including a first fixed focus optical system having a first focal length and receiving reflected light that is incident on the symbol and reflected by the symbol, and a first imaging element that converts light received by the first fixed focus optical system into an electrical signal to generate a first image ([0064]),
a second fixed focus camera (long-distance camera) including a second fixed focus optical system having a second focal length longer than the first focal length and receiving reflected light that is incident on the symbol and reflected by the symbol, and a second imaging element that converts light received by the second fixed focus optical system into an electrical signal to generate a second image focused at a longer distance than the first image ([0064]),
a variable focus camera (a variable intermediate camera unit with a focal length that can be varied between short and long distances) including a variable focus optical system whose focal length is variable and which receives reflected light that is incident on the symbol and reflected by the symbol, a third imaging element that converts light received by the variable focus optical system into an electrical signal to generate a third image, and a focal length changing device that changes the focal length of the variable focus optical system ([0064]), and
wherein the control device ([0079], [0134]):
reads information of the symbol based on the first image, the second image, and the third image ([0079], [0145]),
controls the focal length changing device such that the focal length of the variable focus optical system is longer than the first focal length and shorter than the second focal length ([0079], [0145]), and
reads information of the symbol based on the third image focused at a distance farther than the first image and closer than the second image (image from a variable intermediate camera unit with a focal length that can be varied between short and long distances), wherein the third image is generated by the variable focus camera under the focal length ([0079], [0145]).
With respect to claim 9, Oki discloses an illumination device that irradiates illumination light onto the symbol; and an aiming light irradiation device that irradiates aiming light onto the symbol, wherein the first fixed focus camera, the second fixed focus camera, the variable focus camera, the illumination device, and the aiming light irradiation device are arranged in a straight line ([0065], Fig. 1).
Allowable Subject Matter
Claims 2-4, 8 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 2, prior art fails to teach or reasonably suggest, either singly or in combination, the control device comprises: a first image capture interface is connected to the first fixed focus camera and acquires the first image, a second image capture interface is connected to the second fixed focus camera and acquires the second image, a third image capture interface is connected to the variable focus camera and acquires the third image, and one or more cores capable of executing decoding processes in parallel on the first image, second image, and third image, wherein the timing for acquiring the first image, second image, and third image is independent of each other, in addition to the other limitations of the claim from which the instant claim depends.
With respect to claim 8, prior art fails to teach or reasonably suggest, either singly or in combination, a trigger key operated by an operator to define an imaging timing of the imaging device; and a storage device that stores information related to a predetermined focal length positioned between the first focal length and the second focal length, wherein the control device upon detecting that the trigger key is operated, at an initial imaging timing, causes the variable focus camera to adjust to the predetermined focal length based on the information related to the predetermined focal length, and causes an imaging by the variable focus camera adjusted to the predetermined focal length, in addition to the other limitations of the claim from which the instant claim depends.
With respect to claim 10, prior art fails to teach or reasonably suggest, either singly or in combination, the first fixed focus camera, the second fixed focus camera, the variable focus camera, and the illumination device are arranged to surround the aiming light irradiation device, in addition to the other limitations of the claim from which the instant claim depends.
Claims not specifically addressed would be allowable due to their dependency.
Response to Arguments
Applicant's arguments regarding claim 7 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections based on the 112(f) interpretation, the applicant directs the examiner to paras. [0019] and [0069] for structural support for the 35 U.S.C.112(f) interpretation of “focus determination unit” and thus argues that “it would be apparent that one of ordinary skill in the art can reasonably conclude an adequate structure to perform the claimed function of the focus determination unit from the specification”.
According to MPEP 2181, “For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).” Additionally, MPEP 2181(II)(B) states “In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239” and “To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. § 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.”
The applicant’s specification merely describes “the control device can be a CPU, MPU, SoC, ASIC or the like”, and not a special purpose computer programmed to perform a disclosed algorithm (The specification also does not describe an algorithm). As such, the control device that includes a focus determination unit is not considered sufficient structure for performing the claimed function. Mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting "software" without providing detail about the means to accomplish a specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239; Finisar, 523 F.3d at 1340-41, 86 USPQ2d at 1623.
When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a). See MPEP § 2181(IV) and MPEP § 2163.03(VI).
As such, the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections are maintained regarding claim 7.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kearney (US 2009/0168117) discloses a dual focus imaging scanner system for reading barcodes, the scanner system having a long range focus image sensor and a short range focus image sensor. Kearney does not teach a third image sensor, wherein the third image sensor is a variable focus image sensor.
Poloniewicz et al. (US 2022/0303451) discloses a first image sensor that is a near-field image sensor and a second image sensor that is a far-field image sensor, and changing the focusing of the far-field image sensor..
Telephone/Fax Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUEZU ELLIS whose telephone number is (571)272-2868. The examiner can normally be reached Monday - Friday, 10:30 am - 6:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham can be reached at (571) 272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUEZU ELLIS/Primary Examiner, Art Unit 2876
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