DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of ‘606 teaches all the limitations of instant claim 1.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 2, claim 2 of ‘606 teaches all the limitations of instant claim 2.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 4, claim 3 of ‘606 teaches all the limitations of instant claim 4.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 5, claim 4 of ‘606 teaches all the limitations of instant claim 5.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 6, claim 5 of ‘606 teaches all the limitations of instant claim 6.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 7, claim 6 of ‘606 teaches all the limitations of instant claim 7.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 16, claim 13 of ‘606 teaches all the limitations of instant claim 16.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 17, claim 14 of ‘606 teaches all the limitations of instant claim 17.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,335,606. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 18, claim 15 of ‘606 teaches all the limitations of instant claim 18.
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Washisu (US 2006/0226341 A1).
Regarding claim 17, Washisu discloses
A method of controlling an image pickup apparatus that includes an image sensor, the method comprising:
a first determination step of determining whether an optical filter is in a state where the optical filter located at a first position at which the optical filter is inserted into an imaging range of the image sensor or a state where the optical filter doesn't locate at the first position ([0116]; If it is determined whether or not to retract the splitter 103, it has inherently been determined whether the optical filter is retracted or not. In addition, at step #1010 the user selects whether to retract or not retract the splitter 103. If a user selects whether to retract or not that user has also determined that the splitter is retracted or not.);
a second determination step of determining whether or not an in- focus state can be obtained by moving a focus lens while the optical filter is located at the first position (#1005; fig. 28; [0113]; It is determined that the focus is inadequate at step #1005. This occurs based on light passing through the splitter to the image sensor (see [0112]) in step #1003).; and
an exposure control step of performing exposure control in a case where the second determination step determines that the in-focus state cannot be obtained ([0113]; If the in-focus state cannot be obtained, a message indicating that the camera cannot focus is displayed and processing proceeds to step #1006. Exposure is carried out at steps #1009 and #1014 after step #1006.).
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Washisu in view of Official Notice.
Regarding claim 18, Washisu discloses everything claimed as applied above (see claim 17), however, Washisu fails to explicitly disclose that the processing steps of fig. 28 are stored as a program in a non-transitory computer-readable storage medium. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Washisu teaches a process for controlling a camera but is silent on how the process is implemented. Implementing a control process for a camera as a program stored in a non-transitory medium is well-known. 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 substitute the undisclosed means for implementing the process of Washisu with storing the process as a program on a non-transitory medium to achieve the predictable result of improving flexibility in manufacturing.
Allowable Subject Matter
Claims 3, 8-15 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:
Regarding claims 3 and 8, the prior art of record fails to disclose performing exposure control in a case where the control unit determines, based on defocus map information and optical filter information, that the in-focus state is obtained where the optical filter is not located at the first position but the in-focus state is not obtained in a state where the optical filter is located at the first position.
Regarding claims 9-15, they depend from claim 8 and therefore contain allowable subject matter for the same reasons as stated above (see claims 3 and 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M BERARDESCA whose telephone number is (571)270-3579. The examiner can normally be reached Mon-Thurs 10-8, Fri 10-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sinh Tran can be reached at (571)272-7564. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PAUL M. BERARDESCA
Examiner
Art Unit 2637
/PAUL M BERARDESCA/Primary Examiner, Art Unit 2637 8/8/2026
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