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 .
Status of Claims
This Office Action is in response to the application filed on 07/14/2025. Claims 1-20 are pending for examination.
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/14/2025.The submission is following the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The Obviousness 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 non-statutory 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 Langi, 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 CPR l.32l(c) or l.32l(d) may
be used to overcome an actual or provisional rejection based on non-statutory 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 CPR l.32l(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory 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. l. For a reply to a non-final Office action, see 37 CPR 1.11 l(a). For a reply to final Office action, see 37 CPR 1.113(c). A request for reconsideration while not provided for in 37 CPR 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, to refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatented over claims 1-20 of U.S, Patent No 12/389,101.
Although the claims of the instant application are not identical, to those of the referenced patent, they are not patentably distinct therefrom. The difference between the claim sets are merely in terminology, as illustrated in the claim comparison table below, and do not result in any patentable distinction.
Accordingly, the instant claims are considered to be an obvious variation of the claims of the cited patent.
To overcome this rejection, a terminal disclaimer must be filed. The terminal disclaimer must disclaim any term of the instant application that would extends beyond the term of the referenced patent and must include the required common ownership and enforceable provisions under C.F.R. § 1.321.
The following table provides an exemplary comparison between representative claims, and shows that the difference are merely in wording and do not constitute a patentable distinction.
19/268,108
(Instant Application)
18/220,462
(US Patent US 12389101 B2)
EXEMPLARY CLAIM 1
CLAIM 1
1. An electronic device for use with an endoscope comprising:
a first circuit board including a first side surface; a first solder disposed on the first side surface;
a second circuit board including a second side surface;
a second solder disposed on the second side surface;
an electronic component provided between the first and the second circuit boards; and
a tube bonded to each of the first and the second side surfaces by the first and the second solders to seal the electronic component in an airtight manner.
2. The electronic device according to claim 1, wherein the electronic component is a movement detection sensor.
4. The electronic device according to claim 1,
wherein the first circuit board includes a first land disposed around the first side surface,
the second circuit board includes a second land disposed around the second side surface, and each of the first and the second lands is bonded to the tube by the first and the second solders.
5. The electronic device according to claim 4,
wherein the first and the second side surfaces each extend in a longitudinal direction and the first and the second lands have a width in the longitudinal direction less than a width of the first and the second side surfaces in the longitudinal direction.
10. The electronic device according to claim 1,
wherein the tube is a rectangular tube comprising a plurality of plates and a third solder bonding the plurality of plates.
11. The electronic device according to claim 10,
wherein a melting point of the first and the second solders is higher than a melting point of the third solder.
12. The electronic device according to claim 1,
further comprising sealing resin filling a recess, at least one of the first or the second circuit board including the recess.
13. The electronic device according to claim12,
wherein the sealing resin fills a gap between an inner surface of the tube and each of the first and the second side surfaces.
17. The electronic device according to claim 1,
wherein the first and the second circuit boards are each formed of ceramic, and the tube is formed of metal.
1. An image pickup unit comprising:
an image sensor including a back surface on which a back surface electrode is disposed;
a first circuit board including:
a first principal surface on which a first electrode is disposed, the first electrode being bonded to the back surface electrode;
a second principal surface on which a second electrode is disposed, and a first side surface;
a second circuit board including: a third principal surface on which a third electrode is disposed, the third electrode being bonded to the second electrode; and a second side surface;
an electronic component housed in a recess, at least one of the second principal surface or the third principal surface including the recess; and
a tube bonded to each of the first land and the second land to seal the recess in an airtight manner.
2. The image pickup unit according to claim 1, wherein the electronic component is a movement detection sensor.
3. The image pickup unit according to claim 1,
wherein the first circuit board includes a first land disposed on the first side surface,
the second circuit board includes a second land disposed on the second side surface,
the second and the third electrodes are bonded to each other by first solder, and each of the first and the second lands are bonded to the tube by second solder.
11. The image pickup unit according to claim 3,
wherein the first and the second side surfaces each extend in a longitudinal direction and the first and the second lands have a width in the longitudinal direction less than a width of the first and the second side surfaces in the longitudinal direction.
5. The image pickup unit according to claim 3,
wherein the tube is a rectangular tube comprising a plurality of plates and third solder bonding the plurality of plates.
5. The image pickup unit according to claim 4,
wherein a melting point of the second solder is lower than a melting point of the first solder and higher than a melting point of the third solder.
6. The image pickup unit according to claim 1, further comprising sealing resin filling the recess.
7. The image pickup unit according to claim 6,
wherein the sealing resin fills a gap between an inner surface of the tube and each of the first and the second side surfaces.
9. The image pickup unit according to claim 2,
wherein the first and the second circuit boards are each formed of ceramic and the tube is formed of metal.
The parent and child claim are directed to substantially the same invention. Both recite a first circuit board, a second circuit board, an electronic component disposed between the circuit boards, and a tube bonded to the circuit board structure to provide an airtight seal. The parent claim further specifies electrodes, lands, and a recess structure, while the child claim recites a corresponding arrangement using solder connections on side surfaces.
Accordingly, the differences represent variations in the implementation of the same underlying structure rather than a patentably distinct invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASTEWAYE GETTU ZEWEDE whose telephone number is (703)756-1441. The examiner can normally be reached 8:30 am-5:00 pm.
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/ASTEWAYE GETTU ZEWEDE/Examiner, Art Unit 2481 /WILLIAM C VAUGHN JR/Supervisory Patent Examiner, Art Unit 2481
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