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`UNITEDSTATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/919,497
`
`10/17/2022
`
`NORIKO TSUCHIYA
`
`SYP334689US01
`
`4724
`
`CHIP LAW GROUP
`505 N. LAKE SHORE DRIVE
`SUITE 250
`CHICAGO, IL 60611
`
`FOX, BRANDON C
`
`2818
`
`12/19/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`docketing @chiplawgroup.com
`eofficeaction @appcoll.com
`sonydocket @evalueserve.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C) Claim(s)
`is/are allowed.
`Claim(s) 1-6 and 9-13 is/are rejected.
`Claim(s) 7-8 and 14 is/are objected to.
`C) Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 04/14/2021 is/are: a)¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.@) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 10/17/2022.
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241212
`
`Application No.
`Applicant(s)
`171919,497
`TSUCHIYAet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`BRANDON C FOX
`2818
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10/17/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`underthe first inventor to file provisions of the AIA.
`
`This is a Non-Final office action based on application 17/919,497 filed October 17,
`
`2022. Claims 1-14 are currently pending and have been considered below.
`
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claim5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`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 is rejected becauseit unclear how the secondcasingis further inserted
`
`into the substrate. It is unclearif the first casing is meant to further insert into the
`
`substrate along with the second casing.
`
`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 underthis section madein this Office action:
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`A personshall be entitled to a patent unless —
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`Page 3
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`(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) 1, 4-5, 9-10 & 12 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Utsumi (Pre-Grant Publication 2019/0207051).
`
`Regarding claim 1, Utsumi discloses an optical module comprising:
`
`a substrate (Fig. 53, 1);
`
`a light emitting element (43) that is disposed on the substrate;
`
`a light receiving element (41) that is disposed on the substrate ata
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`predetermined interval from the light emitting element;
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`a first casing (621/63) that is disposed on the substrate and surrounds a
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`periphery of the light emitting element;
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`a second casing (621/63) that is disposed on the substrate and surrounds
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`a periphery of the light receiving element;
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`a light emitting lens (511) that is housedin the first casing and is disposed
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`on an optical axis of the light emitting element; and
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`a light receiving lens (521) that is housed in the second casing and is
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`disposed on anoptical axis of the light receiving element,
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`wherein a first diameter of one lens outof the light emitting lens and the
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`light receiving lens in a first direction toward an optical axis of another lens
`
`with reference to an optical axis of the one lens is shorter than a second
`
`diameter of the one lens in a seconddirection that is orthogonalto the first
`
`direction (See Fig. 44 & 52).
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 4
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`Regarding claim 4 & 5, Utsumi further discloses:
`
`e The casing (621/63) is inserted into the substrate (1) by grooves (15).
`
`Regarding claim 9, Utsumi further discloses:
`
`e The optical axis of the one lens is biasedin the first direction from a center
`
`of the one lens (Fig. 44 & 52).
`
`Regarding claim 10, Utsumi further discloses:
`
`e
`
`the one lens has a D-cut shapethat has a linear shape on a side on which
`
`the one lens is adjacent to the another lens (Fig. 52).
`
`Regarding claim 12, Utsumi further discloses:
`
`e
`
`the one lens can have an I-cut shape (Fig. 1, 511) that has linear shapes
`
`on aside on which the one lens is adjacent to the another lens and a side
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`opposite to the side on whichthe one lens is adjacent to the another lens.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
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`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 effectivefiling 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.
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 5
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`Claim(s) 2-3 & 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Utsumi (Pre-Grant Publication 2019/0207051) in view of Makimura (Pre-Grant
`
`Publication 2013/0292705).
`
`Regarding claim 2-3, Utsumi disclosesall of the limitations of claim 1
`
`(addressed above). Utsumi doesnotdisclose the casing is fixed to the substrate with a
`
`member having a light shielding property. However Makimura disclose an optical
`
`apparatus comprising:
`
`e Acasing (Fig. 2, 6) encasing a light emitting device (2) and a light
`
`receiving device (3) wherein the casing is fixed to the substrate with a
`
`member (83, 831, 832, 842, 842) serving as light blocking portion
`
`(Paragraph [0174]).
`
`It would have been obvious to those having ordinary skill in the art at the time of
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`invention to form the light blocking portion on the substrate between the casing
`
`and the substrate becauseit will serve to block light from traveling in path
`
`between casing and the substrate (Paragraph [0174)).
`
`Regarding claim 6, Makimura further discloses:
`
`e The light emitting device can be formed as a separated module having a
`
`casing and substrate (Fig. 37, 301) and the light receiving device can be
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`another module (109) on another substrate.
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`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 6
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`It would have been obvious to those having ordinary skill in the art at the time of
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`invention to form the lighting emitting element and light receiving element on
`
`different substrates becauseit will reduce noiselight from traveling towards the
`
`light receiving element thereby improving reliability (Paragraph [0220)).
`
`Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Utsumi (Pre-Grant Publication 2019/0207051) in view of Egawa (Pre-Grant Publication
`
`2021/0041534).
`
`Regarding claim 11, Utsumi disclosesall of the limitations of claim 1 (addressed
`
`above). Utsumi doesnotexplicitly disclose an outer periphery of the one lens has a
`
`rectangular shape. However Egawadiscloses an optical device comprising:
`
`e Lens (915a-915c) over light emitting device (912a-912c) wherein the outer
`
`periphery of lens (915a-915c) have a rectangular shape.
`
`It would have been obvious to those having ordinary skill in the art at the time o
`
`invention to form the lens having the rectangular shape becauseit will allow for
`
`light emitted by the emitting devices to be focused or shapedinto a desired path
`
`or angle.
`
`Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Utsumi (Pre-Grant Publication 2019/0207051) in view of Rossi (Pre-Grant Publication
`
`2013/0153772).
`
`Regarding claim 13, Utsumi disclosesall of the limitations of claim 1 (addressed
`
`above). Utsumi doesnotexplicitly disclose a diameter of anotherlens in a third direction
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 7
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`is shorter than a diameterin a fourth direction. However Rossi discloses a optical
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`module comprising:
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`e Allens overa light emitting device (E) and a light detecting device (D)
`
`wherein a lens (Fig. 14, L2 & L3) over the devices having diameter shorter
`
`in a first and third direction than a second and fourth direction.
`
`It would have been obvious to those having ordinary skill in the art at the time of
`
`invention to form the lens having a shorter diameter in one direction than another
`
`direction becauseit can suppress cross-talk and allow the lens to be usedin
`
`openings that need to accommodate smaller sized lens (Paragraph [0217] &
`
`[0223}).
`
`Allowable Subject Matter
`
`Claims 7-8 & 14 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.
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`The following is a statement of reasons for the indication of allowable subject
`
`matter: Claim 7 is considered allowable because none of the prior art either alone or in
`
`combination discloses an opening portion of one casing outof the first casing and the
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`second casing allows another casing to be inserted thereinto with a clearance between
`
`an outer periphery of the another casing and an inner periphery of the opening portion.
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`Claim 8 is also considered allowable based on its dependencyfrom claim 7.
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 8
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`Claim 14 is considered allowable because none ofthe prior art either alone or in
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`combination disclosesthe first diameter is equal to or greater than an effective diameter
`
`of the one lens.
`
`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BRANDON C FOX whosetelephone numberis
`
`(571)270-5016. The examiner can normally be reached M-F 9:00AM-6:00PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Jeff W Natalini can be reached on 571-272-2266. The fax phone numberfor
`
`the organization wherethis 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 Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
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`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`

`

`Application/Control Number: 17/919,497
`Art Unit: 2818
`
`Page 9
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`(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.
`
`/BRANDONC FOX/
`Examiner, Art Unit 2818
`
`/DAVID VU/
`Primary Examiner, Art Unit 2818
`
`