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 .
DETAILED ACTION
Response to Amendment
The amendment and the Request for Continuing Examination filed on 09/10/2025 have been entered. Claims 1-12 are now pending in the application. Claims 1-3 have been amended and new claims 10-12 have been added by the Applicant.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Priority
As required by e M.P.E.P. 210, 214.03, acknowledgement is made of applicant’s claim for priority based on application JP 2021-139954, filed 08/30/2021 (Japan).
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
However, to overcome a prior art rejection, applicant(s) must submit a translation of the foreign priority papers in order to perfect the claimed foreign priority because said papers has not been made of record in accordance with 37 CFR 1.55. See MPEP § 213.04
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
Claim Rejections - 35 USC § 103
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.
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.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (hereafter Chen) US 20210055504 A1 in view of Bernstein et al. (hereafter Bernstein) US 20070139752 A1 (both of record).
In regard to independent claim 10, Chen teaches (see Figs. 1-7) an optical actuator (e.g. optical member driving mechanism e.g. 10, see abstract, paragraphs [2-11,24-30, 32-48]), comprising:
a movable part (200) including:
a mounting surface for an optical path bending member (inner surface 211 for optical member mirror or prism 30, paragraphs [24-28], Figs. 3-4), and
a recessed portion extending (i.e. annular structure 230, recessed for supporting member 300, and extending, e.g. towards center of 30 at back of 211, paragraphs [28-31], Figs. 3-6), the movable part being swung by driving of a driving part (driving assembly 400 moves/rotates 200, paragraphs[4, 6,24,36-37], Figs. 5-7); and
a fixing part (fixed portion 100, Figs. 2-3, 5-7) including a protruding portion inserted into the recessed portion so as to define a swing center of the movable part as a position near the center of the mounting surface (i.e. supporting member 300 surrounded/inserted into 230 and back part side of base 110, defining rotational center of 200 near center of 211 with 300, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7),
wherein the protruding portion supports the movable part via the ball (as supporting member 300 as ball on protruding surface of 110, between 230 and corresponding part protruding part of 110, supports 200, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7) disposed between the protruding portion and the recessed portion, the ball serving as the swing center (supporting member 300 as ball disposed between 230 i.e. interior end portion of recessed 230 and corresponding protruding portion of 110, and as 300 defining rotational center of 200, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7), and
the protruding portion includes a protruding-portion-side surface (i.e. as protruding-portion-side surface of the back part side of base 110, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]) making contact with a spherical surface of the ball (i.e. as protruding-portion-side protruding surface of 110 making contact with 300, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]), and
the recessed portion includes a recessed-portion-side tapered surface making annular contact with the spherical surface of the ball (i.e. as 230 is annular structure and ball 300 is spherical on portion of 110 base and ball 300 contacts annular/cylindrical 230 surface in annular contact as depicted in Figs. 5A and 5B i.e. 300 contact annular surface in both X- and Y-directions, see paragraphs [28-29, 36-37-44]).
But Chen is silent that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical making annular contact with the ball, that the recessed-portion-side is recessed-portion-side tapered surface and is making annular contact with the spherical surface of the ball (300) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface.
However Bernstein teaches in same field of invention of actuatable mirror/reflector devices (see Figs. 1-5, 13, Title, Abstract, paragraphs [5-30, 49-60, 64-67], including mirror movable platform with recessed cavity portion 114(214) and surface 116(216), sphere bearing 106(206) on the protruding portion support element 104(204) with end surface 121, see Fig. 1-5, paragraphs [51-53, 57-61]) and further teaches that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical and the protruding-portion-side tapered surface making annular contact with the ball, (as protruding support element 104(204) with end receptable 121,120 in which the sphere bearing 106 (206) is disposed, and as 121 may be conically shaped, tapered such that the spherical bearing 106 makes annular contact with conical tapered end surface 121, see Fig. 1-5) and that the recessed portion with recessed-portion-side portion includes a tapered surface making annular contact with the spherical surface of the ball (i.e. as cavity 114,214, with the recessed cavity surface 216,116 and has contact portions has conical or v-shape with tighter apex e.g. 228 making annular contact with spherical bearing, thus providing additional stability to the structure, see paragraphs [51-53, 57-61]) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface (i.e. as v-shape tighter apex e.g. 228 has tighter apex tapered conical surface than 121, as depicted in Figs. 1 and 2 of Bernstein, thus providing additional stability to the movable structure, see paragraphs [51-53, 57-61, Figs. 1-2).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust and modify the recessed and protruding portions of Chen to include the shape of the protruding-portion-side surface as tapered surface as end receiving surface portion on the protruding support element, and tapered tight apex conical cavity surface on recessed portion, so that protruding portion and recessed portion having conical tapered surfaces can restrict the bearing (ball) movement according to teachings of Bernstein in order to provide positionally fixing spherical bearing, and additional stability to the movable structure (see Bernstein paragraphs [51-53, 57-61]).
In the alternative that apex tapered conical surface of recess side is close to but not tighter than protruding side (end 121) conical surface apex, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the apex tapered conical surface of recess side tighter than protruding side 121 conical surface apex since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, one would have been motivated to select the shape of tighter apex conical surface on recess side than on the protrusion side for the purpose of securing additional stability to the movable structure, see Bernstein paragraphs [51-53, 57-61, Figs. 1-2).
Regarding claim 12, the Chen-Bernstein-Lee combination teaches the invention as set forth above and further teaches (see Figs. 1-7) the protruding-portion-side tapered surface includes a bottom surface and a conical side surface on which makes annular contact with the ball (i.e. as protruding portion on 110 for 300, Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39] as modified with protruding side tapered surface e.g. 104 with conical end 121 for receiving spherical bearing 106, has bottom surface i.e. finite surface at apex of conical end and conical sides that contact 106, see Bernstein paragraphs [51-53, 57-61, Figs. 1-2, applied to 110 and 300), the recessed-portion-side tapered surface include a bottom surface includes a bottom surface and a conical side surface on which makes annular contact with the ball (i.e. as recessed portion 230 on 200 for 300, Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39] as modified with protruding side tapered surface e.g. 216 with conical apex 228 for receiving spherical bearing 106, has bottom surface i.e. finite surface at apex of conical apex and conical sides that contact 106, see Bernstein paragraphs [51-53, 57-61, Figs. 1-2, as applied to 230 and 300).
Claims 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (hereafter Chen) US 20210055504 A1 in view of Bernstein et al. (hereafter Bernstein) US 20070139752 A1, and further in view of Lee et al. (hereafter Lee) US 20200404181 A1.
In regard to independent claims 1 and 2, Chen teaches (see Figs. 1-7) an optical actuator (e.g. optical member driving mechanism e.g. 10, see abstract, paragraphs [2-11,24-30, 32-48]), comprising:
a movable part (200) including a mounting surface for an optical path bending member (inner surface 211 for optical member mirror or prism 30, paragraphs [24-28], Figs. 3-4), and a recessed portion extending toward a center of the mounting surface at a back side of the mounting surface (i.e. annular structure 230, recessed for supporting member 300, extending towards center of 30 at back of 211, paragraphs [28-31], Figs. 3-6), the movable part being swung by driving of a driving part (driving assembly 400 moves/rotates 200, paragraphs[4, 6,24,36-37], Figs. 5-7);
a fixing part (fixed portion 100, Figs. 2-3, 5-7) including a protruding portion inserted into the recessed portion so as to define a swing center of the movable part as a position near the center of the mounting surface (i.e. supporting member 300 surrounded/inserted into 230 and back part side of base 110, defining rotational center of 200 near center of 211 with 300, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7), the protruding portion including a protruding-portion-side surface (i.e. as protruding-portion-side surface of the back part side of base 110, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]), the protruding-portion-side surface making contact with the ball (i.e. as protruding-portion-side protruding surface of 110 making contact with 300, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]), and
a ball disposed between the protruding-portion-side surface of the protruding portion and an interior end portion of the recessed portion, the ball serving as the swing center (supporting member 300 as ball disposed between interior end portion of recessed 230 and corresponding protruding-portion-side surface of 110, and as 300 defining rotational center of 200, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7), wherein:
the optical path bending member refracts incident light parallel to a first direction in a second direction perpendicular to the first direction (as optical member mirror or prism 30, bends the incident light along incident direction Z-axis, to outgoing direction along Y-axis, as depicted due to geometry of 10, 30 and 40 depicted in Figs, 1-2, paragraphs [24-25]);
the driving part (400 and parts) is provided at portions of the fixing part and the movable part which face each other in the first direction (i.e. as at least 420A,B on 200 and 410A,B on fixed 100 face each other along in Z-direction, paragraphs [32-38],Figs. 3, 5), and the driving part and an entirety of the ball are arranged along in the first direction (i.e. as driving part e.g. 420A, 410A arranged with 300, and 420B, 410B arranged with 300 along Z- direction, paragraphs [32-38],Figs. 3, 5), wherein the protruding portion supports the movable part via the ball (supporting member 300 as ball, between 230 and corresponding part protruding part of 110, supports 200, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7), and that the recessed portion includes a surface making annular contact with a spherical surface of the ball (i.e. as 230 is annular structure and ball 300 is spherical on portion of 110 base and ball 300 contacts annular/cylindrical 230 surface in annular contact as depicted in Figs. 5A and 5B i.e. 300 contact annular surface in both X- and Y-directions, see paragraphs [28-29, 36-37-44]).
But Chen is silent that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical and has an inner diameter that decreases toward a rear side of the optical actuator, the protruding-portion-side tapered surface making annular contact with the ball, and that the driving part and an entirety of the ball are arranged to overlap with each other in the first direction, regarding claim 2 that the recessed portion includes a tapered surface.
However Bernstein teaches in same field of invention of actuatable mirror/reflector devices (see Figs. 1-5, 13, Title, Abstract, paragraphs [5-30, 49-60, 64-67], including mirror movable platform with recessed cavity portion 114(214) and surface 116(216), sphere bearing 106(206) on the protruding portion support element 104(204) with end surface 121, see Fig. 1-5, paragraphs [51-53, 57-61]) and further teaches that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical and has an inner diameter that decreases toward a rear side of the optical actuator, the protruding-portion-side tapered surface making annular contact with the ball (as protruding support element 104(204) with end and receptable 121,120 in which the sphere bearing 106 (206) is disposed, and as 121 may be conically shaped, with the inner diameter is decreasing toward the rear of the actuator platform 100, 200, in which case the spherical bearing 106 makes annular contact with conical end surface 121, see Fig. 1-5) and that the recessed portion includes a tapered surface (i.e. as cavity 114,214, with the recessed cavity surface 216,116 and has contact portions has conical or v-shape with tighter apex e.g. 228, thus providing additional stability to the structure, see , paragraphs [51-53, 57-61]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust and modify the recessed and protruding portions of Chen to include the shape of the protruding-portion-side surface as tapered surface as end receiving surface portion on the protruding support element, and tapered tight apex conical cavity surface, so that protruding portion having conical tapered surface can restrict the bearing (ball) movement according to teachings of Bernstein in order to provide positionally fixing spherical bearing, and additional stability to the movable structure (see Bernstein paragraphs [51-53, 57-61]).
Lastly as noted above Chen discloses the claimed invention except that the driving part and an entirety of the ball are arranged to overlap with each other in the first direction (i.e. driving part e.g. 410A,420A is not overlapping movable part 200 in 1st z-direction) as instead of the driving part and an entirety of the ball are arranged along in the y direction is used (i.e. as driving part e.g. 420A, 410A overlapped with moving part in 2nd Y-direction and arranged with support ball 300 along Z- direction, paragraphs [32-38],Figs. 3, 5).
Lee shows that driving part (e.g. 1141a, 1141b overlapping movable part (reflection module, rotation holder 1100,1120, paragraphs [78-89, Figs. 3-4, 9 and 10) in 1st z-direction is an equivalent structure in the art (i.e. as demonstrated by comparison of magnet 1141a on bottom surface of movable 1120 frame and coil 1141b on bottom of fixed housing 1010, in Figs. 3-4,9 and 10, paragraphs [101-103, 112-116], as this configuration is provided to improve sensitivity and more accurately sense the position of the movable holder 1120).
Therefore, because these two arrangements of driving part (magnet coil) and movable part (rotation holder) were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute vertical arrangement of driving and movable part along 1st (incident light) direction for horizontal arrangement of driving and movable part along 2nd (reflected light ) direction (See MPEP §2144.06), and in order to provide improved sensitivity and more accurately sense the position of the movable holder (see Lee, paragraphs [114-115). As a result of the combination the combination also teaches and renders obvious that that the driving part and an entirety of the ball are arranged to overlap with each other in the first direction (i.e. as driving part 410A, 420A are moved to the bottom of fixed part 100,110 and bottom surface of movable part 200, respectively, they overlap with entirety of the ball support 300 in vertical, incident light (Z-axis direction, see Chen paragraphs [32-38],Figs. 3, 5, and Lee Figs. 3-4,9 paragraphs [101-103, 112-116]).
Regarding claim 3, the Chen-Bernstein-Lee combination teaches the invention as set forth above and further teaches (see Figs. 1-7) the recessed portion includes a recessed-portion-side tapered surface making contact with the ball (i.e. as modified 230 with tighter apex tapered conical surface making contact with 300, paragraphs [28-29, 36-37-44], Figs. 5-7 due to combination with Bernstein paragraphs [51-53, 57-61, Figs. 1-2) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface (i.e. as modified 230 has tighter apex tapered conical surface than 121, as depicted in Figs. 1 and 2 of Bernstein, thus providing additional stability to the movable structure, see paragraphs [51-53, 57-61, Figs. 1-2). However, in the alternative that apex tapered conical surface of recess side is close to but not tighter than protruding side 121 conical surface apex, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the apex tapered conical surface of recess side tighter than protruding side 121 conical surface apex since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, one would have been motivated to select the shape of tighter apex conical surface on recess side than on the protrusion side for the purpose of securing additional stability to the movable structure, see Bernstein paragraphs [51-53, 57-61], Figs. 1-2).
Regarding claim 4, the Chen-Bernstein-Lee combination teaches the invention as set forth above and Chen teaches (see Figs. 1-7) that the fixing part further includes a biasing member (110 with 500, Figs. 3, 5-7) that biases the movable part toward the protruding portion (i.e. as elastic member 500 that provides elastic force to 200 towards 300 and 110 part, paragraphs [25, 42-45]).
Regarding claim 5, the Chen-Bernstein-Lee combination teaches the invention as set forth above and Chen teaches (see Figs. 1-7) that the fixing part (100) includes a fixing-part main body and a supporting wall portion (as e.g. housing 120, base 110 with back wall and protrusions, portion supporting ball 300, permeability member 600, paragraphs [25-26, 29],Figs. 2-3), the supporting wall portion being formed separately from the fixing-part main body and including an inner surface on which the protruding portion is formed (as base 110 with back wall and protrusions, depicted portion supporting ball 300 with inner surface, and 120 formed separately , paragraphs [25-26, 29],Figs. 2-3), and the biasing member (500) includes a first fixing part fixed to the fixing-part main body and a second fixing part fixed to the movable part (with 510 and 520 sections fixed to 120,110 and 200, respectively, paragraphs [42-45]).
Regarding claim 6, the Chen-Bernstein-Lee combination teaches the invention as set forth above and Chen teaches (see Figs. 1-7) that each of the recessed portion and the protruding portion extends in the second direction (i.e. as both base 110 portion with support 300 and 230 extend in Y-axis direction, as depicted in Figs. 5B,6-7).
Regarding claim 7, the Chen-Bernstein-Lee combination teaches the invention as set forth above and Chen teaches (see Figs. 1-7) that the driving part (400 and parts, Figs. 3-5) is disposed between a lower surface of the movable part and a bottom wall portion of the fixing part (i.e. as 420A,B are on lower side surface(s) of 200 and 410A,B are on bottom side surfaces of 120, paragraphs [32-38],Figs. 3, 5) and the swing center and the driving part are disposed on a same straight line parallel to the first direction (i.e. at least part(s) of 420A,B and 410A,B are along the same straight line as rotation of 300, 230, in Z-direction as depicted in Figs 5A,B, paragraphs [32-38], and due to combination with Lee, see claim 1 above).
Regarding claim 8, the Chen-Bernstein-Lee combination teaches the invention as set forth above and Chen teaches (see Figs. 1-7) a camera module (e.g. electronic imaging lens system and camera 40, 20, paragraph [24], Fig. 1), comprising: an optical actuator according to claim 1 (as 20 includes driving mechanism 10, pf claim 1 above, paragraphs [3-4, 24-25]; and an image capturing device disposed downstream of the optical actuator (i.e. reflected light from 10 passes optical system 40 and sensor module, paragraphs [3-4, 24-25, Fig. 1).
Regarding claim 9, the Chen-Bernstein-Lee combination teaches the invention as set forth above and Chen teaches (see Figs. 1-7) a camera-mounted device (e.g. electronic imaging lens system with camera 40, 20, paragraph [3,424], Fig. 1), comprising:
a camera module according to claim 8 (optical member driver 10, optical system 40 and sensor module, paragraph [24], Fig. 1); and a control part for controlling the camera module (i.e. as digital camera, smartphone electronic device with process machine, paragraphs [3-4, 24, 50]).
Response to Arguments
Applicant’s arguments filed in the Remarks dated 09/10/2023 with respect to claim 1 and its’ dependent claims have been fully considered but are not persuasive.
Applicant argues that Chen does not disclose the above noted portions of claim 1 and similarly claim 10, that (1) “the protruding portion including a protruding-portion-side tapered surface that is conical, … and the protruding-portion-side tapered surface making annular contact with the ball”, and that Bernstein does not cure such deficiencies since Bernstein allegedly teaches only cradling magnetic sphere via cavity, concave receptable, but not claimed base-side conical tapered surface making annular conical line contact with ball.
The Examiner respectfully disagrees. With respect to the above issue (1), as noted in the rejections above, Chen discloses most and in combination with Bernstein (and Lee for claim 1) teaches and renders obvious all limitations of claims 1 and 10, as Chen teaches an optical actuator (e.g. optical member driving mechanism e.g. 10, see abstract, paragraphs [2-11,24-30, 32-48]), comprising:
a movable part (200) including:
a mounting surface for an optical path bending member (inner surface 211 for optical member mirror or prism 30, paragraphs [24-28], Figs. 3-4), and
a recessed portion extending (i.e. annular structure 230, recessed for supporting member 300, and extending, e.g. towards center of 30 at back of 211, paragraphs [28-31], Figs. 3-6), the movable part being swung by driving of a driving part (driving assembly 400 moves/rotates 200, paragraphs[4, 6,24,36-37], Figs. 5-7); and
a fixing part (fixed portion 100, Figs. 2-3, 5-7) including a protruding portion inserted into the recessed portion so as to define a swing center of the movable part as a position near the center of the mounting surface (i.e. supporting member 300 surrounded/inserted into 230 and back part side of base 110, defining rotational center of 200 near center of 211 with 300, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7),
wherein the protruding portion supports the movable part via the ball (as supporting member 300 as ball on protruding surface of 110, between 230 and corresponding part protruding part of 110, supports 200, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7) disposed between the protruding portion and the recessed portion, the ball serving as the swing center (supporting member 300 as ball disposed between 230 i.e. interior end portion of recessed 230 and corresponding protruding portion of 110, and as 300 defining rotational center of 200, paragraphs [25, 29, 36-39], Figs. 2-3, 5-7), and
the protruding portion includes a protruding-portion-side surface (i.e. as protruding-portion-side surface of the back part side of base 110, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]) making contact with a spherical surface of the ball (i.e. as protruding-portion-side protruding surface of 110 making contact with 300, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]), and
the recessed portion includes a recessed-portion-side tapered surface making annular contact with the spherical surface of the ball (i.e. as 230 is annular structure and ball 300 is spherical on portion of 110 base and ball 300 contacts annular/cylindrical 230 surface in annular contact as depicted in Figs. 5A and 5B i.e. 300 contact annular surface in both X- and Y-directions, see paragraphs [28-29, 36-37-44]).
But Chen is silent that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical making annular contact with the ball, that the recessed-portion-side is recessed-portion-side tapered surface and is making annular contact with the spherical surface of the ball (300) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface.
However Bernstein teaches in same field of invention of actuatable mirror/reflector devices (see Figs. 1-5, 13, Title, Abstract, paragraphs [5-30, 49-60, 64-67], including mirror movable platform with recessed cavity portion 114(214) and surface 116(216), sphere bearing 106(206) on the protruding portion support element 104(204) with end surface 121, see Fig. 1-5, paragraphs [51-53, 57-61]) and further teaches that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical and the protruding-portion-side tapered surface making annular contact with the ball, (as protruding support element 104(204) with end receptable 121,120 in which the sphere bearing 106 (206) is disposed, and as 121 may be conically shaped, tapered such that the spherical bearing 106 makes annular contact with conical tapered end surface 121, see Fig. 1-5) and that the recessed portion with recessed-portion-side portion includes a tapered surface making annular contact with the spherical surface of the ball (i.e. as cavity 114,214, with the recessed cavity surface 216,116 and has contact portions has conical or v-shape with tighter apex e.g. 228 making annular contact with spherical bearing, thus providing additional stability to the structure, see paragraphs [51-53, 57-61]) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface (i.e. as v-shape tighter apex e.g. 228 has tighter apex tapered conical surface than 121, as depicted in Figs. 1 and 2 of Bernstein, thus providing additional stability to the movable structure, see paragraphs [51-53, 57-61, Figs. 1-2).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust and modify the recessed and protruding portions of Chen to include the shape of the protruding-portion-side surface as tapered surface as end receiving surface portion on the protruding support element, and tapered tight apex conical cavity surface on recessed portion, so that protruding portion and recessed portion having conical tapered surfaces can restrict the bearing (ball) movement according to teachings of Bernstein in order to provide positionally fixing spherical bearing, and additional stability to the movable structure (see Bernstein paragraphs [51-53, 57-61]).
In the alternative that apex tapered conical surface of recess side is close to but not tighter than protruding side (end 121) conical surface apex, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the apex tapered conical surface of recess side tighter than protruding side 121 conical surface apex since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, one would have been motivated to select the shape of tighter apex conical surface on recess side than on the protrusion side for the purpose of securing additional stability to the movable structure, see Bernstein paragraphs [51-53, 57-61, Figs. 1-2).
Specifically, Chen dies teach that the protruding portion includes a protruding-portion-side surface (i.e. as protruding-portion-side surface of the back part side of base 110, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]) that is making contact with a spherical surface of the ball (i.e. as protruding-portion-side protruding surface of 110 making contact with 300, as depicted in Figs. 5A, 5B, 3, paragraphs [25, 29, 36-39]), and
the recessed portion includes a recessed-portion-side tapered surface making annular contact with the spherical surface of the ball (i.e. as 230 is annular structure and ball 300 is spherical on portion of 110 base and ball 300 contacts annular/cylindrical 230 surface in annular contact as depicted in Figs. 5A and 5B i.e. 300 contacts annular surface in both X- and Y-directions, see paragraphs [28-29, 36-37-44]).
However, as noted Chen is silent that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical making annular contact with the ball, that the recessed-portion-side is recessed-portion-side tapered surface and is making annular contact with the spherical surface of the ball (300) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface.
Thus Bernstein was relied upon as Bernstein teaches in same field of invention of actuatable mirror/reflector devices (see Figs. 1-5, 13, Title, Abstract, paragraphs [5-30, 49-60, 64-67], including mirror movable platform with recessed cavity portion 114(214) and surface 116(216), sphere bearing 106(206) on the protruding portion support element 104(204) with end surface 121, see Fig. 1-5, paragraphs [51-53, 57-61]) and further teaches that the protruding-portion-side surface is the protruding-portion-side tapered surface that is conical and the protruding-portion-side tapered surface making annular contact with the ball, (as protruding support element 104(204) with end receptable 121,120 in which the sphere bearing 106 (206) is disposed, and that 121 may be conically shaped, i.e. tapered such that the spherical bearing 106 makes annular contact with such conical tapered end surface 121 for spherical bearing 106, see Fig. 1-5, paragraphs [51-53, 57-61) and that the recessed portion with recessed-portion-side portion includes a tapered surface making annular contact with the spherical surface of the ball (i.e. as cavity 114,214, with the recessed cavity surface 216,116 and has contact portions has conical or v-shape with tighter apex e.g. 228 making annular contact with spherical bearing, thus providing additional stability to the structure, see paragraphs [51-53, 57-61]) and having a taper angle smaller than a taper angle of the protruding-portion-side tapered surface (i.e. as v-shape tighter apex e.g. 228 has tighter apex tapered conical surface than 121, as depicted in Figs. 1 and 2 of Bernstein, thus providing additional stability to the movable structure, see paragraphs [51-53, 57-61, Figs. 1-2). Therefore as noted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust and modify the recessed and protruding portions of Chen to include the shape of the protruding-portion-side surface as tapered surface as end receiving surface portion on the protruding support element, and tapered tight apex conical cavity surface on recessed portion, so that protruding portion and recessed portion having conical tapered surfaces can restrict the bearing (ball) movement according to teachings of Bernstein in order to provide positionally fixing spherical bearing, and additional stability to the movable structure (see Bernstein paragraphs [51-53, 57-61]).
Therefore Chen discloses most and in combination with Bernstein (and Lee for claim 1) teaches and renders obvious all limitations of claims 1 and 10 noted under issue (1) above.
Applicant argues that Chen does not disclose the above noted portions of claim 1that (2) “the driving part and an entirety of the ball are arranged to overlap with each other in the first direction”, and that Lee does not cure such deficiencies since concerns Hall sensor placement and uses multiple ball bearings, and that Lee lacks factual predicate to cure teachings of Chen.
The Examiner disagrees. With respect to issue (2), as noted in the rejection above, Chen discloses the claimed invention except that the driving part and an entirety of the ball are arranged to overlap with each other in the first direction (i.e. driving part e.g. parts 410A,420A are/is not overlapping movable part 200 in 1st z-direction) as instead of the driving part and an entirety of the ball are arranged along in the y direction are used arrangement (i.e. as driving part e.g. 420A, 410A overlapped with moving part in 2nd Y-direction and arranged with support ball 300 along Z- direction, paragraphs [32-38],Figs. 3, 5).
Lee teaches in the same field of invention of a similar arrangement of movable reflective element (prism 1110) used for OIS and mounted on reflection module movable part 1100 ( Figs. 2-4, paragraphs [64-70]). Both Lee and Chen provide driving parts (magnets/coils) for tilting/rotation of reflective element (prism) in vertical (Y/Z) and horizontal direction (X) perpendicular to optical lens axis (Z/Y)( Figs. 2-4, paragraphs [64-70,78-89]). The only difference is the placement of the horizontal (X) tilt axis driving magnet coil which can be stacked in optical axis direction or in vertical direction. As presented above Lee shows that driving part (e.g. 1141a, 1141b overlapping movable part (reflection module, rotation holder 1100,1120, paragraphs [78-89, Figs. 3-4, 9 and 10) in 1st z-direction is an equivalent structure in the art (i.e. as demonstrated by comparison of magnet 1141a on bottom surface of movable 1120 frame and coil 1141b on bottom of fixed housing 1010, in Figs. 3-4,9 and 10, paragraphs [101-103, 112-116], as this configuration is provided to improve sensitivity and more accurately sense the position of the movable holder 1120). Therefore, because these two arrangements of driving part (magnet coil) and movable part (rotation holder) were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute vertical arrangement of driving and movable part along 1st (incident light) direction for horizontal arrangement of driving and movable part along 2nd (reflected light ) direction (See MPEP §2144.06), and in order to provide improved sensitivity and more accurately sense the position of the movable holder (see Lee, paragraphs [114-115]). As a result of the combination the combination also teaches and renders obvious that that the driving part and an entirety of the ball are arranged to overlap with each other in the first direction (i.e. as driving part 410A, 420A are moved to the bottom of fixed part 100,110 and bottom surface of movable part 200, respectively, they overlap with entirety of the ball support 300 in vertical, incident light (Z-axis direction, see Chen paragraphs [32-38],Figs. 3, 5, and Lee Figs. 3-4,9 paragraphs [101-103, 112-116]).
Applicant’s arguments of the unworkability of the combination, due to actual configuration and structures of Lee, appear to be based on a literal application of the actual structure of Lee to the actual structure of Chen. However, that is not the proper standard for the analysis required under 35 USC 103(a). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Keller at 881, goes on to revisit the long history of the U.S. Court of Customs and Patent Appeals (CCPA) regarding the nature of suggestion established by the combined teachings of the references rather than the actual results of a physical, bodily incorporation:
To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. In re Griver, 53 CCPA 815, 354, F.2d 377, 148 USPQ 197 (1966); In re Billingsley, 47 CCPA 1108, 279 F.2d 689, 126 USPQ 370 (1960). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); In re Passal, 57 CCPA 1151, 426 F.2d 828, 165 USPQ 720 (1970); In re Richman, 57 CCPA 1060, 424 F.2d 1388, 165 USPQ 509 (1970); In re Rosselet, 52 CCPA 1533, 347 F.2d 847, 146 USPQ 183 (1965).
The structure taught in the combined teachings of the references, as set forth above, is a proper combination. Because the structure of the combined system is the same as that claimed, it must inherently perform the same function of tilting the reflective element around horizontal (X) axis, and having the associated driving part overlapped with the ball given the result of the combination i.e. placement of driving part of Chen to overlap with the supporting ball 300. See MPEP § 2112.01. The combination resulted in rearrangement of driving parts (magnet coil) of Chen according to arrangement of such driving parts in Lee. Actual parts or other parts such as ball bearings of Lee were not combined with the structures of Chen.
Therefore the cited prior art of Chen in combination with Lee teaches and renders obvious all limitation noted under issue (2) above.
Regarding Applicant’s arguments for amended claims 2-3 and new claims 10-12, the combination of Chen with Bernstein also discloses and renders obvious the noted limitations in those claims, as presented above, and due to same and similar reasons as presented with respect to claims 1 and 10 above.
No additional substantial arguments were presented after page 9 of the remarks dated 09/10/2025.
Conclusion
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/MARIN PICHLER/ Primary Examiner, Art Unit 2872