, 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 .
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 1-5, 7, 9-13, 15-16, 19, 21-22, 24-25, 27 and 29 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. The scope of claim 1 is unclear because it includes contradicting phrases. Particularly, the phase, “the drive arrangement comprising…” contradicts the phrase “…contain no other drive arrangement” because the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) Claims 2-5, 7, 9-13, 15-16, 19, 21-22, 24-25, 27 and 29 are also rejected because of their dependency on claim 1.
Claim Rejections - 35 USC § 102
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 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) 1, 25, 27 and 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eddington et al. (WO 2013/175197).
Regarding claims 1, 25 and 27, Eddington teaches a camera comprising:
an actuator assembly comprising:
a first part (2);
a second part (4);
a bearing arrangement (7) mechanically coupling the first part to the second part (pg. 5, ll. 1-6)
a drive arrangement (11-14) comprising a total of only four lengths of shape memory alloy wire, such that the drive arrangement comprises no more and no fewer than the four lengths of shape memory alloy wire and contains no other drive arrangement;
wherein the drive arrangement and the bearing arrangement are configured such that the first part is movable towards or away from the second part along a primary axis, and the first part is movable relative to the second part along a first axis and a second axis; wherein the first and second axes are perpendicular to the primary axis and the second axis is different to the first axis (the drive arrangement 11-14 in conjunction with the bearing assembly which includes a VCM, configured to move the lens 22 along the optical axis direction and linearly in two orthogonal directions, see pg. 4, ll. 1-6 and ll. 33-38);
an image sensor (6) supported by one of the first part and the second part;
a lens (22) support by the other of the first part and the second part [claim 27].
Regarding claim 29, Eddington teaches a method comprising use of the actuator assembly according to claim 1 to implement an optical stabilization function and/or an automatic focusing function of a camera (pg. 4, ll. 1-6 and ll. 33-38).
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) 2-3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eddington in view of Liu (CN 208172341).
Regarding claims 2-3 and 10, Eddington teaches all the claimed limitations except for the bearing arrangement comprises a first bearing configured to generate, in response to a torque applied about the primary axis by the drive arrangement, movement of the first part towards or away from the second part along the primary axis; wherein a rotation of the first about the primary axis corresponds to a rotation of the first part relative to the second part [claim 3]; wherein the bearing arrangement is further configured to constrain rotation of the first part relative to the second part about the primary axis [claim 10]. Liu teaches an actuator assembly comprising: a bearing arrangement comprises a first bearing (11) configured to generate, in response to a torque applied about a primary axis by the drive arrangement, movement of the first part towards or away from the second part along the primary axis; wherein a rotation of the first bearing about the primary axis corresponds to a rotation of the first part relative to the second part; wherein the bearing arrangement is further configured to constrain rotation of the first part relative to the second part about the primary axis. It would have been obvious to one having an ordinary skill in the art to incorporate a first bearing as taught by Liu within Brown’s bearing arrangement in order to facilitate the driving of the second part in the primary axis direction.
Response to Arguments
Applicant's arguments filed 08/10/2026 have been fully considered but they are not persuasive. Applicant, in his remarks, alleges that Eddington has not been shown to suggest a "drive arrangement comprising a total of only four lengths of shape memory alloy wire, such that the drive arrangement comprises no more and no fewer than the four lengths of shape memory alloy wire and contains no other drive arrangement; wherein the drive arrangement and the bearing arrangement are configured such that the first part is movable towards or away from the second part along a primary axis, and the first part is movable relative to the second part along a first axis and a second axis; wherein the first and second axes are perpendicular to the primary axis and the second axis is different to the first axis," as now recited by claim 1, however the applicant is respectfully reminded that, while it might be evident, by comparing the patented structure of Eddington with the instant specification and drawings, that the claimed invention is different from the Prior Art made of record, that is not the test for patentability. Rather, it is the language of the claims what defines the meets and bounds of the instant invention. In this case, Eddington teaches a drive arrangement (11-14) comprises a total of only four lengths of shape memory alloy wire, such that the drive arrangement comprises no more and no fewer than the four shape memory alloy wire and contains no other drive arrangement (Fig. 5), wherein the drive arrangement (11-14) and the bearing arrangement (constitutes a VCM, configured to move the lens 22 along the optical axis direction), are configured such that the first part is movable towards or away from the second part along a primary axis, and the first part is movable relative to the second part along a first axis and a second axis.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH Q PHAN whose telephone number is (571)270-3898. The examiner can normally be reached Mon-Fri 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached at 571-272-3555. The fax phone number for the organization where this 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 Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (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.
MINH Q. PHAN
Primary Examiner
Art Unit 2852
/MINH Q PHAN/ Primary Examiner, Art Unit 2852
