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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-12 and 23) in the reply filed on 04 May 2026 is acknowledged.
Accordingly, claims 13-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(A) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 –
(S1-S4)(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, 5-9 and 23 is/are rejected under 35 U.S.C. 102(S1-S4)(1) as being anticipated by Chen et al. (WO 2019/109733).
In Reference to Claim 1
(See Chen, Figure 1A as annotated by Examiner below)
Chen et al. (Chen) discloses:
An actuator comprising:
a first part (20,30) (See Chen, Paragraph [0047]);
a second part (10) (See Chen, Paragraph [0047]); and
eight shape memory alloy (SMA) wires (40) connected between the first part (20,30) and the second part (10) so as to enable the second part (10) to be moved relative to the first part (20,30) with at least two degrees of freedom (See Chen, Paragraphs [0050]-[0053]), wherein:
two of the SMA wires (40) are located on each of four sides (S1-S4), the four sides (S1-S4) extending in a loop around a primary axis (A) (See Chen, Paragraphs [0050]-[0053]);
on contraction, a first group of four of the SMA wires (40) each provide provides a force on the second part (10) with a component in a first direction along the primary axis (A), and a second group of the other four of the SMA wires (40) each provides a force on the second part (10) with a component in a second, opposite direction along the primary axis (A) (See Chen, Paragraphs [0050]-[0053] & [0059]); and
each of the eight SMA wires (40) is configured such that a length perpendicular to the primary axis (A) is foreshortened relative to a length of a corresponding one of the four sides (S1-S4).
The Examiner notes that the SMA wires are shorter than the sides of the device.
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In Reference to Claim 5
(See Chen, Figure 1A as annotated by Examiner below)
Chen discloses:
wherein: the SMA wires (40) are connected to the first (20,30) and second (10) parts at connection points (P1-P4); wherein the connection points (P1,P2) corresponding to first and second sides are offset towards a first corner (C1) joining the first (S1) and second sides (S2); and the connection points (C3,C4) corresponding to third (S3) and fourth (S4) sides are offset towards a third corner (C2) joining the third (S3) and fourth (S4) sides.
The Examiner notes that the term “offset” is merely defined by a direction towards which the connection is offset but is without a relationship to location from which it is offset. Accordingly, the connection points are at least offset towards the respective corners from the corner of the optical lens.
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In Reference to Claim 6
(See Chen, Figure 1A as annotated by Examiner below)
Chen discloses:
wherein: the SMA wires (40) are connected to the first (20,30) and second (10) parts at connection points (P1-P4); the connection points (P1) corresponding to a first side (S1) are offset towards a first corner (C1) joining the first side (S1) to a second side (S2); the connection points (P2) corresponding to the second side (S2) are offset towards a second corner (C2) joining the second side (S2) to a third side (S3); the connection points (P3) corresponding to the third side (S3) are offset towards a third corner (C3) joining the third side (S3) to a fourth side (S4); and the connection points (P4) corresponding to the fourth side (S4) are offset towards a fourth corner (C4) joining the fourth side (S4) to the first side (S1).
The Examiner notes that the term “offset” is merely defined by a direction towards which the connection is offset but is without a relationship to location from which it is offset. Accordingly, the connection points are at least offset towards the respective corners from the corner of the optical lens or first part.
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In Reference to Claim 7
(See Chen, Figure 1A as annotated by Examiner below)
Chen discloses:
wherein: the SMA wires (40) are connected to the first (20,30) and second (10) parts at connection points (P1-P4); the connection points (P1,P2) corresponding to first (S1) and second (S2) sides are offset towards a first corner (C1) joining the first (S1) and second (S2) sides; the connection points (P3) corresponding to a third side (S3) are offset towards a third corner (C2) joining the third side (S3) to a fourth side (S4); and the connection points (P4) corresponding to the fourth side (S4) are offset towards a fourth corner (Corner of S1,S4) joining the fourth side (S4) to the first side (S1).
The Examiner notes that the term “offset” is merely defined by a direction towards which the connection is offset but is without a relationship to location from which it is offset.
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In Reference to Claim 8
(See Chen, Figure 1A as annotated by Examiner in claim 5 above)
Chen discloses:
Wherein the offsetting of the connection points (P1-P4) corresponding to at least one side defines a corresponding volume that is within the footprint of the first part (20,30).
The Examiner notes that at least one volume is defined with regards to the connection points and the offset.
In Reference to Claim 9
(See Chen, Figure 1A as annotated by Examiner in claim 5 above)
Chen discloses:
Wherein the volume at least partly receives at least a portion of the first part (20,30) and one or more terminal connections for making electrical connection to the eight SMA wires (40). (See Chen, Paragraph [0052]).
In Reference to Claim 23
(See Chen, Figure 1A as annotated by Examiner below)
Chen discloses:
A camera comprising:
an actuator comprising:
a first part (20,30) (See Chen, Paragraph [0047]);
a second part (10) (See Chen, Paragraph [0047]); and
eight shape memory alloy (SMA) wires (40) connected between the first part (20,30) and the second part (10) so as to enable the second part (10) to be moved relative to the first part (20,30) with at least two degrees of freedom (See Chen, Paragraphs [0050]-[0053]), wherein:
two of the SMA wires (40) are located on each of four sides (S1-S4), the four sides (S1-S4) extending in a loop around a primary axis (A) (See Chen, Paragraphs [0050]-[0053]);
on contraction, a first group of four of the SMA wires (40) each provide provides a force on the second part (10) with a component in a first direction along the primary axis (A), and a second group of the other four of the SMA wires (40) each provides a force on the second part (10) with a component in a second, opposite direction along the primary axis (A) (See Chen, Paragraphs [0050]-[0053] & [0059]); and
each of the eight SMA wires (40) is configured such that a length perpendicular to the primary axis (A) is foreshortened relative to a length of a corresponding one of the four sides (S1-S4).
an image sensor (See Chen, Paragraphs [0007] & [0021]); and
a lens attached to the second part (10). (See Chen, Paragraphs [0047]-[0048]).
The Examiner notes that the SMA wires are shorter than the sides of the device.
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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.
Claim(s) 3-4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 2019/109733).
In Reference to Claim 3
Chen discloses:
A component of each SMA wire perpendicular to the primary axis is a length less the respective side. (See Chen, Figure 1A as annotated by Examiner in claim 1).
Chen discloses the claimed invention except:
wherein the component of each SMA wire perpendicular to the primary axis is 85% or less than the length of a respective side.
Even though Chen does not disclose the component of each SMA wire perpendicular to the primary axis is 85% or less than the length of a respective side, these lengths would have been obvious to one having ordinary skill in the art at the time of the invention as a matter of design choice, absent criticality or unexpected results. Since there is no demonstrated motivation or reason for one of ordinary skill in the art to the above features at the specific lengths, one of ordinary skill in the art at the time of the invention would have chosen from various orientations/lengths based on suitability for the intended results. See MPEP § 2144.04.
In Reference to Claim 4
Chen discloses:
wherein each SMA wire makes an acute angle to a plane perpendicular to the primary axis. (See Chen, Figure 1A as annotated by Examiner in claim 1).
Chen discloses the claimed invention except:
The angle is greater than or equal to 10 degrees.
Even though Chen does not disclose the angle is greater than 10 degrees, these angles would have been obvious to one having ordinary skill in the art at the time of the invention as a matter of design choice, absent criticality or unexpected results. Since there is no demonstrated motivation or reason for one of ordinary skill in the art to the above features at the specific angles, one of ordinary skill in the art at the time of the invention would have chosen from various orientations/angles based on suitability for the intended results. See MPEP § 2144.04.
In Reference to Claim 12
Chen discloses:
wherein each of the SMA wires has a length parallel to the primary axis. (See Chen, Figure 1A as annotated by Examiner in claim 1).
Chen discloses the claimed invention except:
The length is less than or equal to 5 mm.
Even though Chen does not disclose the length is less than 5 mm, these lengths would have been obvious to one having ordinary skill in the art at the time of the invention as a matter of design choice, absent criticality or unexpected results. Since there is no demonstrated motivation or reason for one of ordinary skill in the art to the above features at the specific lengths, one of ordinary skill in the art at the time of the invention would have chosen from various orientations/lengths based on suitability for the intended results. See MPEP § 2144.04.
Allowable Subject Matter
Claims 2 and 10-11 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: The prior art fails to teach or fairly suggest “wherein: each of the eight SMA wires is configured such that a resonant frequency for movement of the second part relative to the first part along the primary axis is increased relative to a reference configuration; and in the reference configuration, the length of each SMA wire perpendicular to the primary axis is substantially equal to a length of a corresponding side of the first to fourth sides.” and “wherein: the SMA wires are connected to the first and second parts at connection points; and for each side of the four sides, one set of connection points is separated by a smaller distance along the primary axis than the other set of connection points on that side, so as to move a crossing point of the respective pair of SMA wires towards the centre of that side.”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shyu, Wernersson, Topliss’607, Topliss’933, Topliss’986, Brown’557, Brown’880, and Bunting show devices within the general state of the art of invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW THOMAS LARGI whose telephone number is (571)270-3512. The examiner can normally be reached 8:00 - 4:00 M-F.
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, Essama Omgba can be reached at (469) 295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T LARGI/Primary Examiner, Art Unit 3746
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