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
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. Election was made without traverse in the reply filed on July 22, 2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: (103) in FIG. 2. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the reference numbers (41) and (42) appear to be swapped according to paragraph [0055] of the publication of the instant application. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Page 5 Line 22 of the specification recites: “…The predetermined clearance may be selected totr54 e adequate…”. The underlined portion needs to be corrected.
Page 15 Line 22 of the specification recites: “…the endstops 54. Therefore…”. It is recommended to be changed to read: “…the endstops 504. Therefore…”.
Page 16 Line 23 of the specification recites: “…in the top and right-hand sides…”. According to FIG. 8A, it appears that the limitation should read: “…in the top and left-hand sides…”.
Appropriate correction is required.
Claim Objections
Claim 14 is objected to because of the following informalities:
Line 3-4 of claim 14 recites: “…in a direction other than a movement direction.” It is recommended to be changed to read: “…in a direction other than the movement direction.” See claim 1 line 6 for the limitation of “a movement direction.”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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) 16-18, 20, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noguchi (U.S. Publication No.: 2011/0102613).
Regarding claim 16, Noguchi discloses a method of operating an actuator assembly (FIGS. 3, 5a-5d) having a first part ((13), [0129]) and a second part ((15), [0130]) movable relative to the first part ([0130]), comprising: moving, by an actuator arrangement, the second part along a movement direction (FIGS. 5a, 5b, [0154]), wherein a third part ((16a), (16b), (16c), [0131]) supported on the second part ([0131, 0132, 0155]) moves with the second part until the third part engages an endstop on the first part; and continuing to move the second part, along the movement direction, and thereby driving movement of the third part relative to the second part (moving in the downward arrow direction shown in FIG. 5a, (16a)/(16b)/(16c) move with (15) until (16a)/(16b)/(16c) engage with their respective bottom “limiting end surfaces” as shown in FIG. 5b; and (15) may continue to move in the same direction while the positions of (16a)/(16b)/(16c) are maintained by the bottom “limiting end surfaces”, [0152-0169]).
Regarding claim 17, Noguchi discloses the method according to claim 16, comprising moving the third part to a default position and/or orientation (“initial positioning range”, [0161]), wherein, at the default position and/or orientation, the third part is separated from the endstop by a predetermined clearance (FIGS. 5c, 5d, [0160, 0161]).
Regarding claim 18, Noguchi discloses the method according to claim 16, comprising: moving the second part so as to move the third part to a desired position and/or orientation relative to the second part; and then affixing the third part to the second part (“…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…the center of the ball 16b is positioned within the rectangular range (initial positioning range)…a ball reset operation”, [0161]).
Regarding claim 20, Noguchi discloses the method according to claim 16, comprising moving the second part in a direction orthogonal to the movement direction and in a movement plane (“…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…”, [0161]), wherein an endstop is provided on the first part (FIGS. 5a-5c, the “limiting end surfaces” are disposed on (13), [0157, 0159]) at each of four sides of the second part (FIGS. 2, 3; as shown in FIG. 3, the “limiting end surfaces” of (16a) are provided at the top side and the right side of (15), the “limiting end surfaces” of (16b) are provided at the bottom side of (15) as shown in FIG. 2, and the “limiting end surfaces” of (16c) are provided at the left side of (15)).
Regarding claim 21, Noguchi discloses the method according to claim 20, comprising sequentially moving the second part toward the four quadrilateral sides so as to drive the third part against the respective endstops to move the third part to its default position and/or orientation (“…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…the center of the ball 16b is positioned within the rectangular range (initial positioning range)…a ball reset operation”, [0161]).
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) 1-9 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi (U.S. Publication No.: 2011/0102613) as applied to claims 16-18, 20, and 21 above, and further in view of Howarth et al. (U.S. Publication No.: 2015/0304561).
Regarding claim 1:
Noguchi discloses an actuator assembly (FIGS. 3, 5a-5d) comprising: a first part ((13), [0129]) and a second part ((15), [0130]) movable relative to the first part ([0130]); a third part ((16a), (16b), (16c), [0131]) supported on the second part ([0131, 0132, 0155]); and an actuator arrangement (FIGS. 4a, 4b) connected between the first part and the second part (FIGS. 2, 3, [0135]), the actuator being arranged to drive movement of the second part in a movement direction ([0143-0151]), in which the third part moves with the second part until the third part engages an endstop on the first part; wherein the actuator arrangement is arranged to continue driving movement of the second part along the movement direction, and thereby causes the third part to move relative to the second part (moving in the downward arrow direction shown in FIG. 5a, (16a)/(16b)/(16c) move with (15) until (16a)/(16b)/(16c) engage with their respective bottom “limiting end surfaces” as shown in FIG. 5b; and (15) may continue to move in the same direction while the positions of (16a)/(16b)/(16c) are maintained by the bottom “limiting end surfaces”, [0152-0169]).
Noguchi does not specifically disclose one or more shape memory alloy (SMA) wires.
Howarth teaches a suspension system for a camera lens element (FIGS. 1-10), comprising: an actuator arrangement comprising one or more shape memory alloy (SMA) wires (FIGS. 1, 2, (80), [0071]) connected between the first part (FIGS. 1-7, (50), [0071]) and the second part (FIGS. 1, 8-10, (60), [0071]), the one or more SMA wires being arranged to, on contraction, drive movement of the second part in a movement direction (“lateral actuation”, [0071]; “any direction orthogonal to the optical axis”, [0078]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the feature of Howarth’s with the actuator assembly taught by Noguchi for the purpose of decreasing the size and reducing the weight of the device.
Regarding claim 2:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 1, wherein Noguchi further discloses that the third part is maintained at the moved position (off-center position) on the second part when the second part moves in an opposite direction to the movement direction (when (15) moves in the upward direction from the position in FIG. 5b, (16a)/(16b)/(16c) is maintained at the off-center position on the (15)).
Regarding claim 3:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 1, wherein Noguchi further discloses that at a default position and/or orientation the third part is separated from the endstop by a predetermined clearance (a position when (16a)/(16b)/(16c) does not contact its “limiting end surfaces”), the predetermined clearance is arranged to accommodate the movement of the second part during normal operation during which the third part is maintained at the default position and/or orientation on the second part ((16a)/(16b)/(16c) is maintained at the corresponding position on (15) where (16a)/(16b)/(16c) does not contact their “limiting end surfaces”).
Regarding claim 4:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 3, wherein Noguchi further discloses that the third part is arranged to, when positioned away from the default position and/or orientation, return to the default position when it is being driven against the endstop (“…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…the center of the ball 16b is positioned within the rectangular range (initial positioning range)…a ball reset operation”, [0161]).
Regarding claim 5:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 3, wherein Noguchi further discloses that at the default position and/or orientation the third part is centered on the second part in the movement direction (FIG. 5a, “…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…the center of the ball 16b is positioned within the rectangular range (initial positioning range)…a ball reset operation”, [0161]).
Regarding claim 6:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 3, wherein Noguchi further discloses that the second part is moveable within a movement range during the normal operation, wherein the second part is configured to move beyond the movement range to return the third part to the default position and/or orientation (“…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…the center of the ball 16b is positioned within the rectangular range (initial positioning range)…a ball reset operation”, [0161]).
Regarding claim 7:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim l, wherein Noguchi further discloses that the endstop is a first endstop and a second endstop is provided on the first part and on an opposite side of the third part along the movement direction (FIGS 5a-5c, “limiting end surfaces”, [0157]).
Regarding claim 8:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim l, wherein together Noguchi and Howarth further disclose that the actuator arrangement comprises a plurality of the SMA wires (Howarth: FIGS. 1, 2, (80), [0071]) capable of being selectively driven to move the second part in two orthogonal directions in a movement plane (Noguchi: “…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…”, [0161]), and wherein an endstop is provided on the first part (Noguchi: FIGS. 5a-5c, the “limiting end surfaces” are disposed on (13), [0157, 0159]) at each of four sides of the second part (Noguchi: FIGS. 2, 3; as shown in FIG. 3, the “limiting end surfaces” of (16a) are provided at the top side and the right side of (15), the “limiting end surfaces” of (16b) are provided at the bottom side of (15) as shown in FIG. 2, and the “limiting end surfaces” of (16c) are provided at the left side of (15)).
Regarding claim 9:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 8, wherein Noguchi further discloses that: at a default position and/or orientation the third part is separated from the endstops by a predetermined clearance (a position when (16a)/(16b)/(16c) does not contact its “limiting end surfaces”), the predetermined clearance is arranged to accommodate the movement of the second part during normal operation during which the third part is maintained at the default position and/or orientation on the second part ((16a)/(16b)/(16c) is maintained at the corresponding position on (15) where (16a)/(16b)/(16c) does not contact their “limiting end surfaces”); and the actuator arrangement is configured to sequentially move the second part toward the four quadrilateral sides so as to drive the third part against respective endstops to move the third part to its default position and/or orientation (“…shaft frame 15 is driven to the mechanical end at the both sides in the pitch direction and yaw direction and then returned to center position…the center of the ball 16b is positioned within the rectangular range (initial positioning range)…a ball reset operation”, [0161]).
Regarding claim 11:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim l, wherein Noguchi further discloses that the second part comprises a planar surface (FIGS. 5a, 5b, (15a)/(15b)/(15c), [0132]), wherein the third part is supported, and movable, on the planar surface ([0132]).
Regarding claim 12:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim l, wherein together Noguchi and Howarth further disclose: means (Howarth: FIGS. 1, 10, (67), [0099]) arranged to apply a retaining force on the third part (Howarth: FIGS. 1, 2, 8, 10, (75), [0099]) in order to maintain the relative positions and/or orientations of the third part and the second part (Howarth: (60) is part of (20), [0069, 0088, 0099]) during normal operation (Noguchi: “shift frame 15 is pressed toward the shift base 13 side via the three balls 16a through 16c”, [0141]), wherein the retaining force is insufficient to maintain the relative position and/or orientation when the third part is driven against the endstop (Noguchi: FIGS. 5a, 5b, [0159]).
Regarding claim 13:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim 12, wherein Howarth further discloses that the means comprises one or more of a biasing element, a magnet, and a viscous fluid (Howarth: FIGS. 1, 10, “flexures” (67), [0099]).
Regarding claim 14:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim l, wherein Noguchi further discloses: one or more further endstops on the first part configured to limit movement of the third part relative to the second part in a direction other than a movement direction (FIGS 5a-5c, “a pair of limiting end surfaces extending in the pitch direction and a pair of limiting end surfaces extending in the yaw direction”, [0157]).
Regarding claim 15:
Noguchi and Howarth disclose and teach of the actuator assembly according to claim l, wherein Noguchi further discloses that the third part comprises any one of a lens carriage, a support for an image sensor or a light emitter (wherein (16a)/(16b)/(16c) is part of the support structure for “shift lens” (L3) held by (15), [0130]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FANG-CHI CHANG whose telephone number is (571)270-5299. The examiner can normally be reached MRF 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 5712723555. 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.
/FANG-CHI CHANG/Examiner, Art Unit 2852
/STEPHANIE E BLOSS/Supervisory Primary Examiner, Art Unit 2852
