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 . Claims 8-10,15,18,20,21,23,25,26 are cancelled. Claims 1-7,11-14,16-17,19,22,24,27-30 are presented for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1-09-2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “ACTUATOR ASSEMLBY WITH SHAPE MEMORY ALLORY (SMA) WIRE CONNECTING SUPPORT AND MOVABLE PARTS”
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 2-7,11-14,16-17,19,22,24,27-30 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 pre-AIA the applicant regards as the invention.
Re-Claims 2-7,11-14,16-17,19,22,24,27-29 recite “An actuator” as a first recitation, it is confusing if it is the same actuator in claim 1 or another actuator. Clarification is needed.
Claim 30 recites “is less than 5mm, preferably less than 4mm, more preferably less than 3mm.”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 30 recites the broad recitation “less than 5mm, and the claim also recites “preferably less than 4mm,” and recites “ more preferably less than 3mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Clarification is needed.
Inventorship
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1-3 14,16,22,24-30 are rejected under 35 U.S.C. 103 as being unpatentable over Giles (US Patent 6137103a hereinafter “Giles”) in view of Obviousness or Ranges eMPEP section 2144.05 ) .
Re-claim 1, Giles discloses an actuator assembly (Title) comprising: a support structure (Col.2, L.21-41, fig.1, actuator wire 12 of a shape member alloy, fig.1, wire 12 fixed at lower end of square like actuator); a movable part (cf, the fiber 10) movable relative to the support structure (actuator); at least one shape memory alloy (SMA) wire (12) connected between the support structure and the movable part via wire attach components (connections of wire) and arranged, on contraction, to drive movement of the movable part (10); and a control circuit (Push pull control config in fig.2 ) configured to apply drive signals to the at least one SMA wire (12) so as to induce movement of the movable part relative to the support structure (Col.4, L.10-15, contraction of wire is controlled by flow of current in wire between electrical terminals) between predetermined positions in a repeated pattern (Fig.2, description, movement beam up and down), wherein the length of the at least one SMA wire extending between respective wire attach components is less than 5mm (Col.2, L.21-41, in fig.1, the required actuator length could be short of 3.1 mm).
Giles does not explicitly indicate the range is short of 5mm.
however, it would be obvious to one with ordinary skill in the art to show the range be less than 5mm, this is an obviousness of ranges, claimed range that overlaps, lies within, or is close to a prior art range can create a prima facie case of obviousness under 35 U.S.C. 103, see eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."), in this case less than 3.1 mm is withing the range indicated by claim less then 5mm, therefore is obvious to make the thickness 5mm or less.
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Re-claim 2, Giles as modified discloses the actuator assembly according to claim 1, wherein the extent of the actuator assembly along an axis parallel or substantially parallel to the at least one SMA wire is less than 6.5mm.
Giles does not explicitly indicate at least one SMA wire is less than 6.5mm.
however, it would be obvious to one with ordinary skill in the art to show the range be less than 5mm, this is an obviousness of ranges, claimed range that overlaps, lies within, or is close to a prior art range can create a prima facie case of obviousness under 35 U.S.C. 103, see eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."), in this case less than 3.1 mm is withing the range indicated by claim less then 5mm, therefore is obvious to make the at least one SMA wire is less than 6.5mm.
Re-claim 3, Giles as modified discloses the actuator assembly according to claim 1, wherein the length of the at least one SMA wire extending between the wire attach components is extended the extent of the actuator assembly along an axis parallel or substantially parallel to the at least one SMA wire (12).
Giles does not explicitly indicate the wire attach components is more than 66% and less than 77% of the extent of the actuator assembly along an axis parallel or substantially parallel to the at least one SMA wire.
however, it would be obvious to one with ordinary skill in the art to show the range be the wire attach components is more than 66% and less than 77% of the extent of the actuator assembly along an axis parallel or substantially parallel to the at least one SMA wire, this is an obviousness of ranges, claimed range that overlaps, lies within, or is close to a prior art range can create a prima facie case of obviousness under 35 U.S.C. 103, see eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."), in this case the wire attach components is more than 66% and less than 77% of the extent of the actuator assembly along an axis parallel or substantially parallel to the at least one SMA wire is withing the range indicated by claim therefore is obvious to make the the wire attach components is more than 66% and less than 77% of the extent of the actuator assembly along an axis parallel or substantially parallel to the at least one SMA wire.
Re-claim 14, Giles as modified discloses the actuator assembly according to claim 1 wherein: the at least one SMA wire (12) is connected between the support structure and the movable part (see fig2 and fig.7) via a mechanism configured such that a change in the length of the SMA wire (12) produces a smaller change in the position of the movable part (12 is connected to movable part therefore, it moves the part therefore it provide a change in position); or the at least one SMA wire is connected between the support structure and the movable part via a mechanism configured such that a change in the length of the SMA wire produces a greater change in the position of the movable part.
Re-claim 16, Giles teaches the actuator assembly according claim 1,comprising a total of four SMA wires (see fig.4, has 4 wires ) connected between the support structure and the movable part (see fig.4) via respective wire attach components (fiber components of wire).
Re-claim 22, Giles as modified discloses the actuator assembly according to claim 1 ,wherein: the movable part comprises an optical component; and the primary axis is the optical axis of the optical component (see fig.5, lens array).
Re-claim 24, Giles as modified discloses the actuator assembly according to claim 1, wherein the movable part comprises one or more of: a light source, an image sensor, and a display panel for displaying an image (see fig.5, lens array, or gimbal motion, or camera, optical component).
Re-claim 27, Giles as modified discloses the actuator assembly according to claim 1, wherein the control circuit is configured to apply the drive signals to the at least one SMA wire (12) for the purpose of achieving super-resolution imaging (filter, resolution Lense beam affecting element, shutter, positioning, see col.3, L.1-6) or wobulation.
Re-claim 28, Giles as modified discloses the actuator assembly according to claim 1, wherein the predetermined positions in the repeated pattern are arranged in two degrees of freedom (see fig.4, showing X-Y movement, moving a pair of fibers, repeated movement).
Re-claim 29, Giles as modified discloses the actuator assembly according to claim_1 wherein the control circuit is configured to apply drive signals to the at least one SMA wire so as to induce movement of the movable part between the predetermined positions at a predetermined frequency (Claim 1, control of current supplied to SMA pair of wires send and receive wire provide continuous optical path for movement of Lense).
Re-claim 30, Giles discloses an actuator assembly (Title) comprising: a support structure (Col.2, L.21-41, fig.1, actuator wire 12 of a shape member alloy, fig.1, wire 12 fixed at lower end of square like actuator); a movable part (cf, the fiber 10) movable relative to the support structure (actuator); at least one shape memory alloy (SMA) wire (12) connected between the support structure and the movable part via wire attach components (connections of wire) and arranged, on contraction, to drive movement of the movable part (10); wherein the length of the at least one SMA wire extending between respective wire attach components is less than 5mm (Col.2, L.21-41, in fig.1, the required actuator length could be short of 3.1 mm).
Giles does not explicitly indicate the range is short of 5mm, or preferable 4mm,.
however, it would be obvious to one with ordinary skill in the art to show the range be less than 5mm, this is an obviousness of ranges, claimed range that overlaps, lies within, or is close to a prior art range can create a prima facie case of obviousness under 35 U.S.C. 103, see eMPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."), in this case less than 3.1 mm is withing the range indicated by claim less then 5mm, therefore is obvious to make the thickness 5mm or less.
Claim 4 are rejected under 35 U.S.C. 103 as being unpatentable over Giles in view of Obviousness or Ranges eMPEP section 2144.05 and in further view of Brown (WO20200152473a1 hereinafter “Brown”).
Re-claim 4, Giles as modified disclose the actuator assembly according to claim 1.
Giles fail to explicitly teach , comprising a heat sink arranged adjacent to the at least one SMA wire such that the thermal environment along a maj or portion of the at least one SMA wire is substantially uniform.
However, Brown teaches , comprising a heat sink arranged adjacent to the at least one SMA wire such that the thermal environment along a maj or portion of the at least one SMA wire is substantially uniform (see fig.7, heat sink adjacent to the SMA Wire, see fig7, Brown, Page 29-30, Line25-35 and 1-10).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the invention to modify the Giles device and add a heat sink arranged adjacent to the at least one SMA wire such that the thermal environment along a maj or portion of the at least one SMA wire is substantially uniform to provide cooling for the wire for best mode performance (Brown, Page 29-30, Line25-35 and 1-10).
Allowable Subject Matter
Claims 5 17 and 19 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:
Re-claim 5 recites 5. (Currently Amended) An actuator assembly according to claim_1, wherein; the movable part is arranged to move with respect to the support structure across a range of movement in two orthogonal directions perpendicular to a primary axis extending through the movable part; and the at least one SMA wire comprises plural SMA wires. “
The combination of references, all prior art of record or search ai search fail to teach to disclose the combination of claim 5 and 1.
Claims 6-13 are dependent from claim 5.
17. (Currently Amended) An actuator assembly according to claim 16, wherein: the movable part is arranged to move across a range of movement in two orthogonal directions perpendicular to a primary axis extending through the movable part; and none of the SMA wires are capable of being selectively driven to move the movable part relative to the support structure to any position in said range of movement without applying any net torque to the movable part in the plane of the two orthogonal directions around the primary axis.
The combination of references, all prior art of record or search ai search fail to teach to disclose the combination of claim 17,16 and 1.
19. (Currently Amended) An actuator assembly according to claim 1, comprising a helical bearing arrangement supporting the movable part on the support structure and arranged to guide helical movement of the movable part with respect to the support structure around a primary axis, wherein the at least one SMA wire is connected between the support structure and the movable part in, or at an acute angle to, a plane normal to the primary axis and arranged, on contraction, to drive rotation of the movable part around the primary axis which the helical bearing arrangement converts into said helical movement.
The combination of references, all prior art of record or search ai search fail to teach to disclose the combination of claim 19 and 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in PTO892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAGED M ALMAWRI whose telephone number is (313)446-6565. The examiner can normally be reached on Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher M. Koehler can be reached on 5712723560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAGED M ALMAWRI/Primary Patent Examiner, Art Unit 2834
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