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
The instant application having Application No. 18/343,665 filed on June 28, 2023 is presented for examination by the examiner. The amended claims submitted February 13, 2026 in response to the office action mailed October 20, 2025 are under consideration. Claims 1-4 and 6-19 are pending. Claim 5 is cancelled.
Note that the amendments to claims 1 and 16 are similar to original claim 5 but differ significantly therefrom. Original claim 5 recited “a lower surface of the cross section of the guider based on the movement axis has a straight line shape corresponding to the curved shape of the coil member” whereas the amendments to claim 1 and 16 recite “the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member.” Thus, in the original claims where a straight line shape was supposed to correspond to a curved shape, it was unclear which aspect of the claim was intentional and which aspect was in error. Claims 1 and 16 as amended overcome this indefiniteness issue, but also thereby have a different scope.
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.
Drawings
The drawing objection to Fig. 1 has been overcome by the submission of a replacement drawing labeling Fig. 1 as Prior Art.
The drawing objection with respect to the limitations of cancelled claim 5 have been overcome by the cancellation of the claim. However, the addition of similar subject matter to claims 1 and 16 engenders the following new drawing objection.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the lower guide surface of the guider has a straight-line shape” of claims 1 and 16 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Furthermore, the limitation of claim 4 “a lower surface of a cross section of the guider based on the movement axis all have a curved shape” taken simultaneously with the limitation of claim 1 “the lower guide surface of the guider has a straight-line shape” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Objections
Claim 1 is objected to because of the following informalities: the word “continuous” was added to line 4 between “single” and “coil” but was not underlined.
Claim 16 is objected to because of the following informalities: certain limitations within claim 16 are duplicative to one another:
lines
limitation
lines
limitation
11-12
a guider inserted into and penetrating through the coil member in the movement axis direction
16-18
the guider being inserted into and penetrating through the coil member in the movement axis direction
12-13
a guider… guiding a straight line motion of the coil member and the lens holder in the movement axis direction
18-19
the guider … configured to guide straight-line motion of the coil member in the movement axis direction
The repetition in lines 16-18 is entirely duplicative and should be deleted. The repetition in lines 18-19 is broader than the original in lines 12-13 and should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Some of the 35 USC §112 rejections of the previous office action have been overcome by the amendments to the claims. However, the following 35 USC §112 rejections are either maintained or newly introduced in light of the amendments.
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 2-4, 6-12 and 18 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.
Regarding claim 2, the limitation “wherein the coil member has a shape of a first arc based on the center of a common circle when observed in the direction of the movement axis” is indefinite because it is unclear, what, if any, additional structural features are encompassed by claim 2 given that claim 1 already recites “when observed in the movement axis direction, the coil member includes: an upper side positioned closer to the magnet and having a curved arc shape based on a center of a common circle.” Although the wording is not identical, it is not apparent to the examiner what further distinction it is that applicant intends to claim by claim 2. Appropriate correction is required.
Claims 3-4 and 6-12 depend from claim 2 and inherit and do not mitigate the above indefiniteness issue from claim 2.
Regarding claim 4, the limitation “an upper surface and a lower surface of a cross section of the guider based on the movement axis all have a curved shape” directly contradicts the limitation of claim 1 “the lower guide surface of the guider has a straight-line shape”. It is unclear how both limitations could be true simultaneously. Therefor it is unclear how claim 4 should be interpreted. The examiner recommends the following amendment that would retain some of the features of claim 4, but eliminate this contradiction and portions that are duplicative to claim 1:
4. (proposed amendment) “The voice coil motor of claim 3, wherein
both the upper guide surface and the lower guide surface of the guider are shaped to fit within the curved shape of the upper side of the coil member.
Claims 6-8 depend from claim 4 and inherit and do not mitigate the above indefiniteness issue from claim 4.
Regarding claims 7-8 and 10-12, the terms “corresponding” or “corresponds” are relative terms which renders the claims indefinite. The term “corresponding to” and “corresponds to” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In each of these instances the claims recite sizes of widths or angles of arc that “correspond” to one another. Within the specification the instances of “corresponding to” and sometimes, but not always, followed by the parenthetical disclosure of “(substantially the same as)” however, this is not presented as a definition, and “substantially the same as” is also a relative term, for which the specification has not provided any numerical examples thereof. Furthermore, the width of the guider must be smaller than the width of the connecting portion of the coil in order to fit therein, such that “substantially the same as” could not be narrowly interpreted as within measurement error, and thus must include sizes that are different. Further adding to this indefiniteness is the fact that the width W2 marked in Figs. 4A and 5A seem to be arbitrarily defined such that they match W1 by choosing W2 to extend between two points on the straight lower side of the coil proximate to the rounded corners, rather than between the connecting portions of the coil as claimed in claims 7 and 8. That the specification sees fit to define the endpoints from which the sizes should be measured arbitrarily so that they match is significantly detrimental to any attempt to interpret “corresponding to” with respect to lengths. For the purpose of examination these limitations will be considered to be met by sizes or angles that appear to be reasonably comparable. If this broad interpretation is the intended meaning, only appropriate comment is required. Otherwise, appropriate correction is required. Diligent care should be taken to avoid introducing new matter if these claims are amended.
Regarding claim 18, the limitations “wherein the guider includes an upper guide surface having a curved shape corresponding to the curved upper side of the coil member and a lower guide surface having a straight-line shape corresponding to the straight lower side of the coil member” are indefinite because it is unclear, what, if any, additional structural features are encompassed by claim 18 given that claim 1 already recites “wherein the upper guide surface of the guider has a curved shape corresponding to the curved arc shape of the upper side of the coil member, and the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member.” Although the wording is not identical, it is not apparent to the examiner what further distinction it is that applicant intends to claim by claim 18. Appropriate correction is required.
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.
Claims 1-4, 6-12 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP H02195526 A (hereafter JP 526) in view of Shirotori US 5,920,437 (hereafter Shirotori).
Regarding claim 1, JP 526 teaches “A voice coil motor (see elements thereof below) comprising:
a magnet (magnet for focal control 20a and 20b);
a yoke (focus control yokes 19a and 19b) accommodating the magnet (see Figs. 1, 2 and 4) and extending in a movement axis direction (19a and 19b extend all movement axis direction A parallel to bearing 3 see e.g. page 3 first paragraph: “movable holder (2) carries out at order in the direction of arrow A shown in Drawing 3, and focus control is attained”); and
a coil member (coils for focus control 18a and 18b or 21a and 21b) formed by winding… in a direction perpendicular to the movement axis direction (the coils are wound in a direction perpendicular to direction A, see Figs. 1 and 4),
wherein the yoke includes a guider (the vertical inner portions of 19a and 19b which extend in the A direction and which are positioned inside of the coils 18a and 18b, see Figs. 1 and 4) having an upper guide surface (the “upper” surface of the inner portion closer to the magnet) and a lower guide surface (the “lower” surface of the inner portion further from the magnet), the guider being inserted into and penetrating through the coil member in the movement axis direction (best seen in Fig. 4), and configured to guide straight-line motion of the coil member in the movement axis direction (best seen in Fig. 4, the vertical inner portions of 19a and 19b constrain the movement of the coils 18a and 18b to a straight line motion),
wherein, when observed in the movement axis direction (the viewing direction shown in Figs. 2 and 5), the coil member includes:
an upper side positioned closer to the magnet and having a curved arc shape based on a center of a common circle (see curved arc shape of the portion of the coils 18a, 18b, 21a and 21b proximate to the magnets 20a and 20b in Figs. 2 and 5 and page 3 first paragraph: “coil for focus control (18a) … has a bearing part and a concentric arc part” emphasis added), and a lower side positioned farther from the magnet and having a straight-line shape (see straight line shape of the lower side of 18a, 18b, 21a and 21b away from the magnets 20a and 20b in Figs. 1, 2 and 5 and the last paragraph of page 2 “A straight line portion is fixed by (4b)”), and
wherein the upper guide surface of the guider has a curved shape corresponding to the curved arc shape of the upper side of the coil member (see curved upper surfaces of the vertical inner portions of 19a and 19b in Figs. 2 and 5 and page 2 third paragraph: “Every a plurality of coils for focal control, the yoke for focal control, and the magnet for focal control which have a concentric circular arc part”).”
However, JP 526 fails to explicitly teach “a coil member formed by winding a single continuous coil several times in a direction perpendicular to the movement axis direction.”
and “the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member.”
Shirotori teaches “A voice coil motor (see elements thereof below) comprising:
a magnet (arcuate magnets 11A and 11B);
a yoke (outer yoke 5 and inner yoke 7A) accommodating the magnet (see Figs. 1 and 2 and col. 4 lines 2-4: “arcuate first and second magnets 11A, 12A are mounted adjacent to each other in the circumference direction on outer yoke wall 5b.”) and extending in a movement axis direction (5 and 7 extend in the focusing direction see Fig. 3 and col. 3 lines 62-63: “moves lens holder 3 in the focusing direction”); and
a coil member (driving coils for focusing 8A and 8B) formed by winding a single continuous coil several times in a direction perpendicular to the movement axis direction (see Fig. 3),
wherein the yoke includes a guider (7A and 7B) having an upper guide surface and a lower guide surface (the surface closer to the magnet and the surface further from the magnet), the guider being inserted into and penetrating through the coil member in the movement axis direction (see Figs. 1-3), and configured to guide straight-line motion of the coil member in the movement axis direction (the movement of 8A and 8B in the focusing direction is constrained to a straight line motion by 7A and 7B, see Fig. 2),
wherein, when observed in the movement axis direction, the coil member includes:
an upper side positioned closer to the magnet and having a curved arc shape based on a center of a common circle (see Fig. 1, the exterior side of the coils 8A and 8B when observed in the focusing direction as in Fig. 1 appear to be in a curved shape matching the interior of the arcuate magnets), and a lower side positioned farther from the magnet and having a straight-line shape (the lower side of coils 8A and 8B positioned farther from the magnet is straight-line shaped see Fig. 1), and
wherein the upper guide surface of the guider has a … shape corresponding to the curved arc shape of the upper side of the coil member (the shape of the upper surface of 7A that is closer to the magnet is in a shape that corresponds to the curved shape of the upper side of the coil in that it fits therewithin, see Fig. 1), and the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member (see the straight-line shape of the lower guide surface of 7A in Fig. 1 that corresponds to the straight line shape of the lower side of the coil member.).”
It has been held that to reject a claim under a rationale of choosing from a finite number of identified, predictable solutions with a reasonable expectation of success, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. See MPEP §2143(I)(E).
In the instant case (1) there is an art recognized problem of providing the appropriate driving force in a linear voice coil motor (2) there are a finite number of ways that a single coil can be wound (a) a single winding (b) two windings (c) several windings (d) a large number of windings (3) one of ordinary skill in the art could have pursued any of these solutions with a reasonable expectation of success (4) the Graham factual inquiries have been explained above.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose to form the coil from several windings as demonstrated by Shirotori in the voice coil motor of JP 526 because it has been held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success is within ordinary skill.
The prior art, JP 526, and the instant claim differ by the shape of the lower surface of the cross section of the guider.
It is a well-established proposition 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), MPEP §2144.04(IV)(B).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the shape of the lower surface of the cross section of the guider to be straight as depicted in Shirotori in the voice coil motor of JP 526, 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), MPEP §2144.04(IV)(B). In the instant case, the change in shape does not appear to be significant to the function because the instant application has embodiments with either a straight or a concentrically curved shape for this lower surface, see claims 1 and 4, and evidently considers this change to be trivial, given that the straight shape is not even depicted in a drawing and no criticality is disclosed as being associated with the shape of this lower surface of the guider.
Regarding claim 2, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” and JP 526 further teaches “wherein the coil member has a shape of a first arc based on the center of a common circle when observed in the direction of the movement axis (see Fig. 1 and page 3 first paragraph: “The coil for focal control (18a) which rotates with a movable holder (2) at this time, and the neighborhood of the outside of (18b), It has a bearing part and a concentric arc part” emphasis added).”
Regarding claim 3, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 2,” and JP 526 further teaches “wherein the magnet has a shape of a second arc concentric with the center of the common circle when observed in the movement axis direction (see concentrically curved shape of the inner surfaces of magnets 20a and 20 in Figs. 2 and 5 and page 3 first paragraph: “Drawings 1 and 2, The magnet for focal control (20a), ((20b) 7) inner-skin shape A, a bearing part (3), and a concentric circular curved surface are formed (best shown in Drawings 1 and 2)”).”
Regarding claim 4, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 3,” and JP 526 further teaches “wherein among the two sides of the coil member, a lower side far from the magnet has a straight line shape when observed in the movement axis direction (see straight line shape of the lower side of 18a, 18b, 21a and 21b away from the magnets 20a and 20b in Figs. 1, 2 and 5 and the last paragraph of page 2 “A straight line portion is fixed by (4b)”), and
an upper surface and a lower surface of a cross section of the guider based on the movement axis all have a curved shape that is shaped to fit within the curved shape of the upper side of the coil member (see curved upper and lower surfaces of the vertical inner portions of 19a and 19b in Figs. 2 and 5 and page 2 third paragraph: “Every a plurality of coils for focal control, the yoke for focal control, and the magnet for focal control which have a concentric circular arc part”. These shapes fit within the curved shape of the upper side of the coil member as best seen in Figs. 2 and 5).”
Regarding claim 6, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 4,” and JP 526 further teaches “wherein a connecting portion connecting the upper side and the lower side of the coil member when observed in the movement axis direction (the connecting portion of 18a and 18b between the straight line portion and the concentric arc part) extends in a direction perpendicular to the movement axis direction and perpendicular to the straight line shape of the lower side of the coil member (see Fig. 2, the connecting portion of 18a/18b extend in a direction perpendicular to the movement direction and perpendicular to the straight line direction of the lower side of the coil member).”
Regarding claim 7, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 6,” and JP 526 further teaches “wherein a width of the magnet and a width of the guider have a size corresponding to a width of an inner surface of the connecting portion (See Fig. 2, the width of the magnet has a size corresponding to a width of the inner surface of the connecting portion in that they are substantially the same size. The width of the guider has a size corresponding to a width of an inner surface of the connecting portion in that it is sized to fit inside the connecting portion).”
Regarding claim 8, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 6,” and JP 526 further teaches “wherein a width of the guider has a size corresponding to a width of an inner surface of the connecting portion (See Fig. 2, the width of the guider has a size corresponding to a width of an inner surface of the connecting portion in that it is sized to fit inside the connecting portion), and
a width of the magnet has a size corresponding to a width of an outer surface of the connecting portion (See Fig. 2, the width of the magnet has a size corresponding to a width of the outer surface of the connecting portion in that they are substantially the same size).”
Regarding claim 9, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 3,” and JP 526 further teaches “wherein a connecting portion connecting the upper side and the lower side of the coil member (the connecting portion of 21a and 21b between the straight line portion and the concentric arc part) extends in a direction toward the center of the common circle when observed in the movement axis direction (see Fig. 5, the connecting portion extends approximately in an inward radial direction towards the center of the common circle of the concentric arc arrangement).”
Regarding claim 10, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 9,” and JP 526 further teaches “wherein an angle formed by an arc of the magnet (the angle formed by the arc of the inner surface of the magnet in Fig. 5 based on the common concentric circle) and an angle of an arc formed by the guider based on the center of the common circle (the angle formed by the arc of the guider in Fig. 5) correspond to an angle of an arc formed by a lower surface of the upper side of the coil member (the angle of the arc formed by the lower surface of the concentric arc part of coils 21a and 21b is substantially the same angle of arc as the inner surface of the magnet and thus corresponds thereto and corresponds to the angle of arc of the guider in that the guider is appropriately fitted within it).”
Regarding claim 11, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 9,” and JP 526 further teaches “wherein an angle formed by an arc of the magnet based on the center of the common circle (the angle formed by the arc of the inner surface of the magnet in Fig. 5 based on the common concentric circle) corresponds to an angle of an arc formed by an outer surface of the upper side of the coil member (the angle of the arc formed by the outer surface of the concentric arc part of coils 21a and 21b is substantially the same angle of arc as the inner surface of the magnet and thus corresponds thereto), and
an angle formed by an arc of the guider based on the center of the common circle (the angle formed by the arc of the guider in Fig. 5) corresponds to an angle of an arc formed by a lower surface of the upper side of the coil member (the angle of the arc formed by the lower surface of the concentric arc part of coils 21a and 21b corresponds to the angle of arc of the guider in that the guider is appropriately fitted within it).”
Regarding claim 12, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 9,” and JP 526 further teaches “an angle formed by an arc of the guider based on the center of the common circle (the angle formed by the arc of the guider in Fig. 5) corresponds to an angle of an arc formed by a lower surface of the upper side of the coil member (the angle of the arc formed by the lower surface of the concentric arc part of coils 21a and 21b corresponds to the angle of arc of the guider in that the guider is appropriately fitted within it).”
However, JP 526 fails to teach “wherein an angle formed by an arc of the magnet based on the center of the common circle is greater than an angle of an arc formed by an outer surface of the upper side of the coil member.”
Shirotori teaches “wherein an angle formed by an arc of the magnet based on the center of the common circle (the angle of the arc of magnet 11A) is greater than (“First magnet 11A is designed such that the length of inner surface 11a in the circumference direction is appropriately longer than the length of outer surface 8a of driving coil for focusing 8A”) an angle of an arc formed by an outer surface of the upper side of the coil member (the angle of the arc of the outer surface of the upper side of coil 8A).”
It is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
The instant claims and JP 526 differ by the recitation of a relative dimension, the angle of the arc of the magnet relative to the angle of the arc of the outer surface of the upper side of the coil member. The prior art and the instant claim do not perform differently from one another.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the relative dimension of the angle of the arc of the magnet to be greater than the angle of the arc of the outer surface of the upper side of the coil as taught by Shirotori since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
Regarding claim 17, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” and JP 526 further teaches “wherein the magnet has an arc shape concentric with the curved arc shape of the upper side of the coil member about a center of a common circle when observed in the movement axis direction (see concentrically curved shape of the inner surfaces of magnets 20a and 20 in Figs. 2 and 5 and page 3 first paragraph: “Drawings 1 and 2, The magnet for focal control (20a), ((20b) 7) inner-skin shape A, a bearing part (3), and a concentric circular curved surface are formed (best shown in Drawings 1 and 2)”).”
Regarding claim 18, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” and JP 526 further teaches “wherein the guider includes an upper guide surface having a curved shape corresponding to the curved upper side of the coil member (see curved upper surfaces of the vertical inner portions of 19a and 19b in Figs. 2 and 5 and page 2 third paragraph: “Every a plurality of coils for focal control, the yoke for focal control, and the magnet for focal control which have a concentric circular arc part”).”
However, JP 526 fails to explicitly teach “a lower guide surface having a straight-line shape corresponding to the straight lower side of the coil member.”
Shirotori teaches “wherein the guider includes an upper guide surface having a … shape corresponding to the curved upper side of the coil member (the shape of the upper surface of 7A that is closer to the magnet is in a shape that corresponds to the curved shape of the upper side of the coil in that it fits therewithin, see Fig. 1), and a lower guide surface having a straight-line shape corresponding to the straight lower side of the coil member (see the straight-line shape of the lower guide surface of 7A in Fig. 1 that corresponds to the straight line shape of the lower side of the coil member.).”
The prior art, JP 526, and the instant claim differ by the shape of the lower surface of the cross section of the guider.
It is a well-established proposition 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), MPEP §2144.04(IV)(B).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the shape of the lower surface of the cross section of the guider to be straight as depicted in Shirotori in the voice coil motor of JP 526, 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), MPEP §2144.04(IV)(B). In the instant case, the change in shape does not appear to be significant to the function because the instant application has embodiments with either a straight or a concentrically curved shape for this lower surface, see claims 1 and 4, and evidently considers this change to be trivial, given that the straight shape is not even depicted in a drawing and no criticality is disclosed as being associated with the shape of this lower surface of the guider.
Regarding claim 19, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” and JP 526 further teaches “wherein the coil member includes connecting portions connecting the upper side and the lower side (the connecting portion of 21a and 21b between the straight line portion and the concentric arc part), the connecting portions extending in a radial direction toward the center of the common circle when observed in the movement axis direction (see Fig. 5, the connecting portion extends approximately in an inward radial direction towards the center of the common circle of the concentric arc arrangement).”
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over JP H02195526 A (hereafter JP 526) in view of Shirotori US 5,920,437 (hereafter Shirotori) as applied to claim 1 above and further in view of Lau et al. WO 2019/000214 A1 (hereafter Lau).
Regarding claim 13, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” and JP 526 further teaches “wherein the coil member includes a plurality of individual coil members (18a and 18b or 21a and 21b)” however, JP 526 fails to explicitly teach “the plurality of coil members are all electrically connected to each other.”
Lau teaches a voice coil motor (see title and abstract) “wherein the coil member includes a plurality of individual coil members (four focus deflection coils 4), and the plurality of coil members are all electrically connected to each other (page 7 first paragraph: “Each set of deflection focus coils 4 includes two oppositely disposed deflection focus coils 4. The two deflection focus coils 4 of the same group are connected in series or in parallel, or there may be no direct electrical connection between the deflection focus coils 4, respectively.”).”
It has been held that to reject a claim under a rationale of choosing from a finite number of identified, predictable solutions with a reasonable expectation of success, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. See MPEP §2143(I)(E).
In the instant case (1) there is an art recognized problem of how to connect the coils to properly energize them (2) there are only three possibilities, that they are connected in series, connected in parallel or not connected (3) one of ordinary skill in the art could have pursued any of these solutions with a reasonable expectation of success (4) the Graham factual inquiries have been explained above.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose to connect the coils either in series or in parallel as taught by Lau because it has been held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success is within ordinary skill.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over JP H02195526 A (hereafter JP 526) in view of Shirotori US 5,920,437 (hereafter Shirotori) as applied to claim 1 above and further in view of Böhme et al. US 2021/0141191 A1 (hereafter Böhme).
Regarding claim 14, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” and JP 526 further teaches “wherein the coil member is manufactured… in which a first surface has a shape corresponding to the upper side of the coil member (concentric arc part of 18a, 18b, 21a or 21b) and a second surface opposite to the first surface has a straight line shape (straight line portion of 18a, 18b, 21a or 21b).”
However, JP 526 fails to explicitly teach “wherein the coil member is manufactured by winding the coil member around a jig.”
Böhme teaches a voice coil motor (title and abstract: “voice coil actuator”) “wherein the coil member is manufactured by winding the coil member around a jig (paragraph [0013]: “In one embodiment, the coils are manufactured using a self-bonding wire which is wound around a removable core and ‘baked’ at high temperature. After this ‘baking’ the coil is fixed in shape and the core can be removed.” The removable core around which the self-bonding wire of the coil is wound is a jig.).”
Böhme further teaches (paragraph [0013]): “In one embodiment, the coils are manufactured using a self-bonding wire which is wound around a removable core and ‘baked’ at high temperature. After this ‘baking’ the coil is fixed in shape and the core can be removed. It leaves a coil that allows a smaller gap to the inner magnet because of the missing coil body. In addition, the coil shape is not straight but angled in order follow the curved magnet path better.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the coil of JP 526 by winding the coil member around a jig as taught by Böhme because Böhme teaches that this process allows a smaller gap between elements and is appropriate for a coil that is not entirely straight (paragraph [0013]).
Regarding claim 15, the JP 526 – Shirotori combination teaches “The voice coil motor of claim 1,” however, JP 526 is silent regarding “wherein the coil member is manufactured in a self-bonding type.”
Böhme teaches a voice coil motor (title and abstract: “voice coil actuator”) “wherein the coil member is manufactured in a self-bonding type (paragraph [0013]: “In one embodiment, the coils are manufactured using a self-bonding wire which is wound around a removable core and ‘baked’ at high temperature. After this ‘baking’ the coil is fixed in shape and the core can be removed.”).”
Böhme further teaches (paragraph [0013]): “In one embodiment, the coils are manufactured using a self-bonding wire which is wound around a removable core and ‘baked’ at high temperature. After this ‘baking’ the coil is fixed in shape and the core can be removed. It leaves a coil that allows a smaller gap to the inner magnet because of the missing coil body. In addition, the coil shape is not straight but angled in order follow the curved magnet path better.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the coil of JP 526 in a self-bonding type as taught by Böhme because Böhme teaches that that this process allows a smaller gap between elements and is appropriate for a coil that is not entirely straight (paragraph [0013]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over JP H02195526 A (hereafter JP 526) in view of Kawanabe US 2019/0103799 A1 (hereafter Kawanabe) and Shirotori US 5,920,437 (hereafter Shirotori).
Regarding claim 16, JP 526 teaches “A … lens assembly (see elements thereof below) comprising:
a lens (objective lens 1);
a lens housing (base yoke 8) accommodating the lens (see Figs. 1, 3 and 4 base yoke 8 accommodates the lens in that it provides a platform for the lens);
a lens holder (mobile holder 2) which holds the lens (see e.g. Fig. 1) and is movable together with the lens in a movement axis direction with respect to the lens housing (e.g. the last paragraph of page 2: “the movable holder (2)… moves with an object lens (1)”);
a yoke (focus control yokes 19a and 19b) accommodated on one side of the lens housing (19a and 19b are accommodated on one side of base yoke 8, i.e. the upper surface of 8 in the orientation of Figs. 3 and 4) and extending in a movement axis direction (19a and 19b extend all movement axis direction A parallel to bearing 3 see e.g. page 3 first paragraph: “movable holder (2) carries out at order in the direction of arrow A shown in Drawing 3, and focus control is attained”);
a magnet (magnet for focal control 20a and 20b) accommodates in the yoke (see Figs. 1, 2 and 4); and
a coil member (coils for focus control 18a and 18b or 21a and 21b) produced by winding… in a direction perpendicular to the movement axis direction (the coils are wound in a direction perpendicular to direction A, see Figs. 1 and 4) and accommodated on one side of the lens holder (the coils 18a and 18b or 21a and 21b are attached to the sides of mobile holder 2 so that 2 moves relative to the magnets 20a and 20b)
wherein the yoke includes a guider (the vertical inner portions of 19a and 19b which extend in the A direction and which are positioned inside of the coils 18a and 18b, see Figs. 1 and 4) inserted into and penetrating through the coil member in the movement axis direction (best seen in Fig. 4), and guiding a straight-line motion of the coil member and the lens holder in the movement axis direction (best seen in Fig. 4, the vertical inner portions of 19a and 19b constrain the movement of the coils 18a and 18b and holder 2 to a straight line motion), and
wherein the yoke includes a guider (the vertical inner portions of 19a and 19b which extend in the A direction and which are positioned inside of the coils 18a and 18b, see Figs. 1 and 4) having an upper guide surface (the “upper” surface of the inner portion closer to the magnet) and a lower guide surface (the “lower” surface of the inner portion further from the magnet), the guider being inserted into and penetrating through the coil member in the movement axis direction (best seen in Fig. 4), and configured to guide a straight-line motion of the coil member in the movement axis direction (best seen in Fig. 4, the vertical inner portions of 19a and 19b constrain the movement of the coils 18a and 18b and holder 2 to a straight line motion),
wherein, when observed in the movement axis direction (the viewing direction shown in Figs. 2 and 5), the coil member includes:
an upper side positioned closer to the magnet and having a curved arc shape based on a center of a common circle (see curved arc shape of the portion of the coils 18a, 18b, 21a and 21b proximate to the magnets 20a and 20b in Figs. 2 and 5 and page 3 first paragraph: “coil for focus control (18a) … has a bearing part and a concentric arc part” emphasis added), and a lower side positioned farther from the magnet and having a straight-line shape (see straight line shape of the lower side of 18a, 18b, 21a and 21b away from the magnets 20a and 20b in Figs. 1, 2 and 5 and the last paragraph of page 2 “A straight line portion is fixed by (4b)”), and
wherein the upper guide surface of the guider has a curved shape corresponding to the curved arc shape of the upper side of the coil member (see curved upper surfaces of the vertical inner portions of 19a and 19b in Figs. 2 and 5 and page 2 third paragraph: “Every a plurality of coils for focal control, the yoke for focal control, and the magnet for focal control which have a concentric circular arc part”).”
However, JP 526 fails to teach that the lens assembly is a camera lens assembly. It is worth noting however, that JP 526 does teach that the motion of the lens is for focal control (see e.g. the last paragraph of page 2 “coil for focal control”).
Kawanabe teaches “A camera lens assembly (imaging apparatus 30 see paragraph [0003]: “In an imaging apparatus, such as a digital camera”) comprising:
a lens (first focus lens 42);
a lens housing (focus barrel 50) accommodating the lens (see Fig. 9);
a lens holder (focus lens frame 51) which holds the lens and is movable together with the lens in a movement axis direction with respect to the lens housing (see Fig. 9);
a yoke (inner yoke 24B and outer yoke 24A) accommodated on one side of the lens housing (the side closest to 53, see Fig. 9) and extending in the movement axis direction (24 extends in the focusing direction along the optical axis see Fig. 9);
a magnet (magnet 12) accommodated in the yoke (see 12 within 24A/24B in Fig. 9); and
a coil member (coil 13) … winding … in a direction perpendicular to the movement axis direction (see winding direction of 13 around inner yoke 24B in Fig. 9) and accommodated on one side of the lens holder (see how 13 is accommodated on the forward side of 51 in Fig. 9),
wherein the yoke includes a guider (inner yoke 24B) inserted into and penetrating through the coil member in the movement axis direction (see Fig. 9), and guiding a straight line motion of the coil member and the lens holder in the movement axis direction (see Fig. 9), and
wherein the yoke includes a guider having an upper guide surface and a lower guide surface (the upper and lower guide surfaces of 24B would normally be considered the outer and inner surfaces of 24B in the radial direction from the optical axis), the guider being inserted into and penetrating through the coil member in the movement axis direction (see Fig. 9) and configured to guide straight-line motion of the coil member in the movement axis direction (see Fig. 9),
wherein, when observed in the movement axis direction, the coil member includes:
an upper side positioned closer to the magnet (the radially outer side of 13) … and a lower side positioned farther from the magnet (the radially inner side of 13) and having a straight-line shape (see Fig. 9), and
wherein the upper guide surface of the guider has a … shape corresponding to the … shape of the upper side of the coil member (best seen in Figs. 2-3 and 6-7), and the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member (best seen in Figs. 2-3 and 6-7).”
Kawanabe further teaches in paragraphs [0003]-[0012] that a lens so configured with only two VCMs, one on either side of the lens provides an imaging apparatus that can increase a thrust while reducing the weight of a coil.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adopt the VCM for a focusing lens as taught in JP 526 as the actuator for a focusing lens in a camera as taught by Kawanabe. One would have been motivated to adopt such a use because Kawanabe teaches that a configuration of a focusing actuator comprising two VCMs on either side of a focusing lens, whose similarities to both the claimed device and JP 526 have been identified above, is an improvement over other camera actuators by providing an increased thrust while reducing the weight of the coil (Kawanabe paragraphs [0003]-[0012]).
However, JP 526 fails to explicitly teach “a coil member formed by winding a single coil several times in a direction perpendicular to the movement axis direction.”
and “the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member.”
Shirotori teaches “A voice coil motor (see elements thereof below) comprising:
a magnet (arcuate magnets 11A and 11B);
a yoke (outer yoke 5 and inner yoke 7A) accommodating the magnet (see Figs. 1 and 2 and col. 4 lines 2-4: “arcuate first and second magnets 11A, 12A are mounted adjacent to each other in the circumference direction on outer yoke wall 5b.”) and extending in a movement axis direction (5 and 7 extend in the focusing direction see Fig. 3 and col. 3 lines 62-63: “moves lens holder 3 in the focusing direction”); and
a coil member (driving coils for focusing 8A and 8B) formed by winding a single coil several times in a direction perpendicular to the movement axis direction (see Fig. 3),
wherein the yoke includes a guider (7A and 7B) having an upper guide surface and a lower guide surface (the surface closer to the magnet and the surface further from the magnet), the guider being inserted into and penetrating through the coil member in the movement axis direction (see Figs. 1-3), and configured to guide straight-line motion of the coil member in the movement axis direction (the movement of 8A and 8B in the focusing direction is constrained to a straight line motion by 7A and 7B, see Fig. 2),
wherein, when observed in the movement axis direction, the coil member includes:
an upper side positioned closer to the magnet and having a curved arc shape based on a center of a common circle (see Fig. 1, the exterior side of the coils 8A and 8B when observed in the focusing direction as in Fig. 1 appear to be in a curved shape matching the interior of the arcuate magnets), and a lower side positioned farther from the magnet and having a straight-line shape (the lower side of coils 8A and 8B positioned farther from the magnet is straight-line shaped see Fig. 1), and
wherein the upper guide surface of the guider has a … shape corresponding to the curved arc shape of the upper side of the coil member (the shape of the upper surface of 7A that is closer to the magnet is in a shape that corresponds to the curved shape of the upper side of the coil in that it fits therewithin, see Fig. 1), and the lower guide surface of the guider has a straight-line shape corresponding to the straight-line shape of the lower side of the coil member (see the straight-line shape of the lower guide surface of 7A in Fig. 1 that corresponds to the straight line shape of the lower side of the coil member.).”
It has been held that to reject a claim under a rationale of choosing from a finite number of identified, predictable solutions with a reasonable expectation of success, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. See MPEP §2143(I)(E).
In the instant case (1) there is an art recognized problem of providing the appropriate driving force in a linear voice coil motor (2) there are a finite number of ways that a single coil can be wound (a) a single winding (b) two windings (c) several windings (d) a large number of windings (3) one of ordinary skill in the art could have pursued any of these solutions with a reasonable expectation of success (4) the Graham factual inquiries have been explained above.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose to form the coil from several windings as demonstrated by Shirotori in the voice coil motor of JP 526 because it has been held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success is within ordinary skill.
The prior art, JP 526, and the instant claim differ by the shape of the lower surface of the cross section of the guider.
It is a well-established proposition 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), MPEP §2144.04(IV)(B).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the shape of the lower surface of the cross section of the guider to be straight as depicted in Shirotori and as disclosed in Kawanabe in the voice coil motor of JP 526, 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), MPEP §2144.04(IV)(B). In the instant case, the change in shape does not appear to be significant to the function because the instant application has embodiments with either a straight or a concentrically curved shape for this lower surface, see claims 1 and 4, and evidently considers this change to be trivial, given that the straight shape is not even depicted in a drawing and no criticality is disclosed as being associated with the shape of this lower surface of the guider.
Response to Arguments
Applicant's arguments filed February 13, 2026 have been fully considered but they are not persuasive.
In the opening paragraph of page 8 of 11 of the applicant’s remarks the applicant lists the disposition of the claims, notes the submission of a replacement drawing for Fig. 1, explains where support for the amendments can be found and introduces that any and all actions within the Office Action are traversed. The examiner agrees that no new matter has been introduced by the claims or replacement drawing. No specific argument for patentability is made within this paragraph.
Under the heading “Drawing Objections” on page 8 of 11 of the applicant’s remarks the applicant argues that the drawing objections of the previous office action have been overcome by the submission of a replacement drawing of Fig. 1 and the cancellation of claim 5. The examiner agrees that the replacement drawing overcomes that particular drawing objection. However, a new drawing objection is raised by the amendments to claims 1 and 16 that is very similar to the previous objection stemming from the limitations of claim 5.
Under the heading “Rejections under 35 USC §112(b)” on pages 8 and 9 of 11 of the applicant’s remarks the applicant argues that the rejections of claims 1-16 under 35 USC §112(b) have been overcome by the amendments to the claims. The examiner agrees that many of the issues have been overcome by amendment, however, some of the issues remain unresolved or are introduced by the amendments.
From page 9 through the first two paragraphs of page 10 of 11 of the applicant’s remarks the applicant notes the limitations that have been added to claims 1 and 16, and argues that none of Hideshima, JP 526 or Shirotori teach the combination of limitations regarding the geometry as currently claimed, because they fail to teach a deliberately asymmetric arc/straight configuration. The argument over Hideshima is moot as this rejection has been withdrawn. Regarding JP 526 and Shirotori, this argument is not persuasive for at least the following reasons.
Firstly, it should be noted that applicant’s allegation that JP 526 fails to teach a coil member having a deliberately asymmetric arc/straight configuration is not accurate. Both Figs. 2 and 5 of JP 526 show a coil 18a/b or 21a/b with a curved upper side and a straight lower side, that is concentrically curved with the magnet.
Second, the applicant’s restatement of the claim as requiring “a magnet having an arc shape concentric only with the curved upper side of the coil member” is not recited in claims 1 or 16. Furthermore, as pointed out in the rejection of claim 3, JP 526 does in fact teach this feature.
In the third paragraph of page 10 of 11 of the applicant’s remarks the applicant notes that the claims further require a guider having a curved upper guide surface and a straight lower guide surface corresponding respectively to the curved and straight sides of the coil member, wherein the guider penetrates through the coil member to guide straight-line motion along the movement axis and states that the cited references do not disclose the claimed coil-magnet-guider geometry. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, JP 526 already teaches an upper surface of the guider that is concentrically curved with the curved shapes of the coil and magnet. Shirotori teaches that the lower surface of the guider can be straight in correspondence with the straight lower side of the coil. Given the lack of any disclosure of a different or critical effect of the lower surface of the guider being straight rather than curved, the rejection above modifies JP 526 in view of Shirotori to make the lower surface of the guider straight with the rationale for such a modification coming from the well-established proposition 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), MPEP §2144.04(IV)(B).
Further in the third paragraph of page 10 of 11 of the applicant’s remarks the applicant alleges that this “coordinated structural relationship, described for example in paragraphs [0013]-[0021] and [0057]-[0062] and illustrated in FIGS. 4A-4B and 5B of the present application, stabilizes the magnetic gap and maintains alignment during actuation.” This argument is not persuasive for at least the following reasons. Of the cited passages, only paragraph [0057] mentions the choice of an asymmetric shape for the guider having a straight lower side. In particular, paragraph [0057] merely states “However, the lower surface 53b2 of the guider 53b may also be formed in a straight line shape to correspond to the lower side 55b of the coil member 55, unlike that illustrated in FIG. 4A.” Contrary to the applicant’s allegation, none of Figs. 4A-4B or 5B illustrate the configuration of claims 1 and 16. Furthermore, Counsel's assertion that the claimed configuration “stabilizes the magnetic gap and maintains alignment during actuation” is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). MPEP §§ 2145, 716.01(c). The examiner could not find any words within the specification including the root “stab” or “align”. Furthermore, in response to applicant's argument that the claimed configuration “stabilizes the magnetic gap and maintains alignment during actuation”, an allegation that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the fourth paragraph of page 10 of 11 of the applicant’s remarks the applicant argues that “The Office Action's finite-options rationale is also unsupported because the cited references do not identify the claimed asymmetric geometry as a recognized design option, nor do they address the stability and alignment problem solved by the present configuration.” This argument is not persuasive because the rationale to support the modification of the geometry was In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), MPEP §2144.04(IV)(B), not the finite options rationale from KSR. As best understood by the examiner, the applicant does not appear to make an argument that the finite-options rationale provided for the modification of the coil-winding configuration is improper for that modification.
No new arguments are presented after this paragraph.
The request for an interview with the examiner on page 11 of 11 of the applicant’s remarks is denied. The nature and number of the outstanding issues of patentability are such that it does not appear that an interview would result in expediting allowance of the application at this time. See MPEP §713.01 (IV) “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application. … Where a complete reply to a first action includes a request for an interview, the examiner, after consideration of the reply, should grant such an interview request if it appears that the interview would result in expediting the allowance of the application.”
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 CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham can be reached at 571-272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872