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
Claims 9-13, 16, 18, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II (drawn to the magnetic and coil details), there being no allowable generic or linking claim. Applicant's election, of Group I clamp details, with traverse in the reply filed on 10/9/25 is acknowledged. The traversal is on the ground(s) that there is no undue burden to consider all claimed in the single application. This is not found persuasive because evidence of burden pursuant to MPEP §808.02(A) is established by the showing of different classifications. Separate classification was offered regarding each group in the original restriction requirement. Applicant has not, by this traversal, offered evidence of any error in this regard.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The title of the invention is not sufficiently descriptive. Specifically, the current title of “Prismatic Motor” implies that the motor itself has some optical feature rather than holding an optical element. Examiner recommends changing the title to “Motorized Prism Mount.”
“The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters,” MPEP §606. Specifically, statements concerning the general type or nature of the entire system or its components that are common to many other similar elements or systems that are known in the art are not sufficiently descriptive to provide “informative value in indexing, classifying, searching, etc.,” MPEP §606.01. Examiner recommends directing the title to what Applicant believes is the point of novelty, including key structural features, since it is by the novelty that "indexing, classifying, searching, etc.” is generally accomplished. Nevertheless, it should be noted that, pursuant to MPEP §606.01, “[i]f a satisfactory title is not supplied by the applicant, the examiner may, at the time of allowance, change the title by examiner’s amendment.”
A new title is required that is more clearly indicative of the invention to which the claims are directed. Examiner recommends changing the title to “Motorized Prism Mount.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8, 14, 15, 17, 20 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 pre-AIA the applicant regards as the invention.
All the claims recite the phrase “prismatic Motor” in the preamble, and this implies that the motor itself has some optical feature rather than holding an optical element, as disclosed in the application. For examination purposes, it will be interpreted as “a motorized prism mount.”
Claim(s) 2-8, 14, 15, 17 inherit(s) the same deficiencies by virtue of dependency from claim 1 and directly with the inclusion of the same language in each claim’s preamble, as well. Appropriate correction is required.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kwon (US 20210286193).
Regarding independent claim 20, Kwon discloses A prismatic motor for driving a prism (Abstr – rotation holder; Figs. 13, 17A, 17B; note element 1150 may be a prism, see para. 195) comprising (i.e., open language for the claim, MPEP 2111.03):
a first holder (1110 - carrier) comprising two bosses (in Kwon, the portion of 1110 above 26b – one on either side; insofar as such as structure is the same as the present application, Fig. 3: 121 shows the boss as the portion above the groove surface 1200) and two first clamping parts (the upper and lower holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25b, surface 26b, guide portion 1123b), wherein the two bosses are disposed horizontally and outwards (i.e., on either side), the first holder is for holding the prism between the two bosses (i.e., via either side), and the two first clamping parts are located on the two bosses respectively (i.e., connected to); and
a second holder which comprises a backboard, two arms located on two sides of the backboard, and two second clamping parts located on the two arms respectively (Kwon, Figs. 11, 13, 17 – e.g., 1130 – rotation holder structure), wherein there is an avoidance space formed between the backboard and the two arms, the first holder is disposed in the avoidance space (Kwon, Figs. 11, 13, 17 – note behind), the two arms are correspondingly disposed with the two bosses respectively, the second clamping part is rotatably connected to the first clamping part (Fig. 13 – note rotation arrows), and the first holder is configured to rotate relative to the second holder by the first clamping part and the second clamping part (Fig. 13 – note rotation arrows).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 14, 15, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon (US 20210286193) in view of Xu (US 20220187566).
Regarding independent claim 1, Kwon discloses A prismatic motor for driving a prism (Abstr – rotation holder; Figs. 13, 17A, 17B; note element 1150 may be a prism, see para. 195) comprising (i.e., open language for the claim, MPEP 2111.03):
a first holder (1110 - carrier) for holding the prism (1150 - prism), the first holder (1110- carrier) comprising (i.e., open language for the first holder, MPEP 2111.03) a first clamping part (the upper holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25b, surface 26b, guide portion 1123b);
a second holder (1010 - housing) comprising (i.e., open language for the second holder, MPEP 2111.03) a second clamping part (the lower holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25a, surface 26a, guide portion 1123a) which is correspondingly disposed with the first clamping part (the upper holding portion); and
a rotating element (1111 – guide ball members) located between the first clamping part and the second clamping part (i.e., the lower holding portion as describe above) and radially separating the first holder from the second holder (via the circumference of guide ball 1111), wherein, the first holder is configured to rotate along a circumference direction of the rotating element (i.e., Fig. 13 indicates rotation with a double-tipped arrow; para. 167 states “1110 which rotates relative to a fixed portion 1010”).
Kwon does not explicitly disclose that the rotating element is a cylinder.
Kwon (Abstr, para. 195) and Xu (title) are related as prism modules.
Xu teaches rotation about cylinders structure (Fig. 5: 3- rotating shaft). Additionally, 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). Further, one would have been motivated to select the shape of a cylinder for the purpose of additional stability and consistency across the supported area and amounts to a design choice because using balls versus cylinders as axels (cylinders) is a fundamental mechanism for rotation for centuries in hinges and other rotating devices. Functionally, both Kwon and Xu are using a hinging structure to move the prism according to the needed positioning in the overall camera device. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984). MPEP 2144.04(VI)(C).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to appropriately substitute a cylindrical structure as in Xu to for the guide balls of Kwon so as to give additional stability and consistency across the axis of rotation.
Regarding claim 2, the combination further discloses The prismatic motor according to claim 1, wherein the first holder further comprises a boss (in Kwon, the portion of 1110 above 26b, insofar as such as structure is the same as the present application, Fig. 3: 121 shows the boss as the portion above the groove surface 1200) which protrudes outwards (i.e., out from the ball member 1111 and surfaces [e.g., 25b] above it), the first clamping part (the upper holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25b, surface 26b, guide portion 1123b) is located on the boss (i.e., integral therewith, see Figs.), and the first holder is for holding the prism on a direction opposite to a protruding direction of the boss (i.e., opposite is not defined; it is, among others, opposite of the 1130 therefrom).
Regarding claim 3, the combination further discloses 3. The prismatic motor according to claim 2, wherein a number of the bosses is two and the two bosses are disposed horizontally and outwards (Kwon, i.e., this is necessarily true as the depictions in Figs. 13 & 17 are mirrored on the other side of the depiction), the first holder is for holding the prism between the two bosses (Figs. 13 – note prism 1150 supported by carrier 1110), a number of the first clamping parts corresponds to the number of the bosses (i.e., the each boss has clamping parts), and the first clamping part is vertically located below the boss and the second clamping part is vertically located above the second holder (i.e., vertical and horizontal are relative and undefined by the claim so this is necessarily true).
Regarding claim 4, the combination further discloses 4. The prismatic motor according to claim 2, wherein the second holder comprises an arm which is correspondingly disposed with the boss, and the second clamping part is located on the arm (Kwon, i.e., structural extension of carrier 1110).
Regarding claim 5, the combination further discloses 5. The prismatic motor according to claim 4, wherein a number of the arms is two (Kwon, i.e., portions of carrier 1110) and corresponds to a number of the second clamping parts (i.e., each arm portion has clamping parts), and the two arms are disposed horizontally (i.e., vertical and horizontal are relative and undefined by the claim so this is necessarily true).
Regarding claim 6, the combination further discloses 6. The prismatic motor according to claim 5, wherein a number of the cylinders is two and corresponds to the number of the first clamping parts and the number of the second clamping parts, and the two cylinders are coaxially disposed (Kwon, i.e., the balls 1111 are coaxially disposed).
Kwon does not explicitly disclose that the rotating element is a cylinder.
Kwon (Abstr, para. 195) and Xu (title) are related as prism modules.
Xu teaches rotation about cylinders structure (Fig. 5: 3- rotating shaft). Additionally, 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). Further, one would have been motivated to select the shape of a cylinder for the purpose of additional stability and consistency across the supported area and amounts to a design choice because using balls versus cylinders as axels (cylinders) is a fundamental mechanism for rotation for centuries in hinges and other rotating devices. Functionally, both Kwon and Xu are using a hinging structure to move the prism according to the needed positioning in the overall camera device. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984). MPEP 2144.04(VI)(C).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to appropriately substitute a cylindrical structure as in Xu to for the guide balls of Kwon so as to give additional stability and consistency across the axis of rotation.
Regarding claim 7, the combination further discloses 7. The prismatic motor according to claim 1, wherein the first clamping part is a concave groove with rectangular cross-section (Kwon, i.e., the upper holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25b, surface 26b, guide portion 1123b), and the second clamping part is a concave groove with trapezoidal cross-section (the lower holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25a, surface 26a, guide portion 1123a).
Regarding claim 8, the combination further discloses 8. The prismatic motor according to claim 7, wherein the first clamping part comprises a first groove bottom surface (Kwon, 26b – bottom surface), the second clamping part comprises a second groove bottom surface and two slanted surfaces which are relatively disposed and are connected to the second groove bottom surface, the first groove bottom surface and the two slanted surfaces are respectively in line contact with the cylinder, and there is a gap between the cylinder and the second groove bottom surface (the lower holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25a, surface 26a, guide portion 1123a).
Regarding claim 14, the combination further discloses 14. The prismatic motor according to claim 1, further comprising: a first accommodation part (Kwon, Fig. 11: 1160 – auxiliary member (right side)) disposed on [i.e., interpreted as connected to via the system] the second holder (Kwon, 1010 - housing); a second accommodation part Fig. 11: 1160 – auxiliary member (left side) being correspondingly disposed with the first accommodation part and defining a rolling space with the first accommodation part (Fig. 11 – note ball members 1131 below); and a rolling body located in the rolling space, wherein the rolling body is configured to roll in the rolling space, and the second holder is configured to rotate along the rolling space (Fig. 11 – note ball members 1131).
Regarding claim 15, the combination further discloses 15. The prismatic motor according to claim 14, wherein a number of the first accommodation parts and a number of the second accommodation parts are respectively two (Kwon, i.e., there are two sides to the structure with the same elements; note that the claim is comprising language, which means the correct interpretation is “at least two” since the claim does not explicitly say “only two;” MPEP 2111.03), a number of the rolling spaces is two, the two rolling spaces comprise at least one directional channel, the rolling body is configured to roll in the directional channel (id.), and the second holder is configured to rotate along the directional channel (Fig. 13 – note rotation arrow).
Regarding claim 17, the combination further discloses 17. The prismatic motor according to claim 1, wherein the first holder further comprises two bosses disposed horizontally and outwards, the first holder is for holding the prism between the two bosses (Kwon, Figs. 11, 13, 17); the second holder further comprises a backboard and two arms respectively located on two sides of the backboard, there is an avoidance space formed between the backboard and the two arms (Kwon, Figs. 11, 13, 17 – note behind), the first holder is disposed in the avoidance space, and the two arms are correspondingly disposed with the two bosses respectively (Kwon, Figs. 11, 13, 17).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER D. CARRUTH whose telephone number is (571)272-9791, who can normally be reached on Mon-Fri 9:00 AM - 4:00 PM ET.
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If attempts to reach Supervisory Examiner Carruth by telephone are unsuccessful, the examiner’s supervisor, Director Allana L Bidder, can be reached on 571-272-5560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER D. CARRUTH/Supervisory Patent Examiner, Art Unit 2871