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 .
Status Of Claims
Claims 1-20, received 7/26/2023, are pending for examination.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on 7/10/2024 was considered.
Drawings
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 limitations of claims 13 and 14 must be shown or the features canceled from the claims. Specifically, it is not clear from the description and figures where a second flat resilient element would be positioned such that both flat resilient elements are connected to four corners of the base (100) and also connected to the top of the second carrier (400); and it is not clear from the description and figures how the flat resilient element (500) and the guide element (307) would be combined. 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 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 3-4, 16-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Claims 3-4, 16-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Lines 8-12 of claim 3 recite structural limitations which conflict with each other, and with the description of the invention set forth in the disclosure. Lines 8-9 of claim 3 recite that the first carrier driving coil (801) is fixed to the first carrier (300). The structural relationship for these elements can be seen in figure 3, and is described in specification paragraph [0036] wherein the “first carrier driving coil 801 is disposed on one of the first carrier 300 and the second carrier 400, and the first carrier driving magnet 802 is disposed on the other of the first carrier 300 and the second carrier 400”. According to this description, since the first carrier driving coil (801) is fixed to the first carrier (300), the first carrier driving magnet (802) must be disposed on the second carrier (400). However, lines 10-12 of claim 3 recite that the first carrier driving magnet (802) is disposed on the first carrier (300) or the second carrier (400). As can be seen in figure 3, it is not clear how both the first carrier driving coil (801) and the first carrier driving magnet (802) may be disposed on the first carrier (300), since this would not allow the coil and magnet to function as intended to move the first carrier. Therefore, the structural limitations of lines 8-12 of claim 3 conflict with one another, conflict with the description of the invention, and render the embodiment inoperable. Additionally, the conflicting language of claim 3 means that the intended scope of claim 3 cannot be determined, and is indefinite.
Claims 4, 16-20 are rejected for inheriting the same deficiencies of claim 3 from which they depend.
Lines 13-14 of claim 4 recite structural limitations which conflict with the description of the invention set forth in the disclosure. Lines 13-14 of claim 4 recite that the second carrier driving magnet (902a) is disposed on the first carrier (300) or the second carrier (400). The structural relationship for these elements can be seen in figure 3, and is described in specification paragraph [0044] wherein “the second carrier driving magnet 902a is disposed on the other of the second carrier 400 and the base 100”. According to this description, the second carrier driving magnet (902a) must be disposed on the second carrier (400) or the base (100). As can be seen in figure 3, it is not clear how the second carrier driving magnet (902a) may be disposed on the first carrier (300), since this would not allow the coils and magnets to function as intended to move the second carrier. Therefore, the structural limitations of lines 13-14 of claim 4 conflict with the description of the invention, and render the embodiment inoperable. Additionally, the conflicting language of claim 4 means that the intended scope of claim 4 cannot be determined, and is indefinite.
The limitation “the second carrier is disposed close to the second carrier driving coil” on lines 13-14 of claim 4 includes the relative term “close to” which renders the claim indefinite. The term “close to” is 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. It is not clear at what distance the second carrier is considered to be disposed “close to” the second carrier driving coil, and therefore it is not clear when the claim would be infringed. The language “the second carrier is disposed close to the second carrier driving coil” is indefinite as the intended metes-and-bounds of the claim cannot be determined.
Claims 16-20 are rejected for inheriting the same deficiencies of claim 4 from which they depend.
Lines 23-28 of claim 16 describe that two groups of second carrier driving magnets are “close to” the second carrier driving coil and “close to” another second carrier driving coil which renders the claim indefinite. The term “close to” is 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. It is not clear at what distance the second carrier driving magnets are considered to be disposed “close to” the second carrier driving coil, and therefore it is not clear when the claim would be infringed. Therefore, the intended metes-and-bounds of the claim cannot be determined.
Lines 2-3 of claim 20 are indefinite since it is not clear if claim 20 is only intended to incorporate the structure of “the first carrier driving device” and “the second carrier driving device” from claim 4, or if the entire lens device structure of claims 1, 2, 3 and 4 are intended to be incorporated into claim 20. Additionally, it is noted that the “first carrier driving device” is actually recited in claim 3, and therefore it appears that claim 20 is intending to be dependent from claim 4 which also includes the entire structure of claims 3, 2 and 1. Further, line 4 of claim 20 recites “a lens module”, but “a lens module” is already previously recited on line 3 of claim 1. Therefore, it is not clear if the “lens module” of claim 20 is a reference to the same “lens module” of claim 1, or is a recitation of an additional lens module. Therefore, claim 20 is indefinite as the intended metes-and-bounds of the claim cannot be determined. For the purpose of this examination it is interpreted that claim 20 depends from claim 4, and that the limitation “a lens module” on line 4 of claim 20 is referring to the previously recited “a lens module” of claim 1 (i.e. “a lens module” on line 4 of claim 20 is interpreted as “the lens module”).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 10-12, 15, 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al., U.S. Patent Application Publication Number 2019/0094565 A1 (hereafter Park).
Regarding claim 1, Park discloses a lens device (see at least element 100), comprising:
a base (see at least element 210);
a lens module comprising an optical axis extended in a first direction (see at least para. [0056]);
a first carrier disposed on the base to carry the lens module (see at least element 110);
a second carrier disposed on the base to carry the first carrier (see at least element 140);
a resilient element which is flexible and connects the second carrier and the base (see at least element 220);
wherein the first carrier is movable with respect to the second carrier in the first direction (see at least paras. [0060], [0074]);
wherein the second carrier carrying the first carrier is movable with respect to the base in a second direction and a third direction (see at least paras. [0051], [0175], [0245]-[0247]);
wherein the first direction is perpendicular to the second direction and the third direction (see at least paras. [0051], [0175], [0245]-[0247]).
Regarding claim 2, Park discloses the limitations of claim 1, including a flat resilient element configured to constantly apply a resilient force to the first carrier in the first direction towards a photographed object (see at least elements 110, 150, 151, 153, 150-1 through 150-4, 152a, 152b, 150a, 150b, paras. [0177]-[0196]).
Regarding claim 3, as best understood, Park discloses the limitations of claim 2, including a first carrier driving device disposed between the first carrier and the second carrier for driving the first carrier to move in the first direction (see at least elements 120, 180, 130);
wherein the first carrier driving device comprises a first flexible printed circuit board (see at least element 180), a first carrier driving coil (see at least element 120) and a first carrier driving magnet (see at least element 130);
wherein the first flexible printed circuit board is disposed to surround an outer circumferential wall of the first carrier (see at least paras. [0098]-[0099]);
wherein the first carrier driving coil is fixed to the first carrier and is electrically connected to the first flexible printed circuit board (see at least paras. [0078]-[0081], [0251]);
wherein the first carrier driving magnet is disposed on the second carrier and is disposed corresponding to the first carrier driving coil (see at least elements 140, 120, 130, 130-1 through 130-4, paras. [0060], [0084]-[0086], [0101]).
Regarding claim 4, as best understood, Park discloses the limitations of claim 3, including a second carrier driving device disposed between the base and the second carrier for driving the second carrier to move in the second direction and the third direction (see at least elements 230, 130, 250);
wherein the second carrier driving device comprises a second flexible printed circuit board (see at least element 250), a second carrier driving coil (see at least element 230) and a second carrier driving magnet (see at least element 130);
wherein the second flexible printed circuit board is disposed to cover over the base (see at least para. [0236]);
wherein the second carrier driving coil is disposed to cover over the second flexible printed circuit board and is electrically connected to the second flexible printed circuit board (see at least paras. [0235], [0251]);
wherein the second carrier driving magnet is disposed on the second carrier and is disposed close to the second carrier driving coil (see at least elements 140, 130, 130-1 through 130-4, 230, paras. [0051], [0101], [0138], [0240]-[0245]).
Regarding claim 17, as best understood, Park discloses the limitations of claim 4, including a sensor magnet or/and a position control device disposed on the first carrier or the second carrier (see at least sensor magnet 190 disposed on first carrier 110; and/or position control element 170, disposed on first circuit board element 180, disposed on first carrier 110) wherein the flat resilient element is disposed on the first carrier (see at least elements 110, 111a, 150, para. [0065]) and is electrically connected to the first flexible printed circuit board (see at least elements 170, 180, 184-1 through 184-4, paras. [0096], [0108], [0117]-[0118], [0179], [0193]-[0196], [0251]).
Regarding claim 18, as best understood, Park discloses the limitations of claim 17, wherein the sensor magnet comprises a built-in Hall driver or is configured for a position control which is a closed loop control (see at least paras. [0090]-[0096]).
Regarding claim 19, as best understood, Park discloses the limitations of claim 4, including wherein the first carrier driving magnet or the second carrier driving magnet is not only a driving but a sensor magnet for position control for the first carrier or the second carrier (see at least elements 130, 170, 240, paras. [0052], [0090]-[0096], [0246]-[0251]).
Regarding claim 20, as best understood, Park discloses the limitations of claim 4, including the first carrier driving device (see the rejections of claims 3 and 4 as set forth above);
the second carrier driving device (see the rejection of claim 4 as set forth above);
the lens module connected to the first carrier driving device and the second carrier driving device (see at least para. [0056] wherein a lens is coupled to the first carrier 110 and associated driving device(s), while the first carrier 110 is coupled to the second carrier 140 and associated driving device(s));
an image forming unit configured to capture an image of a photographed object formed by the lens module (see at least paras. [0047], [0339], [0436]).
Regarding claim 10, Park discloses the limitations of claim 2, including wherein the flat resilient element comprises a pressing portion (see at least element 151) and a fixed portion (see at least elements 150-1 through 150-6, 152a, 152b; and/or elements 160-1 through 160-4 and 162-1 through 162-4) connected to each other (see at least element 153, paras. [0184]-[0185]), the fixed portion is connected to the second carrier, the base or the resilient element (see at least paras. [0142], [0144], [0183], [0192], [0194]-[0196]), and the pressing portion is connected to the first carrier (see at least para. [0186]).
Regarding claim 11, Park discloses the limitations of claim 10, wherein the pressing portions are symmetrically arranged with respect to the optical axis of the lens module (see at least elements 151 in figure 11).
Regarding claim 15, Park discloses the limitations of claim 10, including a connecting element which connects the flat resilient element and the second carrier (see at least elements 152a, 152b, 140, para. [0192]);
wherein the connecting element is extended in a plane perpendicular to the first direction (see at least figure 11, a plane perpendicular to the z-axis (first direction));
wherein the connecting element is connected to the fixed portion of the flat resilient element (see at least connecting elements 152a, 152b which are connected to fixed portions 160-1 through 160-4 and 162-1 through 162-4 through bends 165, 154, paras. [0198]-[0214].
Regarding claim 12, Park discloses the limitations of claim 2, including wherein the first carrier comprises an end surface disposed distant from the base, and the end surface defines a positioning groove to receive the flat resilient element (see at least elements 150, 153, 110, 111a, para. [0065]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 18 of copending Application No. 18/790003 (corresponding to US 2025/0076608 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader than or an obvious variation of claims 1, 9 and 18 of copending Application No. 18/790003.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1 of the instant application, claims 1, 9 and 18 claim all of the claim limitations of claim 1.
Other Related Art
This prior art, made of record, but not relied upon is considered pertinent to applicant's disclosure since the following references have similar structure and/or use similar optical elements to what is claimed and/or disclosed in the instant application:
Park, US 2024/0231120 A1, discloses all of the limitations of at least claim 1 (figure 1).
Allowable Subject Matter
Claims 5-9, 13-14 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:
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable over the cited art of record, if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for at least the reason that the prior art and cited art of record fails to teach or reasonably suggest a lens device comprising a guide element disposed between a first groove and a second groove and extended in the first direction; wherein the first groove is formed on an outer surface of the first carrier; wherein the second groove is formed on an inner surface of the second carrier corresponding to the first groove; wherein the guide element is further disposed in the first groove and the second groove, as generally set forth in claim 5, the device including the totality of the particular limitations recited in claims 1 and 2 from which claim 5 depends.
Claims 6-9 and 14 depend from claim 5 and therefore are objected to for at least the same reasons as claim 5.
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable over the cited art of record, if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for at least the reason that the prior art and cited art of record fails to teach or reasonably suggest a lens device further comprising another flat resilient element, wherein the flat resilient elements are connected to four corners of the base, extended in the second direction and in the third direction, and connected to a top of the second carrier, as generally set forth in claim 13, the device including the totality of the particular limitations recited in claims 1 and 2 from which claim 13 depends.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK S. CHAPEL whose telephone number is (571)272-8042. The examiner can normally be reached M-F 9:30am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone B. Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Derek S. Chapel/Primary Examiner, Art Unit 2872 2/1/2026
Derek S. CHAPEL
Primary Examiner
Art Unit 2872