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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed December 28, 2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed; and it fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Particularly, the Korean Office Actions dated January 30, 2020 application 10-2014-0087206, the Korean Office Actions dated January 30, 2020 application 10-2014-0087208 and the Korean Office Actions dated August 20, 2020 application 10-2014-0103557 do not have any English explanation of relevance, such as if they are an allowances or rejections and why. Further, no copy has been submitted of the Office Action dated February 21, 2020 for application 15/960,055, the Office Action dated August 7, 2020 for application 15/960,055, Notice of Allowance dated January 1, 2021 for application 15/960,055, the Office Action dated April 14, 2023 for application 17/218,815 and Notice of Allowance dated September 29, 2023 for application 17/218,815. Therefore, these references have been crossed out and they have not been considered, however the other documents in the information disclosure statement are being considered by the examiner.
Claim Warning
Applicant is advised that should claim 1 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
(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.
Claims 1-4, 7, 12-13 and 17-20 are rejected under 35 U.S.C. 102(a)(1 & 2) as being anticipated by Hee et al. foreign patent document CN104635401, using US Patent Application Publication 2016/0161757 as an English translation.
Regarding claim 1 Hee discloses a lens actuating device (title e.g. figures 1-5 lens driving device 10) comprising: a base (e.g. base 12); a cover member (e.g. cover body 20) disposed on the base (e.g. see figure 1) and comprising an upper plate (e.g. upper wall 25) and a lateral plate (e.g. side walls 23); a bobbin (e.g. lens barrel 30) disposed in the cover member (e.g. see figure 2); a circuit board (e.g. flexible printed circuit board 50) disposed on the base (e.g. see figure 2) and comprising a second coil (e.g. coils 49); and a magnet (e.g. magnet 47) disposed in the cover member (e.g. see figure 2), wherein the base (e.g. 12) comprises first and second lateral surfaces opposite to each other (e.g. two opposite sides of 12 see figure 2), and third and fourth lateral surfaces opposite to each other (e.g. other two sides of 12 see figure 2), wherein the base (e.g. 12) comprises first and second protrusions protruding (e.g. two adjacent column 15 on left and front) from the first lateral surface (e.g. see figure 2 front left side), wherein the first and second protrusions are overlapped with the lateral plate of the cover member in an optical axis direction (e.g. see figures 1-2), wherein the circuit board (e.g. 50) comprises a first terminal portion (e.g. front left portion of 50 that projects downward) disposed on the first lateral surface of the base (e.g. see figures 1-2), wherein at least a portion of the first terminal portion is disposed between the first and second protrusions in a first direction perpendicular to the optical axis direction (e.g. see figure 2), and wherein at least a portion of the first terminal portion is disposed between the first lateral surface of the base and the lateral plate of the cover member in a second direction perpendicular to both the optical axis direction and the first direction (e.g. see figures 1-2).
Regarding claim 2 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further discloses wherein the circuit board (e.g. 50) comprises a body portion (e.g. portion above terminal portion) disposed on an upper surface of the base (e.g. see figure 2), and wherein the second coil (e.g. 49) is formed on the body portion of the circuit board as a pattern coil (e.g. paragraph [0022] “49 are wound on and supported by the flexible printed circuit board 50”).
Regarding claim 3 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further discloses wherein the circuit board (e.g. 50) comprises a second terminal portion disposed on the second lateral surface of the base (e.g. back right portion of 50 that projects downward).
Regarding claim 4 Hee discloses the lens actuating device of claim 3, as set forth above. Hee further discloses wherein the base (e.g. 12) comprises third and fourth protrusions (e.g. two adjacent column 15 on back and right) protruding from the second lateral surface (e.g. see figure 2), wherein the third and fourth protrusions are overlapped with the lateral plate of the cover member in the optical axis direction (e.g. see figure 2), and wherein at least a portion of the second terminal portion is disposed between the third and fourth protrusions in the first direction (e.g. see figure 2).
Regarding claim 7 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further discloses wherein, in the first direction, a width of at least a portion of the first terminal portion corresponds with a distance between the first and second protrusions (e.g. see figures 1-2).
Regarding claim 12 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further discloses wherein the terminal portion (e.g. front left portion of 50 that projects downward) comprises first and second fixation portions (e.g. left and right sides), and a plurality of terminals (e.g. small squares along bottom edge) formed of a conductive material (necessary for proper operations) and disposed between the first and second fixation portions (e.g. see figures 1-2).
Regarding claim 13 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further discloses wherein the first and second fixation portions are non-conductive (implicit given figures 1-2).
Regarding claim 17 Hee further discloses a camera module (paragraph [0001] “present invention is related to a type of lens module of camera”) comprising: the lens actuating device of claim 1 (as set forth above); and a lens module (paragraph [0001] “present invention is related to a type of lens module of camera”) coupled to the bobbin of the lens actuating device (inherent for proper operation).
Regarding claim 18 Hee further discloses an optical apparatus (paragraph [0017] “smartphones, laptop computers”), comprising: a main body (inherent element of smartphones and laptop computers); a display unit disposed on the main body (inherent element of smartphones and laptop computers); and the camera module of claim 17 disposed on the main body (paragraph [0017] “lens driving device 10 provided by the invention that can be applied in smartphones, laptop computers”).
Regarding claim 19 Hee discloses a lens actuating device (title e.g. figures 1-5 lens driving device 10), comprising: a base (e.g. 12); a cover member (e.g. 20) disposed on the base and comprising an upper plate (e.g. 25) and a lateral plate (e.g. 23); a bobbin (e.g. 30) disposed in the cover member; a housing (e.g. 40) disposed between the cover member and the bobbin (e.g. see figures 1-2); a circuit board (e.g. 50) disposed on the base and comprising a second coil (e.g. 49); and a magnet (e.g. 47) disposed in the cover member (e.g. see figures 1-2), wherein the base comprises first and second protrusions (e.g. left and front 15) protruding from an outer lateral surface (e.g. front left lateral surface of 12) of the base (e.g. 12), wherein the first and second protrusions (e.g. left and front 15) are overlapped with the lateral plate of the cover member (e.g. 23) in an optical axis direction (e.g. see figures 1-2), wherein the circuit board (e.g. 50) comprises a terminal portion (e.g. front left portion of 50 that projects downward) disposed on the outer lateral surface of the base (e.g. see figures 1-2), wherein at least a portion of the terminal portion is disposed between the first and second protrusions in a first direction perpendicular to the optical axis direction (e.g. see figures 1-2), and wherein at least a portion of the terminal portion is disposed between the outer lateral surface of the base and the lateral plate of the cover member in a second direction perpendicular to both the optical axis direction and the first direction (e.g. see figures 1-2).
Regarding claim 20 Hee discloses a lens actuating device (title e.g. figures 1-5 lens driving device 10), comprising: a base (e.g. 12); a cover member (e.g. 20) disposed on the base (e.g. see figure 1) and comprising an upper plate (e.g. 25) and a lateral plate (e.g. 23); a bobbin (e.g. 30) disposed in the cover member (e.g. see figures 1-2); a circuit board (e.g. 50) disposed on the base (e.g. see figure 2) and comprising a second coil (e.g. 49); and a magnet (e.g. 47) disposed in the cover member (e.g. see figures 1-2).
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.
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hee et al. foreign patent document CN104635401, using US Patent Application Publication 2016/0161757 as an English translation, in view of Jung et al. US Patent Application Publication 2016/0377881, of record.
Regarding claims 5-6 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further disclose wherein the terminal portion is fixed to the cover member (e.g. paragraph [0022] “50 is fixed on the inner side surface of the side wall 23”), as required by claim 6.
Hee is silent regarding the fixing means. Specifically, Hee does not disclose an adhesive, as required by claims 5-6. Further, Hee does not disclose an embodiment where the terminal portion is fixed to the base.
Jung teaches a similar lens actuating device (title, e.g. figure 1 lens actuating device 100) including a base (e.g. figure 13 base 213) and a circuit board (e.g. circuit board 250) with a terminal portion (e.g. portion with terminals 251) disposed on a lateral surface of the base (e.g. 215-1); and further teaches the circuit board is fixed in place by an adhesive (paragraph [0222] “by means of an adhesive”) for the purpose of securing the elements together (paragraph [0222]) and teaches an embodiment where the terminal portion is fixed to the base (paragraph [0222] “circuit board 250 … the base 210 … may be coupled … and may be secured to each other”). Applicant has not disclosed that securing the circuit board to the base solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the circuit board secured to the cover, as evidenced by both embodiments being claimed. Thus, it would have been an obvious matter of design choice to have the circuit board fixed to either the base or the cover. Further, there are a limited number of elements that the circuit board could be fixed to and it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. See KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007) and MPEP 2143. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the lens actuating device as disclosed by Hee to have the fixing means be an adhesive and/or the circuit board fixed to the base as taught by Jung for the purpose of securing the circuit board and since there are a limited number of elements that the circuit board could be fixed to and it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hee et al. foreign patent document CN104635401, using US Patent Application Publication 2016/0161757 as an English translation, in view of Ke US Patent Application Publication 2012/0300111, of record.
Regarding claim 8 Hee discloses the lens actuating device of claim 1, as set forth above. Hee further discloses comprising a housing (e.g. carrier 40) disposed (e.g. see figures 2 & 4) between the cover member (e.g. 20) and the bobbin (e.g. 30), wherein the housing (e.g. 40) comprises four lateral parts (e.g. see figure 2) and four corner parts (e.g. columns 41) disposed between the four lateral parts (e.g. see figure 2), and wherein the magnet (e.g. 47) comprises four magnets (e.g. see figure 2) disposed on the housing (e.g. see figure 2).
Hee does not disclose the magnets being disposed on the four corners.
Ke teaches a similar lens actuating device (title e.g. figure 1 voice coil motor/VCM 100) including a cover member (e.g. figure 2 outer shell 10) with a lateral side (e.g. side walls 11-14), a base (e.g. base 80) and four magnets (magnetic members 40); and further teaches the magnets being disposed on the four corners, respectively (paragraph [0016] “40 is attached to a corner 91 formed by two inner surfaces 111, 121 of two adjacent sidewalls 11, 12. Therefore, the four magnetic members 40 are directly secured to the outer shell 10” see figure 2) for the purpose of reducing the overall size of the device (paragraph [0016]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the lens actuating device as disclosed by Hee to have the magnets being disposed on the four corners as taught by Ke for the purpose of reducing the overall size of the device.
Regarding claim 9 Hee discloses the lens actuating device of claim 8, as set forth above. Hee further discloses, comprising: an upper spring (e.g. anti-shake spring 70) connecting an upper portion of the housing and the bobbin (e.g. see figure 2); a lower spring (e.g. lower spring 53) connecting a lower portion of the housing and bobbin (e.g. see figure 2); and a lateral spring (e.g. upper spring 60) electrically connecting the upper spring and the circuit board (paragraph [0023] “anti-shake spring 70 can be connected electrically with the upper spring 60 … 60 can be connected with end of the focusing coil 39 … flexible printed circuit board 50 and can supply power to the focusing coil 39”).
Regarding claim 10 Hee discloses the lens actuating device of claim 9, as set forth above. Hee further discloses wherein the upper spring (e.g. 70) comprises two upper springs (e.g. first plate spring 71 & second plate spring 91) electrically connected to a first coil (paragraph [0023] “anti-shake spring 70 can be connected electrically with the upper spring 60 … 60 can be connected with end of the focusing coil 39”) that is disposed at the bobbin (e.g. see figure 2).
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 9,977,219, claims 1-20 of U.S. Patent No. 10,996,425 and claims 1-20 of U.S. Patent No. 11,899,271. Although the claims at issue are not identical, they are not patentably distinct from each other because the devices claimed in ‘219, ‘425 & ‘271 the instant application are coextensive such that there exist devices which could simultaneously be claimed under both 219, ‘425 & ‘271 and the instant application. For example, 219, ‘425 & ‘271 and the instant application read on the lens actuating unit seen in figure 1. This would open the application to unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees.
Examiner’s Comments
Upon filing a terminal disclaimer claims 11 and 14-16 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: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Specifically, with respect to claim 11 none of the prior art either alone or in combination disclose or teach of the claimed lens actuating device specifically including, as the distinguishing features in combination with the other limitations, the housing comprises an adhesive introduction hole formed on the first part of the housing. For example, nearest art Hee has magnets (e.g. 49) fixed to a housing (e.g. 40), however Hee fails to disclose an adhesive or a hole for introducing said adhesive to affix said magnets to said housing.
Specifically, with respect to claim 14 none of the prior art either alone or in combination disclose or teach of the claimed lens actuating device specifically including, as the distinguishing features in combination with the other limitations, wherein the cover member comprises an extension portion downwardly extending from the lateral plate, and wherein the first and second fixation portions are fixed to the extension portion of the cover member by an adhesive. For example, nearest art Hee at least fails to disclose an adhesive or a connection at the specific location required.
Specifically, with respect to claim 15 (and its dependent 16) none of the prior art either alone or in combination disclose or teach of the claimed lens actuating device specifically including, as the distinguishing features in combination with the other limitations, wherein the base comprises a fixation protrusion protruding from a lower surface of the base, and wherein the first and second fixation portions are fixed to the fixation protrusion of the base by an adhesive. For example, nearest art Hee at least fails to disclose an adhesive or a connection at the specific location required. Further related art Jung has the base (e.g. 210) comprises a fixation protrusion protruding from a lower surface of the base (e.g. stepped portion 211), however fails to have the first and second fixation portions of the circuit board being fixed to the fixation protrusion of the base.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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/George G. King/Primary Examiner, Art Unit 2872 January 3, 2026