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 .
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.
Election/Restrictions
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 17, 2026.
Applicant's election with traverse of Species B in the reply filed on February 17, 2026 is acknowledged. The traversal is on the ground(s) that there is no burden to examine the species together. This is not found persuasive because the species recite the mutually exclusive characteristics of e such species, such as the configuration of the circuit components and the frame and are not obvious variants of each other based on the current record.
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/925372, (US 2025/0138390 A1) (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1 and 20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 and 2 of copending Application No. 18/400670, (US 2024/0219677 A1) (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Claim 20 is 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.
Claim 20 recites the limitation "the outer member" in line 9. There is insufficient antecedent basis for this limitation in the claim. For examination purposes it is presumed the limitation should be “the outer elastic member”.
Claim Rejections - 35 USC § 102
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, 13-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsu et al. (US 2021/0223504 A1).
In regard to claim 1, Hsu et al. discloses an optical member driving mechanism, 3-1000 (denoted “optical system”, see e.g. paragraph [0275] and Figure 21) comprising (see e.g. Figure 21):
a movable portion 3-M1 (denoted “first movable part”, see e.g. paragraph [0279] and Figure 21), configured to connect an optical member 3-1 (see e.g. paragraph [0276] and Figure 19);
a fixed portion 3-I (denoted “immovable part”, see e.g. paragraph [0280] and Figure 21), wherein the movable portion 3-M1 is movable relative to the fixed portion 3-I; and
a driving assembly 3-C1, 3-D1 (see e.g. paragraph [0279]), configured to drive the movable portion 3-M1 to move relative to the fixed portion 3-I (see e.g. paragraph [0329]).
In regard to claim 2, Hsu et al. discloses the limitations as applied to claim 1 above, and
wherein the driving assembly 3-C1, 3-D1 comprises a first circuit component 3-30 (denoted “second circuit assembly”, see e.g. paragraph [0280] and Figures 21, 24) and a second circuit component 3-32 (denoted “fixing end”, see e.g. paragraph [0294] and Figures 21, 24), the first circuit component 3-30 has an annular structure (see e.g. Figure 24), and the second circuit component 3-20 is connected to the first circuit component 3-30 (see e.g. Figure 24), wherein an included angle is formed between the first circuit component 3-30 and the second circuit component 3-32, and the included angle is greater than 0 degrees and less than 180 degrees (see e.g. Figure 24 and note that 3-20 and 3-32 are substantially perpendicular and thus meet the limitation).
In regard to claim 3, Hsu et al. discloses the limitations as applied to claim 2 and
wherein the movable portion 3-M1 comprises a holder 3-70 (see e.g. paragraph [0280] and Figure 21), and the driving assembly 3-C1, 3-D1 comprises a first electromagnetic driving member 3-111 (see e.g. paragraph [0280], Figures 21 and 30), a second electromagnetic driving member 3-111 (see e.g. paragraph [0280], Figures 21 and 30), and a third electromagnetic driving member 3-121 (see e.g. paragraph [0280], Figures 21 and 30) that are disposed on different sides (see e.g. Figure 30), wherein the holder 3-70 is disposed between the third electromagnetic driving member 3-121 and the second circuit component 3-32, and a thickness of the third electromagnetic driving member 3-121 along an optical axis of the optical member is less than a thickness of the first electromagnetic driving member 3-111 along the optical axis (see e.g. Figures 21, 30).
In regard to claim 4, Hsu et al. discloses the limitations as applied to claim 3 above, and
wherein the thickness of the third electromagnetic driving member 3-121 along the optical axis is less than a thickness of the second electromagnetic driving member 3-111 along the optical axis (see e.g. Figures 21 and 30).
In regard to claim 13, Hsu et al. discloses the limitations as applied to claim 2 above, and
wherein the first circuit component 3-30 and the second circuit component 3-32 are integrally formed as one piece (see e.g. Figure 24).
In regard to claim 14, Hsu et al. discloses the limitations as applied to claim 13 above, and
wherein the movable portion 3-M1 comprises a frame 3-80 (see e.g. Figures 21, 34 and paragraph [0280]), the first circuit component 3-30 and the second circuit component 3-32 are disposed on the frame 3-80, and a gap is formed between the frame 3-80 and a connection point of the first circuit component 3-30 and the second circuit component 3-32 (see e.g. Figure 34).
In regard to claim 15, Hsu et al. discloses the limitations as applied to claim 2 above, and
wherein the movable portion 3-M1 comprises a frame 3-80 (see e.g. Figures 21, 34 and paragraph [0280]), the frame 3-80 has a recess, and the second circuit component 3-32 is accommodated in the recess and exposed from an opening of the recess (see e.g. Figures 28, 34-35 where 3-32 is accommodated in the opening of 3-84).
In regard to claim 16, Hsu et al. discloses the limitations as applied to claim 15 above, and
wherein the opening is located at an upper surface of the frame 3-80 (see e.g. Figures 28, 34-35 where 3-32 is accommodated in the opening of 3-84).
In regard to claim 17, Hsu et al. discloses the limitations as applied to claim 15 above, and
wherein the frame 3-80 has at least one positioning portion protruding 3-831 from an inner wall of the recess (see e.g. Figure 28).
In regard to claim 20, Hsu et al. discloses the limitations as applied to claim 1 above, and
wherein the movable portion 3-M1 includes a holder 3-70 (see e.g. paragraph [0280] and Figure 21) and a frame a frame 3-80 (see e.g. Figures 21, 34 and paragraph [0280]), and the driving assembly 3-C1, 3-D1 (see e.g. paragraph [0279]) comprises:
a first circuit component 3-30 (denoted “second circuit assembly”, see e.g. paragraph [0280] and Figures 21, 24);
a second circuit component 3-32 (denoted “fixing end”, see e.g. paragraph [0294] and Figures 21, 24), disposed on the frame and connected to the first circuit component;
a control member 3-31 (see e.g. paragraph [0294] and Figure 36), disposed on the second circuit component 3-32 (see e.g. paragraph [0036]);
an inner elastic member 3-90 (see e.g. paragraph [0280]), connected to the holder 3-70 and the frame 3-80;
an outer elastic member 3-60 (see e.g. paragraph [0280]), connected to the frame 3-80 (see e.g. Figure 31);
a supporting member 3-50, connected to the outer member 3-60 and the fixed portion 3-I (see e.g. Figure 21);
a first electromagnetic driving element 3-122 (see e.g. Figure 30 and paragraph [0335]), disposed on the holder 3-70, wherein the control member 3-31 is electrically connected to the first electromagnetic driving element 3-122 through the second circuit component 3-32, the first circuit component 3-30, and the inner elastic member 3-90 in sequence; and
a circuit assembly 3-22 (see e.g. paragraph [0294] and Figure 35), embedded in the fixed portion 3-I, wherein the control member 3-31 is electrically connected to the circuit assembly 3-22 through the second circuit component 3-32, the first circuit component 3-30, the outer elastic member 3-60, and the supporting member 3-50 in sequence (see e.g. Figure 35).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US 2021/0223504 A1) in view of Kuo et al. (US 2019/0227256 A1).
In regard to claim 5, Hsu et al. discloses the limitations as applied to claim 3 above, and
wherein the movable portion 3-M1 comprises a frame 3-80 (see e.g. Figures 21, 34 and paragraph [0280]).
Hsu et al. fails to disclose
the driving assembly comprises a magnetically permeable member embedded in the frame.
However, Kuo et al. discloses
the driving assembly comprises a magnetically permeable member 22-52 embedded in the frame 22-30 (see e.g. paragraphs [1099]-[1100] and Figure 339).
Given the teachings of Kuo et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hsu et al. with the driving assembly comprises a magnetically permeable member embedded in the frame.
Providing the embedded magnetically permeable plate would allow the generated magnetic fields to be concentrated (see e.g. paragraph [1089] of Kuo et al.).
Given the teachings of Kuo et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hsu et al. with wherein the magnetically permeable member comprises a first plate portion, a second plate portion, and a third plate portion, the first plate portion is disposed between the first electromagnetic driving member and the frame, the second plate portion is disposed between the second electromagnetic driving member and the frame, and the third plate portion is disposed between the third electromagnetic driving member and the frame.
Providing the embedded magnetically permeable plate would allow the generated magnetic fields to be concentrated (see e.g. paragraph [1089] of Kuo et al.).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US 2021/0223504 A1) in view of Kuo et al. (US 2019/0227256 A1) and further in view of Hu et al. (US 2021/0109305 A1).
In regard to claim 10, Hsu et al., in view of Kuo et al., fails to disclose
wherein when viewed along the optical axis, the magnetically permeable member forms an enclosed region.
However, Hu et al. discloses (see e.g. Figure 2):
wherein when viewed along the optical axis, the magnetically permeable member 800 forms an enclosed region (see e.g. paragraph [0059]).
Given the teachings of Hu et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hsu et al., in view of Kuo et al., with wherein when viewed along the optical axis, the magnetically permeable member forms an enclosed region.
Providing an integrally formed member would allow for easier alignment in manufacturing.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US 2021/0223504 A1) in view of Hu et al. (US 2018/0003920 A1), hereinafter Hu ‘920.
In regard to claim 18, Hsu et al. discloses the limitations as applied to claim 2 above, and
wherein the movable portion 3-M1 comprises a frame 3-80 (see e.g. Figures 21, 34 and paragraph [0280]).
Hsu et al. fails to disclose
the frame has a positioning portion protruding from an upper surface of the frame, wherein a surface of the positioning portion facing the first circuit component corresponds to an appearance of the first circuit component.
However, Hu ‘920 discloses (see e.g. Figures 2-3):
the frame 20 has a positioning portion protruding from an upper surface of the frame 20 (see e.g. Figure 3 where the positioning portion is a portion of 20 protrudes upward), wherein a surface of the positioning portion facing the first circuit component 80 (see e.g. paragraph [0045] for driver) corresponds to an appearance of the first circuit component (see e.g. Figures 2-3).
Given the teachings of Hu ‘920, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hsu et al. with the frame has a positioning portion protruding from an upper surface of the frame, wherein a surface of the positioning portion facing the first circuit component corresponds to an appearance of the first circuit component.
Providing a positioning portion would prevent unwanted movement of the circuit components.
Allowable Subject Matter
Claims 6-9 and 19 are 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.
In regard to dependent claims 6-9, the closest prior art references fail to disclose “wherein the magnetically permeable member comprises a first plate portion, a second plate portion, and a third plate portion, the first plate portion is disposed between the first electromagnetic driving member and the frame, the second plate portion is disposed between the second electromagnetic driving member and the frame, and the third plate portion is disposed between the third electromagnetic driving member and the frame.”
In regard to dependent claim 19, the closest prior art references fail to disclose “wherein the driving assembly further comprises a control member and a magnetic shield member, the control member and the magnetic shield member are disposed on the second circuit component, and the second circuit component is disposed between the control member and the magnetic shield member, wherein dimensions of the magnetic shield member are greater than dimensions of the control member, and when viewed along a direction that is perpendicular to an optical axis of the optical member, the magnetic shield member covers the control member.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA M MERLIN whose telephone number is (571)270-3207. The examiner can normally be reached Monday-Thursday 7:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth can be reached at (571) 272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M MERLIN/Primary Examiner, Art Unit 2871
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