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 .
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/835, 726 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the removal of the limitations “a first field portion that has N poles and S poles alternately disposed along the optical axis direction” renders claims 1-12 as broadened and obvious variants of claims 1-9 of copending Application No. 18/835, 726 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 (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 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 1-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsurata (US 2011/0103782) in view of Fujinaka (US 2021/0356841).
Regarding claim 1, Tsurata discloses, a lens drive device (Figs. 1(a)-8), comprising:
a lens frame (12) configured to hold a lens driven (121) in an optical axis direction (Para. 0097, lines 11-14);
an n-phase coil (30s, t) that is provided to the lens frame, wherein n is an integer of 1 or more;
a plurality of magnets (17 and 240x, y) that are disposed opposite the n-phase coil (see annotated Figs. 5(b) and 8 below); and
a plurality of yokes (16, 18, 166, 167) in which the plurality of magnets are provided along the optical axis direction and that are disposed so as to sandwich the coil (see annotated Figs. 5(b) and 8 below), each yoke having a reinforcing portion (162, 166, 167, 197, 198) that is provided along a lengthwise direction (see annotated Figs. 5(b) and 8 below) and is configured to improve rigidity in the lengthwise direction.
Tsurata does not explicitly disclose the n-phase coil, where n is an integer of 2 or more.
Fujinaka teaches, from the same field of endeavor that in a lens drive unit that it would have been desirable to make the n-phase coil, where n is an integer of 2 or more.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the n-phase coil, where n is an integer of 2 or more as taught by the lens drive unit of Fujinaka in the lens drive unit of Tsurata since Fujinaka teaches it is known to include this feature in a lens drive unit for the purpose of providing a lens drive unit with enhanced thrust density, reduced magnetic saturation and enhanced performance.
Regarding claim 2, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the reinforcing portions are provided so as to extend along the optical axis direction in which the plurality of magnets are disposed (Para. 0162 and see 162, 166, 167, 197, 198).
Regarding claim 3, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the reinforcing portions each include a bent end portion (Para. 0162 and see 162, 166, 167, 197, 198) formed such that both ends in a width direction substantially perpendicular to the lengthwise direction of the yoke are bent along the lengthwise direction of the yoke (see annotated Figs. 5(b) and 8 below).
Regarding claim 4, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the bent end portion includes a first bent portion (167 and see 198 adjacent to 197) that is bent in a direction of a plane where the plurality of yokes are opposite each other (see Figs. 5(b) and 8), and a second bent portion (see 162 adjacent to 197 and 166) in which a distal end portion of the first bent portion is bent further outward (Figs. 5(b) and 8).
Regarding claim 5, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the plurality of magnets are attached between the first bent portions provided at ends of the yokes in the width direction (see annotated Figs. 5(b) and 8 below).
Regarding claim 7, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the yokes each include a center bent portion formed so as to bend an approximate center of the yoke in a width direction along the lengthwise direction of the yoke (see annotated Figs. 5(b) and 8 below).
Regarding claim 8, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the center bent portion is provided in right and left symmetry around a center in the width direction of the yoke (see 197).
Regarding claim 9, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the reinforcing portions each include a thick portion having a different thickness in a width direction of the yoke (see annotated Figs. 5(b) and 8 below).
Regarding claim 10, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the plurality of yokes each include a first yoke portion (162) that is disposed near the lens frame on an inner peripheral surface side, and a second yoke (198) that is disposed at a position facing the first yoke portion on an opposite side from the lens frame, and the thick portion includes a first thick portion that is provided along an outer shape of the lens frame at both ends in the width direction of the first yoke portion disposed near the lens frame, and is thicker than a center portion in the width direction (see annotated Figs. 5(b) and 8 below; note, the Examiner interprets the thickness to be in the width direction in the direction labeled “y” in the annotated Figs. 5(b) and 8 below).
Regarding claim 11, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, the thick portion includes a second thick portion that is thicker than the two ends in the width direction at a center portion in the width direction of a second yoke portion opposite the first yoke portion disposed near the lens frame (see annotated Figs. 5(b) and 8 below; note, the Examiner interprets the thickness to be in the width direction in the direction labeled “y” in the annotated Figs. 5(b) and 8 below).
Regarding claim 12, Tsurata in view of Fujinaka discloses and teaches as set forth above, and Tsurata further discloses, a lens barrel (Figs. 1(a)-8), comprising: the lens drive device according to claim 1 (see rejection of claim 1 above); and a substantially cylindrical housing portion (12, 12a, 12b) that contains the lens drive device (Para. 0106).
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Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tsurata (US 2011/0103782) in view of Fujinaka (US 2021/0356841) as applied to claim 1 above, and further in view of Lam et al. (US 2010/0142063).
Tsurata in view of Fujinaka remains as applied to claim 1 above.
Furthermore, Tsurata discloses the magnets are fixed to the yokes (see Figs. 5(b) and 8; note, the Examiner interprets that the Figs. of Tsurata shows that magnets 17 and 240x, y are bonded to yokes 16).
Tsurata in view of Fujinaka does not explicitly disclose the magnets are fixed to the yokes by an adhesive agent.
Lam teaches, from the same field of endeavor that in a lens drive device that it would have been desirable to make the magnets are fixed to the yokes by an adhesive agent (Para. 0020).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the magnets are fixed to the yokes by an adhesive agent as taught by the lens drive device of Lam in the combination of Tsurata in view of Fujinaka since Lam teaches it is known to include this feature in a lens drive device for the purpose of providing a lightweight and easy to manufacture lens driving device that is effectively and securely bonded.
Furthermore, In response to the limitations, an adhesive agent injected into a gap formed between end faces in the lengthwise direction and the bent end portions, the Examiner points out that while not objectionable, the Office reminds Applicant that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161 ; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. Note that applicant has the burden of proof in such cases, as the above case law makes clear. Thus, no patentable weight will be given to those process steps which do not add structural limitations to the final product.
Response to Arguments
Applicant’s arguments with respect to claims 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takizawa et al. (US 2004/0184166) and Kimura et al. (US 2015/0277229) discloses a lens drive device that includes a lens frame, an n-phase coil, a plurality of magnets and a plurality of yokes.
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 DAWAYNE A PINKNEY whose telephone number is (571)270-1305. The examiner can normally be reached M-F 9-5.
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, Pinping Sun can be reached at 571-270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 06/21/2026
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