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 .
Information Disclosure Statement
Acknowledgement is made of receipt of Information Disclosure Statement(s) (PTO-1449) filed 02/04/2025 and 04/17/2025. An initialed copy is attached to this Office Action.
Response to Amendment
The amendment to Claim(s) 10, the cancelation of Claims 12, 13, 16-20, and the addition of Claims 21-29, filed 10/20/2023, are acknowledged and accepted.
Claim Objections
The second set of claims filed 10/20/2023 stated 11-20 were canceled from the prior set of claims filed 10/20/2023. This is incorrect as claims 11, 14, 15 did not exist in the prior set of claims.
Claim 30 is also objected to for depending from canceled Claim 19. However, it appears that applicant intended it to depend from claim 29. For examination purposes Claim 30 will be treated as depending from Claim 29.
Appropriate correction is required.
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 Claim 1 of copending Application No. 18/495,400 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 in Application 18/496,829 discloses all of the limitations of Claim 1 in Application 18/495,400.
Application 18/491,088
Application 18/495,400
Claim 1:
An optical element driving mechanism, comprising:
a movable portion used for connecting an optical element;
a fixed portion, wherein the movable portion is movable relative to the fixed portion; and
a driving assembly (5-D, Figure 48) used for driving the movable portion to move relative to the fixed portion.
Claim 1:
An optical element driving mechanism for accommodating a first optical element and comprising:
a movable part, configured to be connected to a second optical element, wherein the second optical element corresponds to the first optical element, and the movable part is movable relative to the fixed assembly; and
a fixed assembly: wherein the fixed assembly includes a first accommodating space configured to accommodate the first optical element
a driving assembly (5-D, Figure 48), configured to drive the movable part to move relative to the fixed assembly;
.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of copending Application No. 18/495,102 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 in Application 18/496,829 discloses all of the limitations of Claim 1 in Application 18/495,102.
Application 18/491,088
Application 18/495,102
Claim 1:
An optical element driving mechanism, comprising:
a movable portion used for connecting an optical element;
a fixed portion, wherein the movable portion is movable relative to the fixed portion; and
a driving assembly (5-D, Figure 48) used for driving the movable portion to move relative to the fixed portion.
Claim 1:
An optical element driving mechanism for accommodating a first optical element and comprising:
a fixed assembly:
a movable part, configured to be connected to a second optical element, wherein the second optical element corresponds to the first optical element, and the movable part is movable relative to the fixed assembly; and
a driving assembly (5-D, Figure 48), configured to drive the movable part to move relative to the fixed assembly;
wherein the fixed assembly includes a first accommodating space configured to accommodate the first optical element.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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)(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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ho et al., (hereafter Ho) (US 2020/0249424A1).
With respect to Claim 1, Park discloses an optical driving mechanism, comprising: a movable portion (5-M, Figure 47) used for connecting an optical element (not shown, ¶[0154]); a fixed portion (5-M, Figure 48), wherein the movable portion (5-M, Figure 47) is movable relative to the fixed portion (5-M, Figure 48); and a driving assembly (5-D, Figure 48) used for driving the movable portion (5-M, Figure 47) to move relative to the fixed portion (5-M, Figure 48).
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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 2-5 is/are rejected under 35 U.S.C. 103 as being obvious over Ho (US 2020/0249424A1).
With respect to Claim 2, Fifth Embodiment of Ho teaches the optical element driving mechanism as claimed in claim 1, further comprising: a first magnetic permeable element (first accommodating element 5-22A, Figure 49, may include magnetic permeable material, ¶[0178]) disposed on the fixed portion (5-M, Figure 48); a second magnetic permeable element (5-24A, Figure 49) disposed on the fixed portion (5-M, Figure 48); a third magnetic element (5-42B, Figure 53) disposed on the movable portion (5-M, Figure 47); a fourth magnetic element (5-44B, Figure 53) disposed on the movable portion (5-M, Figure 47); and a guiding assembly disposed on the fixed portion (5-M, Figure 48), comprising: a first guiding element (one of 5-26, Figure 55) disposed on the fixed portion (5-M, Figure 48); and a second guiding element (one of 5-26, Figure 55) disposed on the fixed portion (5-M, Figure 48).
Fifth Embodiment of Ho fails to teach a third magnetic permeable element disposed on the fixed portion.
Alternate Fifth Embodiment of Ho teaches a third magnetic permeable element (some embodiments, additional magnetic permeable elements (not shown) may be disposed at the side of the magnetic element, ¶[0179]) disposed on the fixed portion (5-M, Figure 48).
Therefore it would have been obvious to one skilled in the art before the effective date of the invention to modify the teachings of the Fifth Embodiment of Ho having the optical element driving mechanism with the teachings of the Alternate Fifth Embodiment of Ho having the third magnetic permeable element for the purpose of the prevention of the magnetic elements being attracted out from other elements, ¶[0179].
With respect to Claim 3, Fifth Embodiment of Ho teaches the optical element driving mechanism as claimed in claim 2, wherein the driving assembly (5-D, Figure 48) comprises: a first magnetic element (5-42A, Figure 53) disposed on the movable portion (5-M, Figure 47); a second magnetic element (5-44A, Figure 53) disposed on the movable portion (5-M, Figure 47); and the fixed portion (5-M, Figure 48) corresponding to the second magnetic element (5-44A, Figure 53).
Fifth Embodiment of Ho fails to teach a first driving coil and a second driving coil.
Alternate Fifth Embodiment of Ho teaches a first driving coil and a second driving coil (¶[0160]).
Therefore it would have been obvious to one skilled in the art before the effective date of the invention to modify the teachings of the Fifth Embodiment of Ho having the optical element driving mechanism with the teachings of the Alternate Fifth Embodiment of Ho having the first driving coil disposed on the fixed portion and corresponding to the first magnetic element and the second driving coil for the purpose of reducing the design difficulty, ¶[0174].
With respect to Claim 4, Fifth Embodiment of Ho teaches the optical element driving mechanism as claimed in claim 3, wherein: the first magnetic element (5-42A, Figure 53) corresponds to the first guiding element (one of 5-26, Figure 55); the second magnetic element (5-44A, Figure 53) corresponds to the second guiding element (one of 5-26, Figure 55); the first magnetic element (5-42A, Figure 53) corresponds to the first magnetic permeable element (5-22A, Figure 49); the third magnetic element (5-42B, Figure 53) corresponds to the second magnetic permeable element (5-24A, Figure 49).
Fifth Embodiment of Ho fails to teach a third magnetic permeable element disposed on the fixed portion.
Alternate Fifth Embodiment of Ho teaches a third magnetic permeable element (some embodiments, additional magnetic permeable elements (not shown) may be disposed at the side of the magnetic element, ¶[0179]) disposed on the fixed portion (5-M, Figure 48).
Therefore it would have been obvious to one skilled in the art before the effective date of the invention to modify the teachings of the Fifth Embodiment of Ho having the optical element driving mechanism with the teachings of the Alternate Fifth Embodiment of Ho having the third magnetic permeable element and having the fourth magnetic element correspond to the third magnetic permeable element for the purpose of the prevention of the magnetic elements being attracted out from other elements, ¶[0179].
With respect to Claim 5, Fifth Embodiment of Ho teaches the optical element driving mechanism as claimed in claim 4, wherein: the first magnetic element (5-42A, Figure 53) and the first guiding element (one of 5-26, Figure 55) generates a first force to the movable portion (5-M, Figure 47); the second magnetic element (5-44A, Figure 53) and the second guiding element (one of 5-26, Figure 55) generates a second force to the movable portion (5-M, Figure 47); the first magnetic element (5-42A, Figure 53) and the first magnetic permeable element (5-22A, Figure 49) generates a third force to the movable portion (5-M, Figure 47); the third magnetic element (5-42B, Figure 53) and the second magnetic permeable element (5-24A, Figure 49) generates a fourth force to the movable portion (5-M, Figure 47); the fourth magnetic element (5-44B, Figure 53).
Fifth Embodiment of Ho fails to teach a third magnetic permeable element disposed on the fixed portion.
Alternate Fifth Embodiment of Ho teaches a third magnetic permeable element (some embodiments, additional magnetic permeable elements (not shown) may be disposed at the side of the magnetic element, ¶[0179]) disposed on the fixed portion (5-M, Figure 48).
Therefore it would have been obvious to one skilled in the art before the effective date of the invention to modify the teachings of the Fifth Embodiment of Ho having the optical element driving mechanism with the teachings of the Alternate Fifth Embodiment of Ho having the third magnetic permeable element and having the third magnetic permeable element generate a fifth force to the movable portion for the purpose of the prevention of the magnetic elements being attracted out from other elements, ¶[0179].
Allowable Subject Matter
Claims 6-10 and 21-29 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.
With respect to Claim 6, the prior art fails to teach “wherein: the first force, the second force, the third force, the fourth force, and the fifth force generates a resultant force to the movable portion; the resultant force is greater than zero in a first direction; the resultant force is greater than zero in a second direction; the first direction and the second direction are perpendicular; a direction of the first force is not parallel and not perpendicular to the first direction; the direction of the first force is not parallel and not perpendicular to the second direction; a direction of the second force is not parallel and not perpendicular to the first direction; the direction of the second force is not parallel and not perpendicular to the second direction.”
With respect to claims 7-10 and 21-29, these claims depend on claim 6 and are allowable at least for the reasons stated supra.
Claim 30 is 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.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMARA Y WASHINGTON whose telephone number is (571)270-3887. The examiner can normally be reached Mon-Thur 730-530 EST.
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/TYW/Patent Examiner, Art Unit 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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