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
Applicant's election with traverse of Species B in the reply filed on May 29, 2026 is acknowledged. The traversal is on the ground(s) that there is not sufficient evidence provided that the embodiments are patentably distinct from each other. This is not found persuasive because the species have a mutually exclusive configuration of the sensing and circuit assemblies, as set forth in the restriction requirement of May 29, 2026.
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 co-pending Application No. 18/925372 (US PGPUB 2025/0138390 A1) and claim 1 of co-pending Application No. 18/926495 (US PGPUB 2025/0138275 A1). 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.
Claims 7-20 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.
In regard to claim 7, the limitation, “the first fixed portion” lacks antecedent basis. For examination purposes, it is presumed, that the limitation is “a first fixed portion”.
Claims 8-20 depend from claim 7.
In regard to claim 9, the claim appears to be dependent on claim 10, which in turn is dependent on claim 9. For examination purposes, it is presumed claim 9 depends on claim 8.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al. (US 2020/0033557 A1).
In regard to claim 1, Huang et al. discloses an optical element driving mechanism 6-100 (denoted “driving mechanism”, see e.g. paragraph [0266] and Figure 71), comprising (see e.g. Figure 71):
a movable portion 6-30 (denoted “holder”, see e.g. paragraph [0266] and Figure 71) used for connecting an optical element (see e.g. paragraph [0268] for fixing optical element to holder);
a fixed portion 6-10, 6-20, 6-50 (denoted “outer case”, “base”, and “frame”, see e.g. paragraph [0266] and Figure 71), wherein the movable portion is movable relative to the fixed portion; and
a driving assembly 6-D1 (see e.g. paragraph [0266] and Figure 71) used for driving the movable portion 6-30 to move relative to the fixed portion 6-10, 6-20, 6-50 (see e.g. paragraph [0268] for driving).
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.
Claims 2-8 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2020/0033557 A1).
In regard to claim 2, Huang et al. discloses the limitations as applied to claim 1 above, and
a first resilient element 6-70 (see e.g. paragraph [0266], Figure 71) connected to the movable portion 6-30 and the fixed portion 6-10, 6-20, 6-50 (see e.g. paragraph [0269] for holder 6-30 suspended in frame 6-50 by resilient element 6-70) and used for electrically connecting the optical element driving mechanism and an optical module (The limitation “used for electrically connecting the optical element driving mechanism and an optical module” appears to be intended use. It is noted that the recitation of an intended use limitation must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In this case, the device of Huang et al. is capable of being electrically connecting the optical element driving mechanism and an optical module” and thus meets the limitations of the claim) ; and
a second resilient element 6-72 (see e.g. paragraph [0266] and Figure 71) disposed on the fixed portion 6-10, 6-20, 6-50 (see e.g. Figure 71);
wherein:
the first resilient element 6-70 and the second resilient element 6-72 are disposed on opposite sides of the movable portion 6-30 in a first direction (see e.g. Figure 71).
Huang et al. fails to disclose
a thickness of the first resilient element and a thickness of the second resilient element are different.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using a thickness of the first resilient element and a thickness of the second resilient element are different, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
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 Huang et al. with a thickness of the first resilient element and a thickness of the second resilient element are different.
Providing an optimized thickness of the resilient elements would allow for efficient spacing and sizing of the optical device.
In regard to claim 3, Huang et al. discloses the limitations as applied to claim 2 above, and
wherein: the movable portion 6-30 is in direct contact with the second resilient element 6-72 in a first state (see e.g. Figure 72);
the movable portion 6-30 is separated from the fixed portion 6-10, 6-20, 6-50 in the first state (see e.g. Figure 72);
the movable portion 6-30 is separated from the second resilient element 6-72 in a second state (see e.g. Figure 72 and note that if 6-30 is moved it will be spaced from 6-72).
In regard to claim 4, Huang et al. discloses the limitations as applied to claim 3 above, and
the fixed portion comprises a case 6-10 and a base 6-20 arranged along a main axis (see e.g. paragraph [0266] and Figure 71), and the main axis extends in the first direction (i.e. along the optical axis).
The embodiment of Figures 71-72 does not disclose
wherein: the thickness of the first resilient element is less than the thickness of the second resilient element.
the second resilient element comprises: a first base connecting portion connected to the base; a
first string portion connected to the first base connecting portion;
a second base connecting portion connected to the base; a second string portion connected to the second base connecting portion; and a
contact portion connected to the first string portion and the second string portion.
However, Huang et al. discloses in another embodiment
the second resilient element 1-110 (denoted “second elastic portion”, see e.g. paragraph [0160] and Figure 9) comprises:
a first base connecting portion 1-1101 (denoted “outer connecting portion” see e.g. paragraph [0160]) and Figure 9) connected to the base 1-112 (see e.g. Figures 2 and 9 and paragraphs [0138] and [0160] where it is noted that the 1-1101 is connected to a fixed assembly, which includes base 1-112);
a first string portion 1-1103 connected to the first base connecting portion 1-1101;
a second base 1-1101 connecting portion connected to the base 1-112 (see e.g. Figures 2 and 9 and note that there are a plurality of elements 1-1101, 1-1103);
a second string portion 1-1103 connected to the second base connecting portion 1-1101 (see e.g. Figures 2 and 9 and note that there are a plurality of elements 1-1101, 1-1103);
and
a contact portion 1-1102 (denoted “inner connecting portion”, see e.g. paragraph [0160] and Figure 9) connected to the first string portion 1-1103 and the second string portion 1-1103 (see e.g. Figure 9).
Further, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using the thickness of the first resilient element is less than the thickness of the second resilient element, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
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 embodiment of Figure 71 of Huang et al. with wherein: the thickness of the first resilient element is less than the thickness of the second resilient element. the second resilient element comprises: a first base connecting portion connected to the base; a first string portion connected to the first base connecting portion; a second base connecting portion connected to the base; a second string portion connected to the second base connecting portion; and a contact portion connected to the first string portion and the second string portion.
Providing the resilient member with the base, contact portions and strings would provide a means for connecting the device to the fixed assembly.
In regard to claim 5, Huang et al. discloses the limitations of claim 4 above in the embodiment of Figure 71, and
wherein: the base 6-20 is polygonal when viewed in the first direction (see e.g. Figure71).
Huang et al. further discloses in another embodiment (see e.g. Figures 2 and 9):
the first base connecting portion 1-1101 and the second base connecting 1-1101 portion are disposed on opposite sides of the base when viewed in the first direction (i.e. along the optical axis, see e.g. Figure 9).
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 Huang et al. with the first base connecting portion and the second base connecting portion are disposed on opposite sides of the base when viewed in the first direction.
Providing the connecting portions on opposite sides would allow for symmetric fixing of the members of the optical device, providing stability.
In regard to claim 6, Huang et al. discloses the limitations as applied to claim 5 above, and
wherein:
the driving assembly comprises:
a driving magnetic element 6-60, 6-62 (denoted “first magnetic elements” and “second magnetic elements”, see e.g. paragraph [0266], Figure 71) comprising a first driving magnetic unit 6-60, 6-62 and a second driving magnetic 6-60, 6-62 unit arranged in the first direction and contacting each other in an interface (i.e. in contact via at least 6-50, see e.g. Figure 72); and
a driving coil 6-40 (see e.g. paragraph [0266] and Figure 71) corresponding to the driving magnetic element 6-60, 6-62;
the driving magnetic 6-60, 6-62 element is disposed on the fixed portion (i.e. at least on 6-50) (see e.g. Figure 72);
the driving coil 6-40 is disposed on the movable portion 6-30 (see e.g. Figure 72);
the driving coil 6-40 at least partially overlaps the interface (see e.g. Figure 72 where 6-40 at least overlaps 6-50) when viewed in a second direction perpendicular to the first direction in the first state;
the driving coil 6-40 at least partially overlaps the interface (see e.g. Figure 72 where 6-40 will still at least overlaps 6-50 after moving) when viewed in the second direction in the second state.
In regard to claim 7, Huang et al. discloses the limitations as applied to claim 6 above, and
wherein: a first fixed portion 6-50 (denoted “frame”, see e.g. paragraph [0266]) comprises a first side, a second side, a third side, and a fourth side when viewed in the first direction (see e.g. Figure 71 where 6-50 has at least 4 sides);
the driving assembly 6-D1 is disposed on the first side, the second side, the third side, and the fourth side (see e.g. Figure 71 where portions of the driving assembly are on all sides of 6-50);
the first side and the third side are opposite (see e.g. Figure 71 where there are at least two sets of opposite sides);
the second side and the fourth side are opposite (see e.g. Figure 71 where there are at least two sets of opposite sides).
The embodiment of Figures 71-71 of Huang et al. fails to explicitly disclose
the contact portion is disposed on the first side, the second side, the third side, and the fourth side when viewed in the first direction.
However, in the embodiment of Figures 2 and 9, Huang et al. discloses
the contact portion 1-1102 is disposed on the first side, the second side, the third side, and the fourth side when viewed in the first direction (see e.g. Figure 8 where a contact portion 1-1102 is on each of four sides).
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 Huang et al. with the contact portion is disposed on the first side, the second side, the third side, and the fourth side when viewed in the first direction.
Doing so would provide a symmetrical placement of the contact portions, resulting in a more mechanically stable device.
In regard to claim 8, Huang et al. discloses the limitations as applied to claim 7 above.
The embodiment of Figures 71-72 of Huang et al. does not explicitly disclose
a first guiding rod disposed on the fixed portion; and
a second guiding rod disposed on the fixed portion;
wherein:
the fixed portion further comprising a fifth side, a sixth side, a seventh side, and an eighth side; the fifth side is between the first side and the second side;
the sixth side is between the second side and the third side; the seventh side is between the third side and the fourth side;
the eighth side is between the fourth side and the first side; the first base connecting portion is disposed on the sixth side;
the second base connecting portion is disposed on the eighth side; the first string portion is disposed on the sixth side;
the second string portion is disposed on the eighth side.
However, Huang et al. does disclose in the embodiment of Figures 50-56
a first guiding rod 5-58 (denoted “positioning columns”, see e.g. Figure 56) disposed on the fixed portion 5-50 (denoted “frame”, see e.g. paragraph [0262] and Figures 50 and 56); and
a second guiding rod 5-58 (denoted “positioning columns”, see e.g. Figure 56) disposed on the fixed portion 5-50 (see e.g. Figure 56);
wherein:
the fixed portion 5-50 further comprising a fifth side, a sixth side, a seventh side, and an eighth side (i.e. the corner regions between each of the main first-fourth sides, see e.g. Figure 56);
the fifth side is between the first side and the second side (see e.g. Figure 56);
the sixth side is between the second side and the third side (see e.g. Figure 56);
the seventh side is between the third side and the fourth side (see e.g. Figure 56);
the eighth side is between the fourth side and the first side (see e.g. Figure 56);
the first base connecting portion is disposed on the sixth side (see e.g. Figure 50 where a portion of 5-72 is located on one of the corner sides);
the second base connecting portion is disposed on the eighth side (see e.g. Figure 50 where a portion of 5-72 is located on one of the corner sides);
the first string portion is disposed on the sixth side (see e.g. Figure 59 where string portions of 5-72 are in corner regions);
the second string portion is disposed on the eighth side (see e.g. Figure 59 where string portions of 5-72 are in corner regions).
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 Huang et al. with a first guiding rod disposed on the fixed portion; and a second guiding rod disposed on the fixed portion; wherein:
the fixed portion further comprising a fifth side, a sixth side, a seventh side, and an eighth side; the fifth side is between the first side and the second side; the sixth side is between the second side and the third side; the seventh side is between the third side and the fourth side; the eighth side is between the fourth side and the first side; the first base connecting portion is disposed on the sixth side; the second base connecting portion is disposed on the eighth side; the first string portion is disposed on the sixth side; the second string portion is disposed on the eighth side.
Doing so would provide a means for aligning the various components of the device.
Allowable Subject Matter
Claims 9-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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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