DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s preliminary dated 11/03/2023 has been received and entered. Claims 1-20 are now pending in the application.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
(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 1-5 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Hu et al., US 2021/0132328 A1.
Claim 1 is anticipated by Hu et al. figures 1-3 and accompanying text which discloses an optical system comprising:
. a fixed part 50 having an opening (rectangular hollow), wherein a light would pass through the opening (Z-direction)
. a movable part 40 movable relative to the fixed part ([0024]) and connected to a first optical element ([0022])
. a driving assembly C1, M1
. wherein the first optical element at least partially overlaps the opening when the movable part is in a first position (e.g., disposed in the holder 40, [0022])
. wherein the first optical element further inherently including a first optical element surface and facing the incident light through the opening.
Re claim 2, wherein the first optical element does not overlap the opening when the movable part is in a second position (fig. 2).
It is noted that since there is no particularly position for the first and/or second position, any position overlap and non-overlap would be considered as first and second position, respectively.
Re claim 3, wherein the driving assembly comprises a driving coil C1 and a magnetic element M1, wherein a magnetic element surface of the magnetic element faces the driving coil, and the magnetic element surface is parallel to the traveling direction of the light, e.g., Z-direction (fig. 1).
Re claim 4, wherein the driving assembly further comprises a magnetic conductive element 31, 32 corresponding to the magnetic element to generate an attraction force, wherein the magnetic conductive element is fixed on the fixed part, the magnetic conductive element is in contact with the driving coil, and the magnetic conductive element is in an L shape, wherein the magnetic conductive element at least partially overlaps the magnetic element when viewed along the traveling direction of the light (figs. 1, 12, [0024]).
Re claim 5, Hu et al. further disclose a supporting assembly S1, S2 disposed between the fixed part and the movable part, wherein the supporting assembly comprises a first supporting element S1 and the first supporting element abuts the fixed part and the movable part (fig. 1).
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 of copending Application No. 18/501,404. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose a same optical system with a fixed part, a movable part and a driving assembly as claimed.
Application No. 18/501,787
Application No. 18/501,404
Claim 1
Claim 1
Claim 2
Claim 1
Claim 3
Claim 2
It should be noted that the copending application limitation of “light passes through the fixed part opening” would meet the claimed of “the first optical element surface faces the light” since the optical element, e.g., lens and the lens would have a surface and disposes in the opening, so as the lens surface would be faces to the incident light .
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 6-20 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUNG T NGUYEN whose telephone number is (571)272-2297. The examiner can normally be reached 8:00 - 5:00.
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/DUNG T NGUYEN/Primary Examiner, Art Unit 2871