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
The information disclosure statement (IDS) submitted on 06/21/2024 has been considered by the Examiner and made of record in the application file.
Specification
The disclosure is objected to because of the following informalities:
In ¶0047, the top portion of the frame is designated as “H1”, however elsewhere in the specification (such as ¶0064) and in the drawings, it appears to be “F1”.
In ¶0068, the holder is designated as “40”, however, elsewhere in the specification (such as later in the same paragraph) and in the drawings, it appears to be “LH”.
Appropriate correction is required.
Claim Objections
Claim 12 is objected to because of the following informalities: Examiner suggests "the driving assembly includes a coil". Appropriate correction is required.
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 holder" in the last line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the examiner will assume “the holder” as “the movable part”.
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(s) 1-4 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weng et al. (US 20210029274 A1), hereinafter Weng.
Regarding independent claim 1, Weng discloses a driving mechanism for moving an optical element (¶0004), comprising: a fixed part (16-F; Fig. 2; ¶0025); a movable part (16-130; Fig. 2; ¶0025), movably connected to the fixed part (16-F) (Fig. 1; ¶0025), wherein the optical element is disposed on the movable part (16-130) and has an optical axis (Fig. 2; ¶0026); and a driving assembly (16-140; Fig. 2; ¶0025), configured to drive the movable part (16-130) to move relative to the fixed part (16-F) (Fig. 2; ¶0025-¶0026).
Regarding claim 2, Weng discloses the driving mechanism as claimed in claim 1, as set forth above. Weng further discloses a frame (16-150; Fig. 2; ¶0025), wherein the fixed part (16-F) has a base (16-120; Fig. 2; ¶0025) and a housing (16-110; Fig. 2; ¶0025) connected to each other (Fig. 2; ¶0025-¶0026), the frame (16-150) is affixed in the housing (16-110) (Fig. 2; ¶0026), and the movable part (16-130) is received in the frame (16-150) (Fig. 2; ¶0025-¶0026), wherein when the movable part (16-130) moves relative to the fixed part (16-F) along the optical axis to a limit position (Fig. 2; ¶0026), the movable part (16-130) contacts the frame (16-150) to prevent from collision with the housing (16-110) (inherent given structure; Fig. 2; ¶0025-¶0026).
Regarding claim 3, Weng discloses the driving mechanism as claimed in claim 2, as set forth above. Weng further discloses the frame (16-150) has a top portion (Fig. 2) and a plurality of extending portions extending from the top portion toward the base (16-120) (Fig. 2), and when the movable part (16-130) moves relative to the fixed part (16-F) to the limit position along the optical axis (Fig. 2; ¶0025-¶0026), the movable part (16-130) contacts the top portion of the frame (16-150) (Fig. 2; ¶0025-¶0026).
Regarding claim 4, Weng discloses the driving mechanism as claimed in claim 3, as set forth above. Weng further discloses the driving assembly (16-140) includes a coil (16-141; Fig. 2; ¶0027) disposed on the movable part (16-130) (Fig. 2; ¶0027) and a magnetic element (16-142; Fig. 2; ¶0027) disposed between the extending portions (Fig. 2).
Regarding claim 21, Weng discloses the driving mechanism as claimed in claim 2, as set forth above. Weng further discloses the housing (16-110) has an opening (Fig. 2), and the frame (16-150) has a hole that is larger than the opening (Fig. 2), wherein the optical axis passes through the opening and the hole (Fig. 2).
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(s) 5-7 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Weng (US 20210029274 A1) in view of Cheng et al. (US 20200213493 A1), hereinafter Cheng.
Regarding claim 5, Weng discloses the driving mechanism as claimed in claim 3, as set forth above. Weng further discloses a first circuit board (16-170; Fig. 2; ¶0025). Weng does not disclose at least a first conductive member, the first circuit board is disposed on the frame, and the first conductive member is embedded in the top portion of the frame and electrically connected to the first circuit board.
However, Cheng teaches a similar driving mechanism comprising a fixed part (2-FA; Fig. 17) comprising a frame (2-104; Fig. 17), a movable part (1-MA; Fig. 2), and a driving assembly (2-DM; Fig. 17) (¶0087-¶0088), and further comprising a first circuit board (2-1141; Fig. 29; ¶0129) and a first conductive member (2-1061 – 2-1064, 2-1101 – 2-1104; Fig. 29; ¶0129), wherein the first conductive member (2-1061 – 2-1064, 2-1101 – 2-1104) is electrically connected to the first circuit board (2-1141) (Fig. 29; ¶0129).
Further, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950), see MPEP 2144.04. Moving the circuit board in Weng to be disposed on the frame would make no functional difference. If the circuit board is disposed on the frame, it would further follow to incorporate the conductive members of Cheng in the frame for the purpose of supplying power through the frame.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Weng to incorporate the conductive members of Cheng and dispose the circuit board on the frame for the purpose of supplying power to elements through the frame and making the system compact and since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art.
Regarding claim 6, Weng in view of Cheng discloses the driving mechanism as claimed in claim 5, as set forth above. Weng further discloses a magnet (16-182; Fig. 2; ¶0031) and a magnetic field sensor (16-181; Fig. 2; ¶0031), the magnet (16-182) is disposed on the movable part (16-130) (Fig. 2; ¶0031), and the magnetic field sensor (16-181) is disposed on the first circuit board (16-170) for detecting the position of the magnet (16-182) (Fig. 2; ¶0031).
Regarding claim 7, Weng in view of Cheng discloses the driving mechanism as claimed in claim 6, as set forth above. Neither Weng nor Cheng disclose a second circuit board disposed on the frame, wherein the first and second circuit boards are disposed on opposite sides of the frame, the first conductive member is embedded in the top portion of the frame and electrically connected to the first and second circuit boards.
However, Cheng teaches a second circuit board (2-1143; Fig. 29; ¶0127), wherein the first (2-1141) and second circuit boards (2-1143) are disposed on opposite sides of the frame (2-104) (they are disposed on opposite sides of the system, therefore are also on opposite sides of the frame (Figs. 2, 28-29), and the first conductive member (2-1061 – 2-1064, 2-1101 – 2-1104) is electrically connected to the first (2-1141) and second circuit boards (2-1143) (Figs. 28-29; ¶0127). Cheng does not teach the first conductive member is embedded in the top portion of the frame.
However, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950), see MPEP 2144.04. Moving the second circuit board to be disposed on the frame would make no functional difference. If the circuit board is disposed on the frame, it would further follow to incorporate the conductive members of Cheng in the frame for the purpose of supplying power through the frame. There are a limited number of ways as to where the first conductive member can pass through the frame – either through the top portion or through the extending portions. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007), see MPEP 2143.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for there to be a second circuit board disposed on the frame for the purpose of including more elements that need to receive power, since it has been held that a mere duplication of working parts of a device involves only routine skill in the art, In re Harza 124 USPQ 378 (CCPA 1960), and since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art, In re Japikse 86 USPQ 70 (CCPA 1950), see MPEP 2144.04. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the first conductive member to be embedded in the top portion of the frame since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp for the purpose of supplying power between the first and second circuit boards in a compact and direct manner.
Regarding claim 15, Weng discloses the driving mechanism as claimed in claim 5, as set forth above. Weng further discloses the coil (16-141) has a central axis offset from the optical axis in a horizontal direction that is perpendicular to the optical axis (Fig. 2).
Regarding claim 16, Weng discloses the driving mechanism as claimed in claim 5, as set forth above. Weng further discloses a second conductive member (16-121; Fig. 2; ¶0030) embedded in the base (16-120) (Fig. 2). Weng does not disclose the second conductive member is electrically connected to the first conductive member.
However, Cheng teaches a second conductive member (2-170; ¶0114) embedded in the base (2-112) (¶0114) and electrically connected to the first conductive member (2-1061, 2-1101; ¶0114).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the second conductive member for the purpose of supplying power through the base.
Claim(s) 8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Weng (US 20210029274 A1) in view of Cheng (US 20200213493 A1) and further in view of Bang et al. (US 20220210296 A1), hereinafter Bang.
Regarding claim 8, Weng in view of Cheng discloses the driving mechanism as claimed in claim 7, as set forth above. Neither Weng nor Cheng disclose a temperature sensor disposed on the second circuit board.
However, Bang teaches a similar driving mechanism (Fig. 3) comprising a temperature sensor (¶0058) disposed on a circuit board (43; ¶0058).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for a temperature sensor to be disposed on the second circuit board for the purpose of measuring the temperature near the coil to reduce focusing error rate (¶0028 of Bang).
Regarding claim 10, Weng in view of Cheng and further in view of Bang discloses the driving mechanism as claimed in claim 8, including the temperature being disposed on the second circuit board which is opposite to the first circuit board, as set forth above. Neither Weng, Cheng, nor Bang disclose the temperature sensor faces the housing.
However, there are a limited number of ways the temperature sensor can face – either towards the housing or away from the housing. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007), see MPEP 2143.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the temperature sensor to face the housing since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp for the purpose of accurately measuring the temperature in the system.
Regarding claim 11, Weng in view of Cheng and further in view of Bang discloses the driving mechanism as claimed in claim 8, including the temperature being disposed on the second circuit board which is opposite to the first circuit board, as set forth above. Neither Weng, Cheng, nor Bang disclose the magnetic field sensor and the temperature sensor face the same direction.
However, there are a limited number of ways the magnetic field sensor and the temperature sensor can face – either in the same direction, or in a different direction. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007), see MPEP 2143.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the magnetic field sensor and the temperature sensor to face the same direction since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp for the purpose of accurately measuring the position and temperature in the system.
Claim(s) 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Weng (US 20210029274 A1) in view of Cheng (US 20200213493 A1) and further in view of Kim et al. (KR 20190044595 A), hereinafter Kim.
Regarding claim 12, Weng in view of Cheng discloses the driving mechanism as claimed in claim 5, as set forth above. Weng further discloses the driving assembly (16-140) include a coil (16-141; Fig. 2; ¶0027) and a magnetic element (16-142; Fig. 2; ¶0027), and the frame (16-150) includes a long side (area between each extending portion along the sides (Fig. 2), wherein the coil (16-141) is disposed on the movable part (16-130) (Fig. 2; ¶0027), and the magnetic element (16-142) is disposed on the long side of the frame (16-150) (Fig. 2; ¶0027). Neither Weng nor Cheng disclose the frame is shaped in an octagon that includes a long side and a short side adjacent to each other.
However, Kim teaches a similar driving mechanism (Fig. 1) comprising a fixed part (600, 800, 400; Fig. 1) comprising a frame (400; Fig. 1), wherein the frame (400) is shaped in an octagon (Fig. 1) that includes a long side and a short side adjacent to each other (Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the frame to be shaped in an octagon for the purpose of matching the shape of the frame to the shape of the movable part (Fig. 2 of Weng) to better fit the elements together and since it has been held that a mere change in shape of an element is generally recognized as being with in the level of ordinary skill in the art when the change in shape is not significant to the function of the combination. In re Dailey 149 USPQ 47 (CCPA 1966), see MPEP 2144.04.
Regarding claim 13, Weng in view of Cheng and further in view of Kim discloses the driving mechanism as claimed in claim 12, as set forth above. Neither Weng nor Cheng disclose the long side of the frame is 2 to 20 times of the short side.
However, Kim teaches the long side of the frame is 2 to 20 times of the short side (Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the frame to be shaped in an octagon for the purpose of matching the shape of the frame to the shape of the movable part (Fig. 2 of Weng) to better fit the elements together and since it has been held that a mere change in shape of an element is generally recognized as being with in the level of ordinary skill in the art when the change in shape is not significant to the function of the combination. In re Dailey 149 USPQ 47 (CCPA 1966), see MPEP 2144.04.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Weng (US 20210029274 A1) in view of Cheng (US 20200213493 A1), further in view of Kim et al. (KR 20190044595 A), and further in view of Du (CN 114624845 A).
Regarding claim 14, Weng in view of Cheng and further in view of Kim discloses the driving mechanism as claimed in claim 12, as set forth above. Neither Weng, Cheng, nor Kim disclose a rod affixed to the base and in contact with the movable part, wherein the movable part is slidable along the rod relative to the fixed part, and the rod is located adjacent to the short side of the frame and spaced away from the first circuit board.
However, Du teaches a similar driving mechanism comprising a fixed part (400, 100, 260; Fig. 9) comprising a base (100, 260; Fig. 9) and a frame (400; Fig. 9), a movable part (200; Fig. 9), and a driving assembly (220; Fig. 9; ¶0121), and further comprising a rod (241; Figs. 9-12) affixed to the base (100, 260) (implicit from ¶n0098) and in contact with the movable part (200) (Figs. 9-12), wherein the movable part (200) is slidable along the rod (241) relative to the fixed part (400, 100, 260) (Figs. 9-12; ¶n0094), and the rod (241) is located in the corner (corresponding to the short side of the frame of Kim) and spaced away from a first circuit board (150; Fig. 8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the rod of Du for the purpose of providing a bearing to guide the movable portion.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Weng (US 20210029274 A1) in view of Du (CN 114624845 A) and further in view of Kim (KR 20190044595 A).
Regarding claim 17, Weng discloses the driving mechanism as claimed in claim 3, as set forth above. Weng does not disclose a rod, wherein the base has a column affixed to the rod, and the rod contacts the movable part.
However, Du teaches a similar driving mechanism comprising a fixed part (400, 100, 260; Fig. 9) comprising a base (100, 260; Fig. 9) and a frame (400; Fig. 9), a movable part (200; Fig. 9), and a driving assembly (220; Fig. 9; ¶0121), and further comprising a rod (241; Figs. 9-12), wherein the base (100, 260) is affixed to the rod (implicit from ¶n0098), and the rod (241) contacts the movable part (200) (Figs. 9-12).
Further, Kim teaches a similar driving mechanism (Fig. 1) comprising a fixed part (600, 800, 400; Fig. 1) comprising a base (420; Fig. 1), wherein the base has a column (425; Fig. 1; ¶0086). Incorporating the column, which is in the corner, like the rod of Du, would result in the rod needing to be fixed to the column part of the base.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the rod for the purpose of providing a bearing to guide the movable portion, and further provide a column into the base for the purpose of coupling the base to the frame and housing (¶0086 of Kim).
Claim(s) 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Weng (US 20210029274 A1) in view of Du (CN 114624845 A), further in view of Kim (KR 20190044595 A), and further in view of Chang et al. (US 20230336860 A1), hereinafter Chang.
Regarding claim 18, Weng in view of Du and further in view of Kim discloses the driving mechanism as claimed in claim 17, as set forth above. Weng further discloses the driving assembly (16-140) includes a plurality of coils (16-141; Fig. 2; ¶0027) and magnetic elements (16-142; Fig. 2; ¶0027). Neither Weng, Du, nor Kim disclose a plurality of wires, wherein the movable part has a plurality of bobbins, the wires connect the coils to the bobbins, and the column is higher than the bobbins on the top side of the movable part.
However, Chang teaches a similar driving mechanism comprising a fixed part (11; Fig. 1; ¶0035), a movable part (12; Fig. 1; ¶0035), a plurality of coils (16; Fig. 1; ¶0035) and magnetic elements (17; Fig. 1; ¶0035), and further comprising a plurality of wires (18; Figs. 2-3; ¶0035), wherein the movable part has a plurality of bobbins (121; Figs. 2-3; ¶0036), and the wires (18) connect the coils (16) to the bobbins (121; Figs. 2-3; ¶0039).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the wires and bobbins for the purpose of providing power to the coil.
Chang does not disclose the column is higher than the bobbins on the top side of the movable part. However, there are a limited number of possibilities as to how high the column and bobbins are – that the column is higher, at the same height, or lower than the bobbins. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007), see MPEP 2143.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for column to be higher than the bobbins since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within their technical grasp for the purpose of coupling the base to the frame and housing.
Regarding claim 19, Weng in view of Du, in view of Kim, and further in view of Chang discloses the driving mechanism as claimed in claim 18, including the column, the rod, and the bobbins, as set forth above. Weng does not disclose the movable part has a contact portion in contact with the rod, the column and the contact portion are located between two of the bobbins, and the contact portion is slidable along the rod.
Du further teaches the movable part (200) has a contact portion (240; Figs. 9-12) in contact with the rod (241) (Figs. 9-12), and the contact portion (240) is slidable along the rod (241) (Figs. 9-12; ¶n0094). The combination of the rod and contact portion of Du, the column of Kim, and the bobbins of Chang would further result in the column and the contact portion being located between two of the bobbins.
Regarding claim 20, Weng in view of Du, in view of Kim, and further in view of Chang discloses the driving mechanism as claimed in claim 18, as set forth above. Weng further discloses an upper spring sheet (16-161; Fig. 2; ¶0025), wherein the coils (16-141) are disposed on the movable part (16-130) (Fig. 2; ¶0027), and the magnetic elements (16-142) are disposed on the frame (16-150) (Fig. 2; ¶0027), wherein the upper spring sheet (16-161) is disposed on the top side of the movable part (16-130) (Fig. 2). Neither Weng, Du, nor Kim disclose the upper spring sheet is electrically connected to the wires wound on the bobbins.
However, Chang teaches a spring sheet (13; Fig. 1; ¶0039), wherein the spring sheet (13) is electrically connected to the wires (18) wound on the bobbins (121) (¶0039).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the upper spring sheet to be electrically connected to the wires wound on the bobbins for the purpose of supplying power through the upper spring sheet.
Allowable Subject Matter
Claims 9 and 22 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: the prior art taken either singly or in combination fails to anticipate or fairly suggest the features/limitations of applicant's claims, in such a manner than a rejection under 35 U.S.C. § 102 or § 103 would be proper.
Regarding claim 9, the prior art taken either singly or in combination fails to anticipate or fairly suggest the driving mechanism as claimed. Specifically, none of the prior art either alone or in combination disclose or teach of a driving mechanism specifically including, as the distinguishing features in combination with the other limitations of the base and intervening claims, a plurality of first conductive members extending downward on opposite sides of the second circuit board and protruding from the base.
Regarding claim 22, the prior art taken either singly or in combination fails to anticipate or fairly suggest the driving mechanism as claimed. Specifically, none of the prior art either alone or in combination disclose or teach of a driving mechanism specifically including, as the distinguishing features in combination with the other limitations of the base and intervening claims, a metal sheet, wherein the metal sheet extends from the top side of the movable part to the bottom side of the movable part to electrically connect to the lower spring sheet.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent Nos. 12,210,208, 12,501,136, 11,619,799, 12,181,631, 12,501,136, 11,287,725, and 12,032,224. Although the claims at issue are not identical, they are not patentably distinct from each other because the devices claimed in each patent claim 1 and the instant application claim 1 are coextensive such that there exist devices which could simultaneously be claimed under both.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application Nos. 17/571,185, 17/970,846, 18/351,698, 18/482,297, 18/495,852, 18/504,461, 18/504,488, 18/417,378, 18/594,682, 18/628,025, 18/636,754, 18/654,988, 18/679,006, 18/733,029, 18/764,566, 18/778,265, 18/792,907, 18/896,162, 18/937,458, 18/938,911, 18/944,397, 18/964,118, and 19/016,642 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the devices claimed in each patent claim 1 and the instant application claim 1 are coextensive such that there exist devices which could simultaneously be claimed under both.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding the differences between instant application claim 1 and claim 1 of each patent and copending application listed above, each patent and copending application claim 1 includes the limitations of: a driving mechanism for moving an optical element, a fixed part, a movable part, and a driving assembly to drive the movable part and therefore anticipates all of the limitations of instant claim 1.
Conclusion
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/NATASHA NIGAM/Examiner, Art Unit 2872 December 19th, 2025
/George G. King/Primary Examiner, Art Unit 2872