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 .
Status of Claims
Claims 1-20 are pending.
Claims 7, 9-10, and 14-20 are objected to.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 6/21/2024 and 6/27/2024 have been considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character not mentioned in the description: “1103” (fig. 6). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 No. 12,510,728. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,449,716. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,416,779. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,379,570. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,353,045. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,313,902. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,287,526. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,289,525. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,235,510. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,210,208. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,181,631. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,159,752. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,140,816. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,988,847. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,880,087. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,796,894. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,719,996. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an optical element driving mechanism comprising a movable portion, a fixed portion, and a driving assembly (see claim 1).
Claim Rejections - 35 USC § 102
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 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 1-2 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2021/0278624) (hereafter Wang).
Regarding claim 1, Wang discloses an optical element driving mechanism, comprising: a movable portion, connected to an optical element; a fixed portion, wherein the movable portion is movable relative to the fixed portion; and a driving assembly, driving the movable portion to move relative to the fixed portion (see at least the abstract and Fig. 2).
Regarding claim 2, Wang discloses all of the limitations of claim 1.
Wang also discloses a circuit assembly, having: a first circuit portion with a plate structure, disposed on the fixed portion; a second circuit portion, connected to the first circuit portion; a third circuit portion, connected to the first circuit portion; and a connecting portion with a bent structure, wherein the second circuit portion is connected to the first circuit portion via the connecting portion (see at least Figs. 2 and 6 and paragraph [0157], where 1-300 is the circuit assembly, 1-310 is the first portion, 1-320 are the second and third portions, and 1-350 is the connecting portion with a bent structure).
Regarding claim 11, Wang discloses all of the limitations of claim 1.
Wang also discloses an internal assembly, wherein the movable portion is movable relative to the fixed portion via the internal assembly, wherein the internal assembly includes: a first counterpart element, fixedly connected to the fixed portion; a first clamping element, fixedly connected to the movable portion, corresponding to the first counterpart element; and a first internal element, located between the first counterpart element and the first clamping element; wherein: the first internal element is movable relative to the first counterpart element, the first clamping element, or both; and the first clamping element, the first internal element, and the first counterpart element are arranged in sequence along an arrangement direction (see at least Fig. 34 and paragraph [0413], where the intermediate module 5-400 is an internal assembly, and is disposed between the movable portion and the fixed portion, 5-610 and 5-620 are the counterpart and clamping elements and 5-410 is a first internal element).
Regarding claim 12, Wang discloses all of the limitations of claim 11.
Wang also discloses a second counterpart element, fixedly connected to the fixed portion; a second clamping element, fixedly connected to the movable portion, corresponding to the second counterpart element; and a second internal element, located between the second counterpart element and the second clamping element; wherein: the center of the first internal element and the center of the second internal element are connected by a connecting line, and the connecting line passes through an opening of the movable portion when viewed in a direction that is parallel to a main axis (see at least Fig. 34 and paragraph [0413], where the opposite corners of intermediate module 5-400 are the second counterpart element, the second clamping element, and a second internal element 5-430).
Regarding claim 13, Wang discloses all of the limitations of claim 12.
Wang also discloses that the optical element at least partially overlaps the opening when viewed in the direction that is parallel to the main axis (see at least Fig. 34 and paragraph [0403], where 5-900 is an optical element that overlaps the opening).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2021/0278624) (hereafter Wang).
Regarding claim 3, Wang discloses all of the limitations of claim 2.
Wang also discloses that the circuit assembly further has: a first adhesive element, disposed on the first circuit portion, with which the first circuit portion is adhered to the fixed portion (see at least Fig. 4a and paragraph [0149], where 1-212 can be a heat conduction adhesive that is between the first circuit portion 1-310 and the base), wherein the second circuit portion abuts a part of the fixed portion (see Fig. 4a). Fig. 4a is reproduced and annotated below to indicate where the second circuit portion abouts the fixed portion.
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Wang does not specifically disclose a second adhesive element, disposed on the second circuit portion, with which the second circuit portion is adhered to the fixed portion; wherein: the first adhesive element is not in direct contact with the second adhesive element; and at least a portion of the connecting element is not in direct contact with the first adhesive element or the second adhesive element.
However, Official Notice is taken that adhesive elements are old and well-known in the art for holding components together and/or for providing for heat dissipation.
Therefore, 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 mechanism of Wang so that the mechanism comprises a second adhesive element, disposed on the second circuit portion, with which the second circuit portion is adhered to the fixed portion; wherein: the first adhesive element is not in direct contact with the second adhesive element; and at least a portion of the connecting element is not in direct contact with the first adhesive element or the second adhesive element for the purpose of providing additional stability or heat dissipation since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results.
Regarding claim 4, Wang discloses all of the limitations of claim 3.
Wang also discloses that the fixed portion comprises: a bottom, wherein the first circuit portion is disposed on a surface of the bottom; and a case, fixedly connected to the bottom; wherein the surface has an exposed portion that is exposed from the first circuit portion when viewed in a direction that is parallel to a main axis (see at least Fig. 4A, where 1-200 is a bottom of the fixed portion and 1-110 is a case).
Regarding claim 5, Wang discloses all of the limitations of claim 4.
Wang also discloses that the case is fixedly connected to the bottom (see at least fig 4A) and that the surface is perpendicular to the main axis (see at least Fig. 4A).
Wang does not specifically disclose that the case is fixedly connected to the bottom via a third adhesive element; the third adhesive element is in direct contact with the case and the bottom; and the third adhesive element is in direct contact with the circuit assembly.
However, Official Notice is taken that adhesive elements are old and well-known in the art for holding components together and/or for providing for heat dissipation.
Therefore, 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 mechanism of Wang so that the case is fixedly connected to the bottom via a third adhesive element; the third adhesive element is in direct contact with the case and the bottom; and the third adhesive element is in direct contact with the circuit assembly for the purpose of providing additional stability or heat dissipation since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results.
Regarding claim 6, Wang discloses all of the limitations of claim 5.
Wang also discloses an adhesive element in direct connect with the surface and indirect contact with the first circuit portion (see Fig. 4a, 1-212 is a heat conductive adhesive).
Wang does not specifically disclose a third adhesive element is in direct contact with the surface; and the third adhesive element is in direct contact with the first circuit portion.
However, it would have been obvious to one of ordinary skill in the art that the heat conductive adhesive 1-212 could be split into multiple elements or could be duplicated to provide further elements. It has been held that a mere duplication of working parts of a device involves only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Therefore, 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 mechanism of Wang so that the third adhesive element is in direct contact with the surface; and the third adhesive element is in direct contact with the first circuit portion for the purpose of providing additional stability or heat dissipation.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2021/0278624) (hereafter Wang) as applied to claim 4 above, and further in view of Wu et al. (US 2021/0026103) (hereafter Wu)
Regarding claim 8, Wang discloses all of the limitations of claim 4.
Wang also discloses a first electronic element, sensing the movement of the movable portion (see at least Fig. 2 and paragraph [0143], where 1-S11 and 1-S12 are sensing elements for sensing movement).
Wang does not specifically disclose that the first electronic element is disposed on the circuit assembly; and that the mechanism comprises a second electronic element, sensing an environmental parameter, and disposed on the circuit assembly; wherein the shortest distance between the center of the first electronic element and the movable portion is shorter than the shortest distance between the center of the second electronic element and the movable portion.
However, Wu teaches an optical element driving mechanism (see at least the title) comprising a first electronic element that senses the movement of a movable portion and a second electronic element that senses an environmental parameter (see at least paragraph [110], where the inertia-sensing assembly senses movement and the temperature-sensing assembly senses an environmental parameter).
Therefore, 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 mechanism of Wang to include the teachings of Wu so that the mechanism comprises a second electronic element, sensing an environmental parameter for the purpose of providing temperature-compensation information (see at least paragraph [0123] of Wu).
Wang as modified by Wu does not specifically disclose that the first electronic element is disposed on the circuit assembly; that the second electronic element is disposed on the circuit assembly; and that the shortest distance between the center of the first electronic element and the movable portion is shorter than the shortest distance between the center of the second electronic element and the movable portion.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to rearrange the first and second electronic elements, since it has been held that a mere rearrangement of elements without modification of the operation of the device involves only routine skill in the art. One would have been motivated to rearrange the first and second electronic elements so that the first electronic element is disposed on the circuit assembly; that the second electronic element is disposed on the circuit assembly; and that the shortest distance between the center of the first electronic element and the movable portion is shorter than the shortest distance between the center of the second electronic element and the movable portion, for the purpose of ensuring both electronic elements are easily attached to the circuit assembly since they need electrical signals in order to operate and communicate and for the purpose of being placed within the mechanism such that they are best able to measure the desired parameters such as movement and temperature. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975).
Allowable Subject Matter
Claims 7, 9-10, and 14-20 are objected to.
Claim 7 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, for at least the reason that the prior art fails to teach or suggest that the second adhesive element is in direct contact with a first sidewall of the bottom, as generally set forth in claim 7, the invention including the particular limitations recited in claims 1-4, from which claim 7 depends.
Claim 9 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, for at least the reason that the prior art fails to teach or suggest that the first electronic element is disposed on a first circuit surface of the second circuit portion and the second electronic element is disposed on a second circuit surface of the third circuit portion, as generally set forth in claim 9, the invention including the particular limitations recited in claims 1-4 and 8, from which claim 9 depends.
Claim 10 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, for at least the reason that it depends from claim 9.
Claim 14 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, for at least the reason that the prior art fails to teach or suggest a force exerting assembly wherein the first clamping element is draw to abut against the first counterpart element by the first force, as generally set forth in claim 14, the invention including the particular limitations recited in claims 1 and 11-12, from which claim 14 depends.
Claims 15-20 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, for at least the reason that it depends from claim 14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2018/0335600 to Moto et al. discloses an optical driving mechanism comprising a fixed portion, movable portion, driving assembly, and an internal assembly comprising a counterpart element, a clamping element, and an internal element (see at least the abstract and Fig. 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM W BOOHER whose telephone number is (571)270-0573. The examiner can normally be reached M - F: 8:00am - 4:00pm.
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/ADAM W BOOHER/Examiner, Art Unit 2872