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 .
Response to Amendment
2. The present office action is made in response to the amendment filed on 09/09/2026. It is noted that in the amendment, applicant has made changes to the drawings, the specification and the claims. There was not any change being made to the abstract.
a) Regarding to the drawings, applicant has submitted a replacement sheet contained figure 1;
b) Regarding the specification, applicant has made changes to pages 1, 6-9, 12 and 20 of the specification filed on 01/18/2024; and
c) Regarding to the claims, applicant has amended claims 1, 5, 16-17 and 21.
Response to Arguments
3. The amendments to the drawings, the specification and the claims as provided in the amendment of 09/09/2026, and applicant's arguments provided in the mentioned amendment, pages 10-16, have been fully considered and resulted in the following conclusions.
a) Regarding the claims, because applicant has not added/canceled any claim into/from the application, thus the pending claims are still claims 1-10, 14, 16-18, 20-23 and 25-26 (Note that claims 11-13, 15, 19 and 24 were canceled in the pre-amendment filed on 01/18/2024) in which claims 1-10, 14, 16-18 and 20-21 are examined in the present office action and claims 22-23 and 25-26 have been withdrawn from further consideration as being directed to non0elected Invention(s).
Applicant should note that the non-elected claims 22-23 and 25-26 will be rejoined if the linking claim 1 is later found as an allowable claim.
b) Regarding the objections to the drawings as set forth in the office action of 04/08/2026, the amendment(s) to the drawings as provided in the amendment of 09/09/2026 and applicant’s arguments provided in the mentioned amendment, page 11, have been fully considered and are sufficient to overcome the objections to the drawings as set forth in the mentioned office action.
c) Regarding the Claim Interpretation as set forth in the office action of 04/08/2026, the applicant’s arguments provided in the mentioned amendment, pages 11-12, have been fully considered but they are not persuasive. Applicant is respectfully invite to review the claims contained by the generic placeholders which was subjected to a Claim interpretation set forth in the mentioned office action. Each generic placeholder recites to an arrangement for proving a function or an operation; however, the claim(s) do(es) not provide sufficient structure to warrant the function/operation thereof.
Thus, the Claim Interpretation of those generic placeholders thereof “a first bearing arrangement”, “a second bearing arrangement” and “an actuator arrangement” as recited in claim 1; “an actuator stage” as recited in claim 3; “a second actuator stage” as recited in claim 4; “a bias arrangement” as recited in claim 5; and “a single actuator stage” as recited in claim 9 is repeated in the present office action.
d) Regarding the objections of claims 5 and 15 set forth in the office action of 04/08/2026, the amendments to the claims as provided in the amendment of 09/09/2026 are sufficient to overcome the objections to the drawings as set forth in the mentioned office action.
e) Regarding the rejections of claims 1-10, 14, 16-18 and 20-21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 04/08/2026, the amendments to the claims as provided in the amendment of 09/09/2026 and applicant’s arguments provided in the mentioned amendment, pages 12-13, are sufficient to overcome the objections to the rejections of claims 1-10, 14, 16-18 and 20-21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph as set forth in the mentioned office action.
f) Regarding the rejection of claims 1-4, 6-10, 14, 16-18 and 20-21 under 35 U.S.C. 103 as being unpatentable over the prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present application in view of Jin (Chinese reference No. CN 111936928 A), and the rejection of claim 5 under 35 U.S.C. 103 as being unpatentable over the prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present application in view of Jin (Chinese reference No. CN 111936928 A) as applied to claim 3 above, and further in view of Chan et al (US Patent No. 8,982,464 set forth in the office action of 04/08/2026, the amendments to the claims as provided in the amendment of 09/09/2026 and applicant’s arguments provided in the mentioned amendment, pages 13-16, have been fully considered but they are not persuasive, thus the rejections of the claims over the applied arts set forth in the office action of 04/08/2026 are repeated in the present office action.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
a) In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
b) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., large mass, small mass, …inertia of the moving part, …), see amendment in page 14, are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
c) In response to applicant’s arguments that the combination of arts, i.e., the prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present application and the art of Jin (Chinese reference No. CN 111936928 A). the combined product does not disclose the feature of “the overall endstop prevents further movement of the moving part at a limit of movement of the moving part relative to the static part” as recited in the newly-added feature to claim 1 (last two lines of the claim), see amendment in pages 13-15, the examiner respectfully disagree with applicant’s viewpoint and respectfully invited the applicant to review the claim with claimed language being provided/recited and the art of Jin.
In the art of Jin, the moving part (210) supporting a lens is moved by the operation of a driving system (200) having coils (250) and magnets (240). The movement of the moving part (210) is detected by a sensing system (410, 510) which each comprises a magnet (416 (or 516)) and a Hall sensor 411 (or 511)). The movement of the moving part (210) is controlled inside a range determined by the operation between the sensing system and the driving system and the range has an upper limit and a lower limit which is understood as a position(s) when the moving part (210) adjacent or in contact with the upper (or lower) arm/section of the static part (600). The use of overall endstop (811) in the upper arm/section of the static part (600) and the overall endstop (810) at the lower arm/section of the static part (600) is for further limit the movement of the moving part (210) at the upper (or lower) limit of movement of the moving part (210) in relative to the static part (600).
Regarding the rejection of dependent claims, it is noted that because applicant has not provided any specific arguments except reference to the rejection of the base claim 1 thus the dependent claims are rejected for the same reasons set forth in the office action of 04/8/2026 and repeated in the present office action.
Drawings
4. The replacement sheet contained figure 1 was received by the office on 09/09/2026.
5. As a result of the change(s) to the drawings, the application now contains a total of eleven sheets of figures 1-11, 12A-12B and 13A-13B which includes ten sheets of figures 2-11, 12A-12B and 13A-13B as filed on 01/18/2024 and one replacement sheet contained figure as filed on 09/09/2026.. The mentioned total of eleven sheets of figures 1-11, 12A-12B and 13A-13B are now approved by the examiner.
Specification
6. The lengthy specification which was amended by the pre-amendment of 01/18/2024 and the amendment of 09/09/2026 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.
7. A substitute specification excluding the claims is required pursuant to 37 CFR 1.125(a) because the number or nature of the amendments to the specification as provided in the pre0-amendment of 01/18/2024 and the amendment of 09/09/2026 render it difficult to consider the application or to arrange the papers for printing or copying, 37 C.F.R. 1.125.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Interpretation
8. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
9. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
10. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
a) “a first bearing arrangement”, “a second bearing arrangement” and “an actuator arrangement” as recited in claim 1;
b) “an actuator stage” as recited in claim 3;
c) “a second actuator stage” as recited in claim 4;
d) “a bias arrangement” as recited in claim 5; and
e) “a single actuator stage” as recited in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
11. 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.
12. Claims 1-10, 14, 16-18 and 20-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “at least one overall endstop … to the static part” (lines 11-13).
The mentioned features make the claim indefinite because it is unclear which “the overall endstop” (line 12) applicant implies here. Applicant is respectfully invited to review the claim on line 11 which recites “at least one overall stop”. As a result, which one of “at least one overall stop” is used/referred to the so-called “the overall stop” in claim on line 12. Should “the overall endstop” recited on line 12 be changed to --the at least one overall endstop--?
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 103
13. 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.
14. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
15. Claims 1-4, 6-10, 14, 16-18 and 20-21, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over the prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present application in view of Jin (Chinese reference No. CN 111936928 A, of record).
The prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present specification discloses an actuator assembly.
a) Regarding present claims 1-4 and 18, the actuator assembly of the prior art comprises the following features;
a1) a static part (10) having a screening can (12);
a2) an intermediate part (30);
a3) a moving part (20) supporting a lens system (21);
a4) a first bearing (41) arrangement for guising movement(s) of the intermediate part (30) relative to the static part (10);
a5) a second bearing arrangement (42) for guiding movement(s) of the moving part (20) relative to the intermediate part (30);
a6) an actuator arrangement (51, 52) for driving movement(s) of the moving part (20) relative to the static part (10) wherein the actuator assembly comprises an actuator stage (52) to drive movement of the moving part relative to the intermediate part (30) guided by the second bearing arrangement (42) and an actuator stage (51) to drive movement of the intermediate part (30) relative to the static part (10) guided by the first bearing arrangement (41); and
a7) at least one intermediate stops (61, 62) between the intermediate part (30) and the moving part (20) arranged such that the moving part (20) contacts the intermediate part (30) at a limit of movement of the moving part relative to the intermediate part.
The only feature missing from the actuator assembly of the prior art is that the actuator assembly of the prior at does not disclose at least one overall endstop between the moving part (20) and the static part (10) so that the moving part contacts the overall endstop at a limit of movement of the moving part.
However, an actuator assembly having a moving part and a static part wherein at least one overall endstop is/are arrange between a moving part and a static part so that the moving part contacts the overall endstop at a limit of movement of the moving part is known to one skill in the art as can be seen in the actuator assembly provided by Jin.
In particular, Jin discloses an actuator assembly having a static part (600, 800) and a moving part (210, 310) supporting a lens system (111, 112) and teach the use of overall endstops (811, 812, 821, 822) arranged between the static part and the moving part so that the moving part contacts the overall endstop at a limit of movement of the moving part, see Jin in pages 7-8 and 13 and figs. 2 and 5. It is noted that in the art of Jin, the moving part (210) supporting a lens is moved by the operation of a driving system (200) having coils (250) and magnets (240). The movement of the moving part (210) is detected by a sensing system (410, 510) which each comprises a magnet (416 (or 516)) and a Hall sensor 411 (or 511)). The movement of the moving part (210) is controlled inside a range determined by the operation between the sensing system and the driving system and the range has an upper limit and a lower limit which is understood as a position(s) when the moving part (210) adjacent or in contact with the upper (or lower) arm/section of the static part (600). The use of overall endstop (811) in the upper arm/section of the static part (600) and the overall endstop (810) at the lower arm/section of the static part (600) is for further limit the movement of the moving part (210) at the upper (or lower) limit of movement of the moving part (210) in relative to the static part (600).
Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the actuator assembly provided by the prior art by using at least one overall endstop between the moving part and the static part as suggested by Jin so that the moving part contacts the overall endstop at a limit of movement of the moving part to reduce vibrations.
b) Regarding present claims 6-8, the movement(s) of the moving part relative to the intermediate part guided by the second bearing arrangement comprises a translational movement along a predetermined axis, and the movement(s) of the intermediate part relative to the static part guided by the first bearing arrangement comprises a rotational movement about tow orthogonal axes perpendicular to the predetermined axis, see present specification in pages 7-8.
c) Regarding present claims 9-10, it is noted that while the combined product provided by the prior art and Jin does not discloses that the actuator arrangement is a single actuator stage to independently drive movement of the moving part and the intermediate part as recited in the claims; however, the use of a single actuator stage instead of two actuator stages as claimed is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the specification, in particular, in pages 7-9 and shown in fig. 2 in which applicant has clearly disclosed that the actuator arrangement comprises two actuators stages separated from each other for the purpose of driving the moving part and the intermediate part. Thus, absent any showing of criticality, it would have obvious to one skill in the art before the effective filing date of the invention to modify the combined product provided by the prior art and Jin by using only one/single actuator assembly instead of two actuator stages for independently driving the intermediate part and the moving part to meet a particular application.
d) Regarding present claim 14, the actuator assembly of the prior art comprises a plurality of shaped-memory alloy wires, see present specification in page 1.
e) Regarding present claim 16, the overall endstops as disclosed by Jin are configured to limit the 3-dimensional translation movement of the moving part relative to the static part.
f) Regarding present claim 17, the overall endstops each comprises one surface on the static part configured to engage/contact a substantially conformal surface on the moving part, see Jin in fig. 2.
g) Regarding present claim 20, the screening can (12) of the static part (10) disclosed by the prior art extend around the lens assembly (21), the intermediate part (30) and the actuator assembly (51, 52) wherein at least one overall endstop is provided in the screening part, see fig. 2 of Jin which discloses the overall endstops (811, 812, 821, 822) are formed on the static part (600, 800).
h) Regarding present claim 21, as understood, the mass of the intermediate part (30) is less than the mass of the moving part (20) which moving part supports a lens assembly, see the prior art in pages 1 and 6-7 and fig. 1.
16. Claim 5, as best as understood, is rejected under 35 U.S.C. 103 as being unpatentable over the prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present application in view of Jin (Chinese reference No. CN 111936928 A) as applied to claim 3 above, and further in view of Chan et al (US Patent No. 8,982,464, of record).
The combined product as provided by prior art as described in pages 1 and 6-7 and shown in fig. 1 of the present application in view of Jin (Chinese reference No. CN 111936928 A) as described in the paragraph #22 above does not discloses a bias arrangement to bias the movement of the intermediate part relative to the statis part guided by the first bearing arrangement towards a central position as recited in present claim 5. However, the use of bias arrangement between an intermediate part and a static part to bias the movement of the intermediate part relative to the static part towards a central position is disclosed in the art as can be seen in the anti-shake compensation structure provided by Chan et al. In particular, in their structure, Chan discloses a bias arrangement (30) between a static part (20) and an intermediate part (16, 17, 41) to bias the movement of the intermediate part relative to the static part towards a central position, see columns 4-5 and fig. 3, for example. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the combined product resulted of prior art in view of Jin by using a bias arrangement between a static part and an intermediate part as suggested by Chan et al to bias the movement of the intermediate part relative to the static part towards a central position for the purpose of stabilization of the intermediate part holding a moving part supporting a lens system.
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
18. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
