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 Pre-amendment
2. The present office action is made in response to the Pre-amendment filed on 01/18/2024. It is noted that in the Pre-amendment, applicant has made changes to the specification and the claims. There was not any change being made to the abstract and the drawings.
A) Regarding to the specification, applicant has added a new paragraph thereof “Cross-Reference To Related Applications” to page 1 of the specification; and
B) Regarding to the claims, applicant has amended claims 3, 5-10, 14, 16-18, 20-22 and 25-26 and canceled claims 11-13, 15, 19 and 24. There is not any claim being added into the application.
Election/Restrictions
3. In response to the Election/Restriction mailed to applicant on 02/12/2026, applicant has made an election without traverse of Invention I in the reply filed on 02/28/2026.
4. As a result of applicant’s election, claims 1-10, 14, 16-18 and 20-21, directed to the elected Invention I, are examined in the present office action, and claims 22-23 and 25-26, directed to Invention II, have been withdrawn from further consideration as directed to a non-elected invention. Applicant should note that the non-elected claims 22-23 and 25-26 will be rejoined if the independent claim 22 of the non-elected invention II has all features of the claim 1 if the claim 1 is later found as an allowable claim.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The listing of references in pages 8 and 14 of the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
7. The drawings contain eleven sheets of figures 1-11, 12A-12B and 13A-13B were received on 01/18/2024. These drawings are objected by the examiner for the following reason(s).
8. Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See present specification in pages 1 and 6-7. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Specification
9. The abstract provided in the front page of the reference WO 2023/002182 A1 is used as an abstract of the present US application.
10. The lengthy specification which was amended by the pre-amendment of 01/18/2024 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.
11. The specification is objected to because it doesn’t have sufficient headlines for the purpose of providing a clear framework of the specification. Appropriate correction is required.
12. The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
13. The disclosure is objected to because of the following informalities:
a) Page 1: line 5, “a one or more lengths” should be changed to --one or more lengths--; b) Page 8: line 15, “static part 30” should be changed to --intermediate part 30--; c) Page 9: line 32, what does applicant mean by “the moving part 20 within an envelope of the assembly 3”? Does applicant intend to mean --the assemblies 1,2--? d) Page 10: on line 2, “moving portion 20” should be changed to --moving part 20-- and on line 4, “static portion 10” should be changed to --static part 10--, see the use of the term of “part” for each elements (10, 20, 30) throughout the specification; e) Page 20: lines 8-9, “the intermediate part 20” should be changed to --the intermediate part 30--. There are still some grammatical and idiomatic errors in the specification. Applicant should carefully proofread the specification. Appropriate correction is required.
Claim Objections
14. Claims 5 and 16 are objected to because of the following informalities. Appropriate correction is required.
a) In claim 5: on line 1, the phrase thereof “according to 3” is unclear. Should the mentioned phrase be changed --according to claim 3--?
b) In claim 14: on lines 3-4, the phrase thereof “to limit rotational movement moving part” has a grammatic error. Should the mentioned phrase be changed to --to limit rotational movement of the moving part--?
Claim Interpretation
15. 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.
16. 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.
17. 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
18. 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.
19. 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 how the moving part can contact the static part at a limit of movement of the moving part when at least one overall endstop is located between the moving part and the static part. Does applicant intend to mean that the moving part contacts the at least one overall endstop at a limit of movement of the moving part?
For the purpose of examination, the feature thereof “the moving part … to the static part” (lines 12-13) is understood as --the moving part contacts the at least one overall endstop at a limit of movement of the moving part relative to the static part--.
b) Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because it is unclear which “the overall endstop” (line 2) applicant implies here. Applicant is respectfully invited to review its base claim 1 which recites “at least one overall stop” (claim 1 on line 11). As a result, which one of “at least one overall stop” is used/referred to the so-called “the overall stop” in claim 16. Should “the overall endstop” recited in claim 16 on line 2 be changed to --the at least one overall endstop--? See the use of similar claimed language in dependent claim 20.
c) Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element b) above.
d) Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the mass of the intermediate part” (line 2) and “the mass of the moving part” (line 2) lacks a proper antecedent basis. Should the terms of “the mass” in each of the mentioned features be changed to --a mass--?
e) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 103
20. 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.
21. 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.
22. 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).
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 n7-8 and 13 and figs. 2 and 5. 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.
23. 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).
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
24. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
25. The US Patent No. 11,994,793 is cited as of interest in that it discloses an optical device having a static part, an intermediate part and a moving part wherein overall endstops are formed/used to limit movement(s) of the moving part with respect to the static part.
26. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THONG Q NGUYEN/Primary Examiner, Art Unit 2872