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 .
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by.
US 20210396946 A1 to Hu et al.
Regarding Claim 1. Hu discloses an optical module, comprising: a first fixed part (Fig. 4 frame 9-11), including a first bottom (See Fig. 4 frame 9-11); a first movable part (Fig. 4 movable part 9-20) for connecting a first optical element (Fig. 2-3 optical element 9-110); and a first driving assembly for driving the first movable part to move relative to the first fixed part (Fig. 4 driving assembly 9-30).
Regarding Claim 2. Hu further discloses wherein when viewed along a first optical axis of the first optical element, the first fixed part further includes a first side and a second side (As shown in at least Fig. 4), and the first optical element is located between the first side and the second side (See Fig. 3); when viewed along the first optical axis, the first fixed part has a polygonal structure (as shown in Fig. 6-8); when viewed along the first optical axis, the first side and the second side are parallel to each other (See Fig. 3-4); when viewed along the first optical axis, the first driving assembly is located on the first side (See Fig. 4 coil 9-32 and magnetic element 9-34).
Regarding Claim 19. Hu further discloses the first fixed part further includes a plurality of stopper elements (Fig. 4 elastic assembly 9-50 which includes 9-51, 9-52 and 9-53), including an elastic material (Fig. 4 elastic portion 9-53); the stopper elements are arranged on the first bottom; and the stopper elements at least partially covers the first bottom (See at least Fig. 4 and Fig. 9).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hu as applied to claim 2.
Regarding Claim 3. As stated above Hu discloses all the limitations of base claim 2.
Hu further discloses the first driving assembly includes a first magnetic element (Fig. 4 magnetic element 9-34) and a first coil (Fig. 4 coil 9-32); when viewed along the first optical axis, there is no active driving source for driving the first movable part on the second side (See Fig. 3 and Fig. 4); when viewed along the first optical axis, the first fixed part further includes a third side that is not parallel to the first side (See Fig. 3-4);
Hu does not specifically disclose that when viewed along the first optical axis, the first side is shorter than the third side.
However, modifying the fixed part of Hu such that the first side is shorter than the third side would be an obvious matter of design choice (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that when viewed along the first optical axis, the first side is shorter than the third side.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hu as applied to claim 19 in view of US 20130201559 A1 to Minamisawa et al..
Regarding Claim 20. As stated above Hu discloses all the limitations of base claim 19.
Hu does not specifically disclose that the elastic material is rubber.
However, Minamisawa discloses that rubber is a suitable material for an elastic stopper (para 134). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the elastic material is rubber.
Allowable Subject Matter
Claims 4-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/EDMOND C LAU/Primary Examiner, Art Unit 2871