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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Examiner’s Comments
The examiner notes that the response of May 29, 2026 by applicant fails to address all of the objections of the Office Action of January 26, 2026, particularly the objections to the specification were not addressed. Since the response addresses the rest of the Office Action the examiner considers this a bona fide Response, and in an effort to maintain a compact prosecution will proceed as if the Response is fully responsive and maintain the objection, as set forth below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 19, 2024 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Species B1 in the reply filed on May 29, 2026 is acknowledged. Applicant has kindly indicated that claims 1-12 and 14-15 read on or are generic to Species B1 and has withdrawn claim 13 from consideration. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because since the application is a 371 filing the restriction was made under lack of unity and not based on search burden. Further, in arguendo, the different species identified by the examiner would require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries), thereby increasing the search burden.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the claims recite a “movement member” and a “rotation member” and a “holding member” which, except for repeating the claim language, do not appear within the body of the specification. The examiner respectfully requests applicant amends the claims to match the terminology of the specification (e.g. see paragraph [0081]) - so as to fix this problem without raising any issues of support for the amendments. Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “movement member”, the “rotation member” and the “holding member” must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Claim Objections
Claim 10 is objected to because of the following informalities: apparent inadvertent typographical error. The examiner suggests and for purposes of examination will use “in contact with each other at [[at]] least two points.” 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.
Claims 1-12 and 14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1 and 4 “movement member” raises clarity issues. It is unclear what a movement member is. The specification, except for repeating the claim language, does not use this term in description of the invention. After reviewing the description and the drawings the examiner has no idea what this is. It is apparently a critical element, since it is required by independent claim 1. For purposes of examination the examiner will assume that a “movement member” is inherently present.
Claims 2-12 and 14 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Claim 5 is rejected under 35 U.S.C. 112(b) as being indefinite, since it depends on claim 4 and therefore has the same deficiencies.
Regarding claims 4-5 and 13 “rotation member” raises clarity issues. It is unclear what a movement member is. The specification, except for repeating the claim language, does not use this term in description of the invention. After reviewing the description and the drawings the examiner has no idea what this is. It is possibly a critical element, since it is required by independent claim 13. For purposes of examination the examiner will assume that a “movement member” is inherently present.
Claim 5 is rejected under 35 U.S.C. 112(b) as being indefinite, since it depends on claim 4 and therefore has the same deficiencies.
Regarding claim 15 “a holding member that rotatably holds the ring-shaped member”, particularly “a holding member” raises clarity issues. It is unclear what a holding member is. The specification, except for repeating the claim language, does not use this term in description of the invention. It is apparently a critical element, since it is required by independent claim 15. For purposes of examination the examiner will assume a anything that connects the ring-shaped member to the larger device reads on “a holding member”.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-12 and 14 are under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 1 and 4 (and their respective dependent claims) which element(s) that define a “movement member” is unidentifiable from the description and figures, as set forth above. The required “movement member” is not a term of art and one skilled in the art could not identify what a “movement member” is (Wands factors A, C & D). As set forth above, the specification provides no directions or examples of a “movement member” (Wands factors F & G). Considering all the evidence, as a whole, the examiner concludes that one of ordinary skill in the art would need to engage in undue experimentation to make or use the invention based on the content of the disclosure (Wands factor H), see MPEP 2164.01(a).
Regarding claim 3 “wherein the ring-shaped member rotates with rotation of the lead screw” raises enablement issues. One of ordinary skill would understand that a lens holder moved by a lead screw would obtain motion by having a nut (or function equivalent e.g. ring-shaped member 220) not rotating (Wands factors B, C, D & E). If said nut (e.g. 220) rotated as required by the claim (Wands factor A) the device would not function. The specification provides no directions or examples of how a spinning ring-shaped member would move the lens holder (Wands factors F & G). Considering all the evidence, as a whole, the examiner concludes that one of ordinary skill in the art would need to engage in undue experimentation to make or use the invention based on the content of the disclosure (Wands factor H), see MPEP 2164.01(a).
Regarding claims 4-5 and 13 (and their respective dependent claims) which element(s) that define a “rotation member” is unidentifiable from the description and figures, as set forth above. The required “rotation member” is not a term of art and one skilled in the art could not identify what a “rotation member” is (Wands factors A, C & D). As set forth above, the specification provides no directions or examples of a “rotation member” (Wands factors F & G). Considering all the evidence, as a whole, the examiner concludes that one of ordinary skill in the art would need to engage in undue experimentation to make or use the invention based on the content of the disclosure (Wands factor H), see MPEP 2164.01(a).
Regarding claim 15 “the ring-shaped member moves in an axial direction of the lead screw together with the holding member while rotating in accordance with rotation of the lead screw” raises enablement issues. One of ordinary skill would understand that an element moved by a lead screw would obtain motion by having a nut (or function equivalent e.g. ring-shaped member 220) not rotating (Wands factors B, C, D & E). If said nut (e.g. 220) rotated as required by the claim (Wands factor A) the device would not function. The specification provides no directions or examples of how a spinning ring-shaped member would move an element such as a lens holder (Wands factors F & G). Considering all the evidence, as a whole, the examiner concludes that one of ordinary skill in the art would need to engage in undue experimentation to make or use the invention based on the content of the disclosure (Wands factor H), see MPEP 2164.01(a). For purposes of examination the examiner will interpret any driving device reading on the other limitations will inherently read on this limitation.
Claims 6-7 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for “wherein the groove is a circumferential groove formed on the inner periphery”, does not reasonably provide enablement for “wherein the groove is a circumferential groove formed over an entirety of the inner periphery”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Regarding claim 6, the specification, see figures 3B, 4E, 5B-5C, 7B, 10A & 11B, show the grooves/threads 240 on the interior of the ring-shaped member 220 have a nonthreaded region(s). For purposes of examination the examiner will use “wherein the groove is a circumferential groove formed on
The issues of claim 7 are the same as the issues of claim 6, as set forth above. Using the same reasoning for purposes of examination the examiner will use “wherein the groove is a circumferential groove formed on
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, 6, 8-11 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wakamizu US Patent Application Publication et al. 2008/0198486.
Regarding claim 1 Wakamizu disclose a lens barrel (title e.g. figure 1 lens driving apparatus 1) comprising: a lens holding frame (e.g. lens holding section 5) that holds a lens (axiomatic); a drive source (inter alia paragraph [0027] “lead screw 2 rotationally drives based on the torque transferred from a stepping motor, a DC motor or the like that is a drive source”); a lead screw that has a first thread groove formed thereon (e.g. lead screw 2 including threads 2a) and is rotationally driven by the drive source (inter alia paragraph [0027]); a ring-shaped member that has a groove on an inner periphery thereof (e.g. portion 23 including teeth 31, 32 & 33), the groove being in contact with the first thread groove (see figure 1); a movement member that is connected to the lens holding frame (interpreted as inherent, as set forth in the 112 section above), rotatably holds the ring-shaped member, and moves in an axial direction of the lead screw as the lead screw rotates (the device moves 5 along axis C1 that is parallel to axis C2 of 2, see paragraph [0029] & figure 1); and a biasing portion that biases the ring-shaped member toward the lead screw in a direction orthogonal to the axial direction of the lead screw (e.g. see figure 2 biasing spring 20 that pushes 23 against 2 orthogonally to C2, see paragraph [0038] & figure 2).
Regarding claim 2 Wakamizu discloses the lens barrel according to claim 1, as set forth above. Wakamizu further discloses wherein the ring-shaped member is rotatable1 around an axis of the lead screw (one could move 23 around 2 e.g. while assembling).
Regarding claim 6 Wakamizu discloses the lens barrel according to claim 1, as set forth above. Wakamizu further discloses wherein the groove is a circumferential groove formed on the inner periphery (e.g. 31, 32 & 33).
Regarding claim 8 Wakamizu discloses the lens barrel according to claim 1, as set forth above. Wakamizu further discloses wherein an axial direction of the ring-shaped member is inclined with respect to the axial direction of the lead screw (e.g. see figures 6-7).
Regarding claim 9 Wakamizu discloses the lens barrel according to claim 1, as set forth above. Wakamizu further discloses wherein the ring-shaped member and the lead screw are in contact with each other at one side of the lead screw and are separated from each other at another side of the lead screw in a biasing direction of the biasing portion (e.g. see figures 6-7).
Regarding claim 10 Wakamizu discloses the lens barrel according to claim 1, as set forth above. Wakamizu further discloses wherein the first thread groove and the groove are in contact with each other at least two points (e.g. see figure 2).
Regarding claim 11 Wakamizu discloses the lens barrel according to claim 10, as set forth above. Wakamizu further discloses wherein when viewed from a biasing direction in which the biasing portion biases the ring-shaped member, positions of the at least two points at which the first thread groove and the groove are in contact with each other are different in the axial direction of the lead screw and in a direction orthogonal to the axial direction of the lead screw (e.g. see figures 2 & 6-7).
Regarding claim 14 Wakamizu further discloses an imaging device (e.g. title) comprising the lens barrel according to claim 1, as set forth above.
Regarding claim 15 Wakamizu discloses a driving device (title e.g. figure 1 lens driving apparatus 1) comprising: a drive source (inter alia paragraph [0027] “lead screw 2 rotationally drives based on the torque transferred from a stepping motor, a DC motor or the like that is a drive source”); a lead screw that has a thread groove formed thereon (e.g. 2 including 2a) and is rotationally driven by the drive source (inter alia paragraph [0027]); a ring-shaped member that has a groove on an inner periphery thereof (e.g. 23 including 31, 32 & 33), the groove being in contact with the thread groove (e.g. see figure 2); a holding member that rotatably holds the ring-shaped member (e.g. sections 14 & 15 via coupling shaft 16); a biasing portion (e.g. 20) that biases the ring-shaped member toward the lead screw in a direction orthogonal to an axis of the lead screw (e.g. see figure 2), wherein the ring-shaped member moves in an axial direction of the lead screw (e.g. C2) together with the holding member while rotating in accordance with rotation of the lead screw (interpreted to be inherent, see 112 section above).
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.
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 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wakamizu US Patent Application Publication et al. 2008/0198486 in view of Kokinda US Patent 5,303,606.
Regarding claims 7 and 12 Wakamizu discloses the lens barrel according to claim 1, as set forth above. Wakamizu further discloses wherein the groove is a second thread groove formed on the inner periphery (e.g. 31, 32 & 33).
Wakamizu does not disclose wherein a pitch of the first thread groove is different from a pitch of the second thread groove, as required by claim 7; or wherein the first thread groove has a first flank surface and a second flank surface that are opposed to each other in the axial direction, and wherein the groove includes a first groove that is in contact with the first flank surface and a second groove that is in contact with the second flank surface, as required by claim 12.
Kokinda teaches a related lead screw/nut apparatus (title e.g. see figures 1 & 4) including a drive screw (e.g. lead screw 20) with a first thread (e.g. primary threads 64) and a ring-shaped member (e.g. nut 10) with groove on the inner periphery is a second thread (e.g. secondary threads 94); and further teaches a pitch of the first thread groove is different from a pitch of the second thread groove (see figure 4), wherein the first thread groove has a first flank surface and a second flank surface that are opposed to each other in the axial direction (e.g. left and right sides of 64), and wherein the groove includes a first groove that is in contact with the first flank surface and a second groove that is in contact with the second flank surface (see left and right engagement of threads in figure 4) for the purpose of having a radially biased or offset such that the threads of the nut body and the threads of the insert engage opposing faces of the lead screw threads to provide accurate and reliable motion of the anti-backlash nut (abstract) with reduced localized wear (column 2 lines 35-49). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the lens barrel as disclosed by Wakamizu to have a pitch of the first thread groove is different from a pitch of the second thread groove; and wherein the first thread groove has a first flank surface and a second flank surface that are opposed to each other in the axial direction, and wherein the groove includes a first groove that is in contact with the first flank surface and a second groove that is in contact with the second flank surface as taught by Kokinda for the purpose of having a radially biased or offset such that the threads of the nut body and the threads of the insert engage opposing faces of the lead screw threads to provide accurate and reliable motion of the anti-backlash nut with reduced localized wear.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 June 10, 2026
1 The examiner notes that the suffix “-able” means “capable of” according to the Random House Unabridged Dictionary, thus rotatable means “capable of being rotated.” It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense; In re Hutchison, 69 USPQ 138. Also see Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), MPEP 2114. IV and MPEP 2173.05(g).
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