N O N - F I N A L A C T I O N
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/26/24 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Nonstatutory 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Instant application claims 1-18 and 20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 and 11-18 of U.S. Patent No. 12,052,499. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Instant application independent claim 1 is broader than claim 1 and 6 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 2 is broader than claim 1 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 3 is broader than claim 1 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 4 is broader than claim 2 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 5 is broader than claim 3 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 6 is broader than claim 1 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 7 is broader than claim 15 and 6 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 8 is broader than claim 16 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 9 is broader than claim 17 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 10 is broader than claim 4 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 11 is broader than claim 5 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 12 is broader than claim 7 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 13 is broader than claim 8 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claim 14 is broader than claim 9 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application dependent claims 15-18 are broader than respective claims 11-14 of Patent ‘499 and is therefore an obvious variant thereof.
Instant application independent claim 20 is broader than claims 18 and 6 of Patent ‘499 and is therefore an obvious variant thereof.
Closest Prior Art
The prior art (cited on PTO-892) is considered pertinent to applicant's disclosure. Among these, the following references are considered to be the closest, collectively disclosing the state of the art concerned with Applicant’s claimed invention.
YEO IN JAE (KR 20180071443) – applied to 35 USC 103 rejection, (English translation attached), see below.
JO (US 20170139525) – applied to 35 USC 103 rejection, see below.
PARK (US 20200200994) – see Fig. 3 in view of para [0047-0081], discloses a camera module comprising a first AF mover (1200) for moving a first lens module, a first OIS mover (1300) capable of accommodating a part of the first AF mover (1200), a first stator (1400) positioned oppositely below the first OIS mover (1300), and a first base (1420) on which the first AF mover (1200) and the first OIS mover (1300) are disposed.
NOTE: Examiner welcomes INTERVIEW(s) to discuss the instant application’s claimed invention as it corresponds to the specification embodiments, as well as, discussing the similarities/differences taught/not taught by prior art. In the interest of compact prosecution, Applicant’s arguments/amendments should not only address the cited closest art applied/relied on in the 35 USC 102/103 rejection (below), but also address the other cited closest art not applied/relied on.
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 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 of this title, 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.
Claims 1-5 and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over YEO IN JAE (KR 20180071443) in view of JO (US 20170139525) -- hereafter, termed as shown “underlined”.
As per INDEPENDENT CLAIM 1, YEO teaches a coil member comprising (see shake correction coil in Fig. 1 in view of para [0023-0043]): a substrate including an upper surface and a lower surface opposite to the upper surface; a first coil electrode disposed on the upper surface of the substrate and including a first pattern electrode; a second coil electrode disposed on the lower surface of the substrate and including a second pattern electrode (Fig. 1 in view of para [0023-0043]: plate-shaped base member 10 having coil members 10 stacked into a spiral shape on both sides, and a first coil member 21 stacked on one side of the base member 10, and second and third coil members (22, 23) stacked on the other side of the base member 10);
YEO differs from Applicant’s claimed invention by not teaching the underlined limitations: “a third pattern electrode disposed on the upper and lower surfaces of the substrate and not electrically connected to the first pattern electrode and the second pattern electrode”.
However, these inventive differences could have been derived by one of ordinary skill in the art through a simple design change to the features in YEO, wherein the first to third coil members (21, 22, 23) can be formed into a spiral shape from the central region (26, 27, 28) toward the edges of each side, and the coil members can have various spiral patterns (see Fig. 1 in view of para [0023] and para [0036-0040]) AND in further view over the teachings over prior art JO – see Fig. 5, 6B & Fig. 16 in view of para [0068-74 & 0110-112]: wherein a dummy electrode (TD1) “third electrode” can be disposed between a first touch electrode (TA1) and a second touch electrode (TB) spaced apart from each other. Furthermore, JO discloses embodiments in para [0069 & 0111] in which the first to fourth dummy electrodes TD1 to TD4 may not be connected any other electrodes, and thus, this teaching with Fig. 5 & 6B is understood to disclose an embodiment in which the first dummy electrode (TD1) “third electrode” is not electrically connected with the first touch electrode (TA1) and the second touch electrode (TB).
Thus, when considering the collective knowledge bestowed by each applied prior art, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to COMBINE the teachings of JO (dummy electrode arrangement) into suitable modification with the teachings of YEO (shake correction coil electrodes/pattern electrodes) to produce Applicant’s claimed invention with the structural arrangement / functional configuration stated in said underlined limitation for the MOTIVATED REASON of optimizing the electrical performance properties of the components in the analogous art of a portable electronic device.
As per CLAIM 2, YEO in view of JO teaches the coil member of claim 1, wherein a distance between the first pattern electrodes and a distance between the first pattern electrode and the third pattern electrode are different from each other (This feature could have been derived by one of ordinary skill in the art through a simple design change to the teachings in YEO, wherein the first to third coil members (21, 22, 23) can be formed into a spiral shape from the central region (26, 27, 28) toward the edges of each side, and the coil members can have various spiral patterns (see Fig. 1 in view of para [0023] and para [0036-0040]) AND in further view over the teachings over prior art JO – see Fig. 5-6B & Fig. 16 in view of para [0068-74 and 0110-112]).
As per CLAIM 3, YEO in view of JO teaches the coil member of claim 1, wherein a distance between the second pattern electrodes and a distance between the second pattern electrode and the third pattern electrode are different from each other (This feature could have been derived by one of ordinary skill in the art through a simple design change to the teachings in YEO, wherein the first to third coil members (21, 22, 23) can be formed into a spiral shape from the central region (26, 27, 28) toward the edges of each side, and the coil members can have various spiral patterns (see Fig. 1 in view of para [0023] and para [0036-0040]) AND in further view over the teachings over prior art JO – see Fig. 5-6B & Fig. 16 in view of para [0068-74 and 0110-112]).
As per CLAIM 4, YEO in view of JO teaches the coil member of claim 1 wherein the third pattern electrode is disposed at least one of an outside of the plurality of first pattern electrodes and an outside of the second pattern electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the teachings of JO, Fig. 5-6B in view of para [0068-74], wherein a dummy terminal (TD1) can be disposed between a first touch electrode (TA1) and a second touch electrode (TB) spaced apart from each other AND, thus considered an obvious variation applicable to a portable electronic device for optimizing the electrical performance properties).
As per CLAIM 5, YEO in view of JO teaches the coil member of claim 1, wherein the third pattern electrode extends in a direction that is the same as or different from that of at least one of the first pattern electrode and the second pattern electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the teachings of JO, Fig. 16 in view of para [0110-112], wherein a dummy terminal (TD1) can have a pattern corresponding to the pattern of a first sub electrode (TA1) AND, thus considered an obvious variation applicable to a portable electronic device for optimizing the electrical performance properties).
As per CLAIM 10, YEO in view of JO teaches the coil member of claim 1, wherein a via hole is formed in the substrate, and the first coil electrode and the second coil electrode are electrically connected to each other by a conductive material disposed in the via hole (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the teachings of YEO, Fig. 1: via hole 11 for
electrical connection formed in the base member 10).
As per CLAIM 11, YEO in view of JO teaches the coil member of claim 1, further comprising a wiring electrode disposed on the lower surface of the substrate, wherein the second coil electrode is electrically connected to the wiring electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the teachings of YEO, Fig. 1: via hole 11 is filled with a connection electrode 40 so as to interconnect coil members 20).
As per CLAIM 12, YEO in view of JO teaches the coil member of claim 1, wherein the substrate includes a through-hole (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the teachings of YEO, Fig. 1: via hole 11 is filled with a connection electrode 40 so as to interconnect coil members 20).
As per CLAIM 13, YEO in view of JO teaches the coil member of claim 1, wherein the first coil electrode and the second coil electrode are disposed at positions overlapping each other in a thickness direction of the substrate (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the teachings of YEO, Fig. 1 in view of para [0023-0043]: plate-shaped base member 10 having coil members 10 stacked into a spiral shape on both sides, and a first coil member 21 stacked on one side of the base member 10, and second and third coil members (22, 23) stacked on the other side of the base member 10).
As per CLAIM 14, YEO in view of JO teaches the coil member of claim 1 but remain silent to wherein the first coil electrode and the second coil electrode include copper. However, Official Notice (MPEP § 2144.03) is taken that both the concepts and advantages of using copper is well known and expected in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use electrodes that include copper for the MOTIVATED REASON of optimizing the electrical performance properties of the components in the analogous art of a portable electronic device.
As per CLAIM 15, YEO in view of JO teaches the coil member of claim 1, wherein the minimum distance between the first pattern electrodes and the minimum distance between the third pattern electrodes are smaller than the minimum distance between the first pattern electrode and the third pattern electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the distance spacing arrangement between electrodes/terminals teachings of JO, Fig. 5-6B & Fig. 16 in view of para [0068-74 & 0110-112]).
As per CLAIM 16, YEO in view of JO teaches the coil member of claim 1, wherein the maximum distance between the first pattern electrodes and the maximum distance between the third pattern electrodes are greater than the maximum distance between the first pattern electrode and the third pattern electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the distance spacing arrangement between electrodes/terminals teachings of JO, Fig. 5-6B & Fig. 16 in view of para [0068-74 & 0110-112]).
As per CLAIM 17, YEO in view of JO teaches the coil member of claim 1, wherein the minimum distance between the second pattern electrodes and the minimum distance between the third pattern electrodes are smaller than the minimum distance between the second pattern electrode and the third pattern electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the distance spacing arrangement between electrodes/terminals teachings of JO, Fig. 5-6B & Fig. 16 in view of para [0068-74 & 0110-112]).
As per CLAIM 18, YEO in view of JO teaches the coil member of claim 1, wherein the maximum distance between the second pattern electrodes and the maximum distance between the third pattern electrodes are greater than the maximum distance between the second pattern electrode and the third pattern electrode (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over the distance spacing arrangement between electrodes/terminals teachings of JO, Fig. 5-6B & Fig. 16 in view of para [0068-74 & 0110-112]).
As per CLAIM 19, YEO in view of JO teaches the coil member of claim 1, wherein the first coil electrodes are disposed in a region corresponding to a corner region of upper surface of the substrate, wherein the second coil electrodes are disposed in a region corresponding to a corner region of lower surface of the substrate (In view of the collective knowledge and prior art combination cited/discussed in claim 1, one of ordinary skill in the art could have easily derived these limitation features over YEO, Fig. 1 in view of para [0023-0043]: plate-shaped base member 10 having coil members 10 stacked into a spiral shape on both sides, and a first coil member 21 stacked on one side of the base member 10, and second and third coil members (22, 23) stacked on the other side of the base member 10).
Contact Information
Any inquiry concerning this communication or earlier communications from the EXAMINER should be directed to AKSHAY TREHAN whose telephone number is (571) 270-5252. The examiner can normally be reached between the hours of 10am – 6pm during the weekdays Monday – Friday.
Interviews with the examiner are available via telephone AND video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant may contact the examiner via telephone OR use the USPTO Automated Interview Request (AIR), which can be found at: http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TWYLER HASKINS can be reached on (571) 272-7406. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov.
Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AKSHAY TREHAN/
Examiner, Art Unit 2639
/TWYLER L HASKINS/Supervisory Patent Examiner, Art Unit 2639