DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 11/913307, filed on October 31, 2007.
Information Disclosure Statement
The information disclosure statements filed July 18, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The 11-page IDS filed July 18, 2024, NPL documents #7-24 have not been considered for failing to provide a copy.
The 2-page IDS filed July 18, 2024, no copies of the cited documents were provided.
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 “portion of the upper spring is disposed between the magnet and the yoke” (claim 18) must be shown or the feature(s) canceled from the claim(s). 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.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16, 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-13, 20 of U.S. Patent No. 12,066,685 (herein US 685). Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to claim 1, US 685 claim 1 recites:
Claim 1 Limitation
US 685 Corresponding Claim
A motor for driving a lens
Claim 1
a base comprising a first through hole and a second through hole, the first and second holes provided adjacent at a first side surface of the base
Claim 1
a yoke disposed on the base, the yoke comprising a side surface and an upper surface formed with a hole
Claim 1
a carrier disposed in the yoke
Claim 1
a coil disposed on an outer peripheral surface of the carrier and comprising a first end portion and a second end portion
Claim 1
a magnet facing the coil and disposed in the yoke
Claim 1
an upper spring coupled to an upper portion of the carrier
Claim 1
a lower spring coupled to a lower portion of the carrier, and comprising a first lower spring and a second lower spring physically separated from the first lower spring
Claim 1
wherein the first end portion of the coil is coupled to the first lower spring and the second end portion of the coil is coupled to the second lower spring
Claim 1
wherein each of the first and second lower springs comprises an inner section coupled to the carrier, an outer section spaced apart from the inner section, a connection section connecting the inner section to the outer section
Claim 1
and a bending section connected to the outer section and bent downward
Claim 1
wherein each of the bending sections of the first and second lower springs is disposed in the first and second through holes, respectively
Claim 1
wherein each of the bending sections of the first and second lower springs comprises a first portion that is not exposed out of the first side surface of the base
Claim 1
As to claims 2-16, 19, US 685 claims 1-7, 9-13, 20 recite similar subject matter.
As to claim 20, while US 685 does not claim the camera is digital, Examiner takes Official Notice digital cameras are well known in the art (MPEP 2144.03).
Claims 1-9, 13-16, 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 12, 15-16, 19-20 of U.S. Patent No. 11,415,772 (herein US 772) in view of Makii et al. (US 2006/0181632 - Makii; cited by Applicant).
As to claim 1, US 772 claim 1 recites:
Claim 1 Limitation
US 772 Corresponding Claim
A motor for driving a lens
Claim 1
a base comprising a first through hole and a second through hole, the first and second holes provided adjacent at a first side surface of the base
Claim 1
a yoke disposed on the base, the yoke comprising a side surface and an upper surface formed with a hole
Claim 1
a carrier disposed in the yoke
Claim 1
a coil disposed on an outer peripheral surface of the carrier and comprising a first end portion and a second end portion
Claim 1
a magnet facing the coil and
Claim 1
an upper spring coupled to an upper portion of the carrier
Claim 1
a lower spring coupled to a lower portion of the carrier, and comprising a first lower spring and a second lower spring physically separated from the first lower spring
Claim 1
wherein the first end portion of the coil is coupled to the first lower spring and the second end portion of the coil is coupled to the second lower spring
Claim 1
wherein each of the first and second lower springs comprises an inner section coupled to the carrier, an outer section spaced apart from the inner section, a connection section connecting the inner section to the outer section
Claim 1
and a bending section connected to the outer section and bent downward
Claim 1
wherein each of the bending sections of the first and second lower springs is disposed in the first and second through holes, respectively
Claim 1
wherein each of the bending sections of the first and second lower springs comprises a first portion that is not exposed out of the first side surface of the base
Claim 1
Claim 1 of US 772 does not recite the magnet is disposed in the yoke. In the same field of endeavor Makii teaches a motor for driving lenses having a magnet disposed in the yoke (Makii Fig. 3 - 47, 48; para. [0101], [0102]; Fig. 6 - 47, 48). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide the magnet in the yoke so as to attach the magnet and face the col (Makii Fig. 3 - 47, 48; para. [0101], [0102]; Fig. 6 - 47, 48).
As to claims 2-9, 13-16, 19-20, US 772 claims 1-8, 12, 15-16, 19-20 recite similar subject matter.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Makii et al. (US 2006/0181632 - Makii; cited by Applicant) in view of Fujisawa (US 5,627,687).
As to claim 1, Makii teaches a motor for driving a lens (Makii Figs. 3-7, 11, 13-14), the motor comprising
a base (Makii Fig. 3 - 13) comprising a first hole and a second hole, the first and second holes provided adjacent at a first side surface of the base (Makii Fig. 5 - 31; Fig. 7 - 31, 23d; para. [0073]),
a yoke (Makii Fig. 3 - 47; para. [01010]) disposed on the base, the yoke comprising a side surface and an upper surface formed with a hole (Makii Fig. 4 - 47, 47a, 47b, 47c; para. [0101]),
a carrier disposed in the yoke (Makii Fig. 4 - 50, 52),
a coil (Makii Fig. 3 - 51; para. [0103]) disposed on an outer peripheral surface of the carrier and comprising a first end portion and a second end portion (Makii Fig. 3 - 51; Fig. 6 - 50, 51, 52; para. [0103]),
a magnet (Makii Fig. 3 - 48) facing the coil (Makii Fig. 6 - 51, 48) and disposed in the yoke (Makii Fig. 6 - 47, 48),
an upper spring coupled to an upper portion of the carrier (Makii Fig. 4 - 35; para. [0078]),
a lower spring coupled to a lower portion of the carrier (Makii Fig. 4 - 40; para. [0088]), and comprising a first lower spring and a second lower spring physically separated from each other (Makii Fig. 4 - 41),
wherein the first end portion of the coil is coupled to the first lower spring and the second end portion of the coil is coupled to the second lower spring (Makii Fig. 4 - 46; para. [0090]; Fig. 13 - 46, 58, 52c; para. [0111]),
wherein each of the first and second lower springs comprises an inner section coupled to the carrier (Makii Fig. 1 - 42; Fig. 13 - 42; para. [0109]), an outer section spaced apart from the inner section (Makii Fig. 11 - 43b, 44), a connection section connecting the inner section to the outer section (Makii Fig. 11 - 43a, 43b), and a bending section connected to the outer section and bent downward (Makii Fig. 11 - 45), wherein each of the bending sections of the first and second lower springs is provide in the first and second holes, respectively (Makii Fig. 5 - 31, 45).
Makii does not specify the holes are through holes such that the bending sections have first portions not exposed out of a side of the base.
In the same field endeavor Fujisawa teaches lens driving motors (Fujisawa Fig. 2) with electrically conductive springs (Fujisawa Fig. 2 - 34, 35; col. 6:39-45) and through holes in a base for inserting the springs (Fujisawa Fig. 2 - 48; col. 7:45-54; Fig. 3 - 37, 48) such that portions of the springs are not exposed out of a first side of the base (Fujisawa Fig. 2 - 34, 48; Fig. 3 - 37, 48). It would have been obvious to one of ordinary skill in the art at the time of invention to provide such through holes since, as taught by Fujisawa, such holes allow for mounting the springs to the base and attaching to a circuit board (Fujisawa Fig. 2 - 34, 35, 48; col. 7:60-65).
As to claim 2, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the bending sections of the first and second lower springs is exposed out of a lower surface of the base by passing through the first and second holes, respectively (Makii Fig. 6 - 45, 23).
As to claim 3, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the inner sections of the first and second lower springs is exposed out of the carrier such that the first and second end portions of the coil are connected to each of the inner sections of the first and second lower springs, respectively (Makii Fig. 6 - 42, 52; Fig. 13 - 46, 52, 58, 52c).
As to claim 4, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the bending sections of the first and second lower springs is supported by the base (Makii Fig. 5 - 31, 45).
As to claim 5, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the bending sections of the first and second lower springs does not protrude, in a direction perpendicular to an optical axis, beyond an outer most portion of the first side surface of the base (Makii Fig. 5 - 31, 45).
As to claim 6, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the bending sections of the first and second lower springs is configured to be electrically connected to a PCB of an external electrical device (Makii Fig. 3 - 62, 62a; para. [0116]; Fig. 5 - 62a, 45; para. [0134]).
As to claim 7, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the outer sections of the first and second lower springs is disposed between a lower surface of the magnet and an upper surface of the base (Makii Fig. 6 - 48, 13, 44, 43).
As to claim 8, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches the base comprises a second side surface opposite the first side surface (Makii Fig. 7 - inner surface (27) being opposite (23d)), and the first and second holes are provided closer to the first side surface than to the second side surface (Makii Fig. 7 - 31, 23d, 27).
As to claim 9, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Fujisawa further teaches the base comprises an upper surface and a lower surface (Fujisawa Fig. 3 - 37), and the first and second through holes are formed in a direction from the lower surface to the upper surface (Fujisawa Fig. 3 - 48).
As to claim 10, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches the coil is configured to interact with the magnet such that the carrier moves up and down in an optical axis direction (Makii para. [0155]).
As to claim 11, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Fujisawa teaches the first and second through holes pass through the base from an upper surface thereof to a lower surface thereof and are provided on the upper surface of the base in an area that is further inward than the first side surface of the base when viewed from above the base in an optical axis direction (Fujisawa Fig. 3 - 48).
As to claim 12, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 11, and Makii further teaches the outer section of the first lower spring and the outer section of the second lower spring are disposed on the upper surface of the base (Makii Fig. 6 - 43, 44, 45, 25a, 23) and are between a lower surface of the magnet and the upper surface of the base in the optical axis direction (Makii Fig. 6 - 25a, 43, 44, 45, 48, 23).
As to claim 13, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches the first end portion of the coil is coupled to an upper portion of the inner section of the first lower spring (Makii Fig. 13 - 46, 58, 52c), wherein the second end portion of the coil is coupled to an upper portion of the inner section of the second lower spring (Makii Fig. 13 - 46, 58, 52c).
As to claim 14, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches each of the bending sections of the first and second lower springs protrudes downward beneath a portion of the base (Makii Fig. 6 - 45, 23).
As to claim 15, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Fujisawa teaches the first hole and the second hole are provided between the first side surface and the outer peripheral surface of the carrier (Fujisawa Fig. 3 - 48).
As to claim 16, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii/Fujisawa teaches each of the bending sections of the first and second lower springs is exposed out of a lower surface of the base by passing through the first and second (Makii Fig. 6 - 45; Fujisawa Fig. 2 - 48, 34; Fig. 3 - 34a, 48, 47).
As to claim 17, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches a cover disposed on and coupled to the base (Makii Fig. 3 - 14).
As to claim 18, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches a portion of the upper spring is disposed between the magnet and yoke (Makii Fig. 6 - 38, 37, 48, 47).
As to claim 19, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further teaches a camera comprising a lens (Makii Fig. 1 - 10; Fig. 6).
As to claim 20, Makii in view of Fujisawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Makii further a digital apparatus (Makii Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 June 10, 2026
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