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 .
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.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.
Claims 1 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 18/777,545 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claims 1 and 5-6 are fully encompassed and met by the details of reference claim 1, which requires a movable body, a fixed body, and a gimbal mechanism with a turnable member and a support plate, having the claimed construction. Additionally, the limitations of instant claim 7 are met and fully encompassed by the details of reference claim 5, which requires the lens unit and the sensor unit.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1 and 5-7 would be allowable if rewritten or amended or upon the timely filing of a proper terminal disclaimer to overcome the double patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the best prior art, Minamisawa (U.S. PG-Pub. No. 2020/0314302), teaches an actuator capable of connecting with a sensor unit and a lens unit, the actuator comprising:
a movable body which (5) is to be connected with the lens unit and the sensor unit (See e.g. Figs. 1-9; Paragraphs 0043-0046 and 0050-0052);
a fixed body (7) which holds the movable body in a turnable state with at least one of intersecting directions intersecting an optical axis direction as a turning axis (See e.g. Figs. 1-8; Paragraphs 0046 and 0054-0055); and
a gimbal mechanism (21) which comprises:
a turnable member (25) which has a base plate (24) in a frame shape into which the movable body is inserted and a plurality of leg parts (26, 27, 28, 29) which are extended from the base plate along the optical axis direction (See e.g. Fig. 5; Paragraphs 0046-0047 and 0057-0060); and
support parts (19, 20) which are engaged with the leg parts and support the leg parts in a turnable state (See e.g. Fig. 5; Paragraphs 0057-0060);
wherein the turnable member comprises, as the leg parts, a first leg part (26, 28) which is protruded from the base plate in an inner side direction and then extended along the optical axis direction, and a second leg part (27, 29) which is protruded from the base plate in an outer side direction and then extended along the optical axis direction (See e.g. Fig. 5; Paragraphs 0057-0060);
the gimbal mechanism comprises, as the support parts, a first support part (20) which is fixed to the movable body and supports the first leg part in a turnable state, and a second support part (19) which is fixed to the fixed body and supports the second leg part in a turnable state (See e.g. Figs. 1-8; Paragraphs 0046-0047 and 0057-0063);
the movable body is turnably supported by the first leg part protruded from the base plate to an inner side through the first support part (See e.g. Figs. 1-8; Paragraphs 0046-0047 and 0057-0063); and
the second leg part protruded from the base plate to an outer side is turnably supported by the fixed body through the second support part (See e.g. Figs. 1-8; Paragraphs 0046-0047 and 0057-0063).
Minamisawa fails to teach or reasonably suggest that the first leg part is protruded from the base plate in an inner side direction and then extended along the optical axis direction. Moreover, given Applicant’s arguments and the construction of Minamisawa, such a configuration would not have been obvious to one having ordinary skill in the art at the time the invention was filed.
Thus, the prior art of record, taken alone or in combination, fails to teach the cumulative details of claim 1, specifically including the limitation: “wherein the turnable member comprises, as the leg parts, a first leg part which is protruded from the base plate in an inner side direction and then extended along the optical axis direction, and a second leg part which is protruded from the base plate in an outer side direction and then extended along the optical axis direction.”
Response to Arguments
Applicant's arguments, see page 5, filed 07/02/2026, with respect to the double patenting rejection have been fully considered but they are not persuasive.
Applicant does not argue the propriety of the rejection but instead “respectfully requests the double patenting rejection be held in abeyance until the claims of the present application are in condition for allowance.” However, a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.
Examiner maintains that the instant claims are not patentably distinct from the reference claims and, as such, the double patenting rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas R Pasko whose telephone number is (571)270-1876. The examiner can normally be reached M-F 8 AM - 5 PM.
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, William Kraig can be reached at 571-272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Nicholas R. Pasko
Primary Examiner
Art Unit 2896
/Nicholas R. Pasko/Primary Examiner, Art Unit 2896
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