18789233DETAILED 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/30/2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over the combination of claims 1 and 4 of U.S. Patent No. 12,081,851. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claim 20 of the present invention are taught by the claims of U.S. Patent No. 12,081,851.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,711,599. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claim 20 of the present invention are taught by the claims of U.S. Patent No. 11,711,599.
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.
1: Claim(s) 1, 2, 9-14 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0298925 A1 Inoue et al.
2: As for Claim 1, Inoue et al depicts in Figures 1, 4, 6 and 7 and teaches in Paragraph [0033] A camera module comprising: a housing(element 11 depicted in Figure 1); a lens assembly (element 21 depicted in Figure 1 and in Figure 3) that is coupled to the housing (11) and comprises at least one lens (21a); a first circuit board (element 32 depicted in Figure 3) disposed inside the housing (11) (Paragraph [0035]); a second circuit board (33) disposed below the first circuit board (32) (see Paragraph [0040]); a first flexible circuit board (element 36 depicted in Figure 9 and discussed in Paragraph [0043])
that electrically connects the first (32) and second circuit boards (33); a first shield can (element 35 depicted in Figure 7 and discussed in Paragraph [0035]) disposed in the housing (11) to support the first circuit board and the second circuit board (See Figure 10), wherein the first shield can (35) comprises a plurality of sidewalls (Figure 7 depicts multiple sides of the shield can having numerous holes on different sides), and wherein among the plurality of sidewalls, a thickness of a sidewall on which the first flexible circuit board (36) is disposed is thinner in an optical axis direction than a thickness of other sidewalls in the optical axis direction. Figure 7 shows multiple side walls with different sections of side walls having different lengths (widths) along the OA direction.
3: As for Claim 2, Inoue et al depicts in Figure 10 wherein the plurality of side walls comprises a first side wall, and wherein the first sidewall includes a hole disposed to overlap the first circuit board or second circuit board in a direction perpendicular to the optical axis direction. Inoue et al depicts and teaches the shield can has numerous holes that accept portions of the circuit boards in order to secure them in place.
4: As for Claim 9, Inoue et al teaches in Paragraph [0041] wherein the first circuit board is mounted with the image sensor (element 31), wherein the first side wall comprises a first region, an entirety of which is overlapped with the first flexible circuit board (36) in a lateral direction perpendicular to the optical axis direction (see Figure 10).
5: As for Claim 10, Inoue et al teaches wherein an area of the first shield can (35) where the first flexible circuit board (36) is disposed is formed in a bar shape partially cut away (cutout 35f depicted in Figure 7 and discussed in Paragraph [0049]).
6: As for Claim 11, Inoue et al teaches in Paragraph [0049, 0068 and 0069] wherein a first ground part is formed on a side surface of the first circuit board, and the first ground part is in contact with an inner surface of the first shield can (35). Inoue et al teaches the shield can 35 is in electrical contact with the circuit boards to provide a ground level.
7: As for Claim 12, Inoue et al teaches in Paragraph [0049, 0068 and 0069] wherein a second ground part is formed on a side surface of the second circuit board, and the second ground part is in contact with an inner surface of the first shield can. Inoue et al teaches the shield can 35 is in electrical contact with the circuit boards to provide a ground level.
8: As for Claim 13, Inoue et al depicts in Figure 9 wherein the first circuit board and the second circuit board are formed in the same size. Inoue et al teaches the circuit boards fix within the shield can (35).
9: As for Claim 14, Inoue et al teaches in Paragraph [0047] wherein the first shield can (35) is manufactured with a metal material, and edges of the first circuit board are formed with a ground part electrically grounded to the first shield can (35).
10: As for Claim 20, Inoue et al depicts in Figures 1, 4, 6 and 7 and teaches in Paragraph [0033] A camera module comprising: a housing (element 11 depicted in Figure 1); a lens assembly (element 21 depicted in Figure 1 and in Figure 3) that is coupled to the housing (11) and comprises at least one lens (21a); a first circuit board (element 32 depicted in Figure 3) disposed inside the housing (11) (Paragraph [0035]); a second circuit board (33) disposed below the first circuit board (32) (see Paragraph [0040]); and a first shield can (element 35 depicted in Figure 7 and discussed in Paragraph [0035]) disposed in the housing (11) to support the first circuit board (32) and the second circuit board (33) (see Figure 10), wherein the first shield can (35) comprises a first side wall, and wherein the first sidewall includes a hole (Figure 7 depicts multiple sides of the shield can having numerous holes on different sides).
Allowable Subject Matter
Claims 3-8, 15-19 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M HANNETT whose telephone number is (571)272-7309. The examiner can normally be reached 8:00 AM-5:00 PM Monday thru Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Twyler Haskins can be reached at 571-272-7406 The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES M HANNETT/Primary Examiner, Art Unit 2639
JMH
February 3, 2026
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