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 .
Election/Restrictions
Applicant’s election without traverse of Species I in the reply filed on 5/4/2026 is acknowledged.
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 balancing member located at the fourth side portion of the housing (claim 2) 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.
Claim Objections
Claim 17 is objected to because of the following informalities: The limitation “…a first position sensor facing the sensing magnet in the optical axis direction board…” should be changed to “…a first position sensor facing the sensing magnet in the optical axis direction…”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 2-3, 14-16, rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 2, it recites that the balancing member is disposed at the fourth side portion of the housing. There is no support for this feature in the specification as originally filed. Specifically, claim 1, from which claim 2 depends, states that the magnets are located at the corners of the housing. In the embodiment where the magnets are located at the corners of the housing, the balance member is also located at the corner of the housing. There is no support for an embodiment where the magnets are located at the corners of the housing and the balance member is located at a side of the housing as claimed. For the purpose of examination, it is assumed that this claim is meant to state that the balance member is at one of the corners of the housing as it is in the specification.
Regarding claims 3, 14-16, they depend from claim 2 and are therefore rejected for the same reasons as stated above (see claim 1).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites the limitation "the projection of the bobbin is disposed between the first dummy and the second dummy". There is insufficient antecedent basis for this limitation in the claim. Specifically, there is no mention of a first dummy or second dummy prior to this limitation. Therefore, the location of the projection is unclear.
Regarding claims 18-19, they depend from claim 17 and are therefore rejected for the same reasons as stated above (see claim 17).
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 claims 2 and 8 of U.S. Patent No. 12,101,541. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 20, claims 2 and 8 teach all the limitations of instant claim 20.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sugawara (US 2019/0204531 A1).
Regarding claim 20, Sugawara discloses
A lens moving apparatus comprising:
a circuit board (22);
a housing (12) disposed above the circuit board;
a bobbin (11) disposed in the housing;
a magnet (122A, 1122B, 123) disposed on the housing; and
a first coil (112A, 112B) disposed on the bobbin and configured to move the bobbin in an optical axis direction by an interaction with the magnet.
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.
Claim(s) 1-5, 7, 9-12, 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara (US 2019/0204531 A1) in view of Official Notice.
Regarding claim 1, Sugawara discloses
A lens moving apparatus comprising:
a circuit board (22; fig. 9; Coil base plate 22 includes a wiring pattern; [0107], [0109]);
a housing (12; figs. 4, 7) disposed above the circuit board, the housing comprising first and second side portions opposite to each other and third and fourth side portion opposite to each other;
a bobbin (11; fig. 7) disposed in the housing;
a magnet comprising a first magnet unit (122A; fig. 7) disposed at a first [side] of the housing, a second magnet unit (122B; fig. 7) disposed at a second [side] of the housing, and a third magnet unit (123; fig. 7) disposed at a third [side] of the housing;
a first coil (112A, 112B; figs. 6-7) disposed on the bobbin and configured to move the bobbin in an optical axis direction by an interaction with the magnet ([0054], [0066]);
a sensing magnet (113; fig. 7) disposed on the bobbin;
a second coil (221A, 221B, 222; figs. 4, 9) facing the magnet in the optical axis direction and configured to move the housing in a direction perpendicular to the optical axis direction by an interaction with the magnet ([0120]);
a first position sensor (24; fig. 9) electrically connected to the circuit board ([0109]) and configured to detect a displacement of the bobbin ([0068]-[0070]); and
a second position sensor (23A, 23B; fig. 9) electrically connected to the circuit board ([0109]) and configured to detect a displacement of the housing ([0110]),
wherein the first position sensor overlaps the sensing magnet in the optical axis direction ([0112]; The Z position detection magnet 113 faces the AF hall element 24 in the optical axis direction which means they overlap in the optical axis direction.).
However, Sugawara fails to explicitly disclose that the magnets are located at the corners of the housing. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Sugawara teaches magnets for a VCM located at the sides of the housing. Providing magnets for a VCM at the corners of the housing is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the location of the magnets/dummy magnets with a location at the corners of the housing to achieve the predictable result of moving the lens for AF and OIS.
Regarding claim 2, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, Sugawara discloses, further comprising a balancing member (124; fig. 7) disposed at the fourth side portion of the housing (12; fig. 7; [0088]),
wherein the balancing member comprises a first dummy (Left 124; fig. 7) and a second dummy (Right 124; fig. 7) spaced apart from the first dummy, and wherein the sensing magnet (113; fig. 7) is disposed between the first dummy and the second dummy (The sensing magnet 113 is inserted into magnet housing 111g which projects from the bobbin. The projection is inserted at a concave portion of the housing between the first and second dummy 124; fig. 7; [0062]; fig. 6A).
Sugawara teaches magnets for a VCM located at the sides of the housing. Providing magnets for a VCM at the corners of the housing is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the location of the magnets/dummy magnets with a location at the corners of the housing to achieve the predictable result of moving the lens for AF and OIS.
Regarding claim 3, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 2), in addition, Sugawara discloses,
wherein the balancing member comprises a first dummy (left 124; fig. 7) and a second dummy (right 124; fig. 7) spaced apart from the first dummy,
wherein the bobbin (11; fig. 7) comprises a projection (111g; fig. 7) projecting from an outer surface thereof and disposed between the first dummy and the second dummy (figs. 6A, 7-8), and
wherein the sensing magnet (113; figs. 6A, 7-8) is disposed at the projection of the bobbin ([0068]).
Regarding claim 4, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, Sugawara discloses, wherein the second position sensor comprises:
a first sensor (23A; fig. 9) overlapped with the first magnet unit (122A; fig. 7) in the optical axis direction ([0110]; fig. 6); and
a second sensor (23B; fig. 9) overlapped with the third magnet unit (123; fig. 7) in the optical axis direction ([0110]; fig. 6).
Regarding claim 5, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 4), in addition, Sugawara discloses, wherein each of the first position sensor (24; [0068]), the first sensor (23A; [0105]), and the second sensor is a Hall sensor (23B; [0105]).
Regarding claim 7, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, Sugawara discloses, wherein the second coil comprises:
a first coil unit (221A) facing the first magnet unit (122A),
a second coil (221B) unit facing the second magnet unit (122B), and
a third coil unit (222) facing the third magnet unit (123).
Regarding claim 9, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, Sugawara discloses, further comprising:
an upper elastic member (13; fig. 7) coupled to an upper portion of the bobbin ([0058]) and an upper portion of the housing ([0051]; Upper elastic member 13 is connected to the OIS movable part 10 which includes housing 12 by suspension wire 30); and
a support member (30; fig. 5; [0051]) coupled to the upper elastic member.
Regarding claim 10, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 7), in addition, Sugawara discloses, wherein the first to third coil units (221A, 221B,222; fig. 9) are formed at the circuit board (22; fig. 9; [0106]).
Regarding claim 11, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 9), in addition, Sugawara discloses, wherein the support member is a suspension wire (30; fig. 4), and the support member is disposed at a corner of the housing (12; fig. 4; [0077]).
Regarding claim 12, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 9), in addition, Sugawara discloses, wherein the upper elastic member (13; fig. 7) comprises a first upper elastic unit (13A) and a second upper elastic unit (13B) and
wherein one side (112A) of the first coil is connected to the first upper elastic unit via a support member (30) connected to the first upper elastic unit (13A; [0100]), and the other side (112B) of the first coil is connected to the second upper elastic unit (13B) via a support member (30) connected to the second upper elastic unit (13B; [0100]).
Regarding claim 14, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 2), in addition, Sugawara discloses, wherein the balancing member (124) does not overlap the second coil (221B) in the optical axis direction (figs. 4, 9).
Regarding claim 15, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 2), in addition, Sugawara discloses, wherein a diameter of the sensing magnet is less than a distance between the first dummy and the second dummy (The sensing magnet 113 is located between the first and second dummy 124 therefore its diameter is inherently less than the distance between them; figs. 7-8).
Regarding claim 16, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 2), in addition, Sugawara discloses, wherein the balancing member (124) is made of a nonmagnetic material ([0088]).
Regarding claim 17, Sugawara discloses
A lens moving apparatus comprising:
a base (21; fig. 9);
a circuit board (22; fig. 9; Coil base plate 22 includes a wiring pattern; [0107], [0109]) disposed on the base ([0106]; fig.4);
a housing (12; figs. 4, 7) disposed above the circuit board, the housing comprising first and second side portions opposite to each other and third and fourth side portion opposite to each other;
a bobbin (11; fig. 7) disposed in the housing (12; figs. 4, 7) and comprising a projection (111g; fig. 7) protruding from an outer surface thereof;
a magnet comprising a first magnet unit (122A; fig. 7) disposed at a first [side] of the housing, a second magnet unit (122B; fig. 7) disposed at a second [side] of the housing, and a third magnet unit (123; fig. 7) disposed at a third [side] of the housing;
a first coil (112A, 112B; figs. 6-7) disposed on the bobbin and configured to move the bobbin in an optical axis direction by an interaction with the magnet ([0054], [0066]);
a sensing magnet (113; fig. 7) coupled to the projection of the bobbin ([0068]);
a second coil (221A, 221B, 222; figs. 4, 9) facing the magnet in the optical axis direction and configured to move the housing in a direction perpendicular to the optical axis direction by an interaction with the magnet ([0120]);
a first position sensor (24; fig. 9) facing the sensing magnet in the optical axis direction ([0112]) board and configured to detect a displacement of the bobbin ([0068]-[0070]); and
a second position sensor (23A, 23B; fig. 9) electrically connected to the circuit board ([0109]) and configured to detect a displacement of the housing ([0110]),
wherein the projection of the bobbin is disposed between the first dummy and the second dummy (figs. 4, 7),
wherein the second position sensor comprises:
a first sensor (23A; fig. 9) overlapped with the first magnet unit (122A; fig. 7) in the optical axis direction ([0110]; fig. 6); and
a second sensor (23B; fig. 9) overlapped with the third magnet unit (123; fig. 7) in the optical axis direction ([0110]; fig. 6).
However, Sugawara fails to explicitly disclose that the magnets are located at the corners of the housing. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Sugawara teaches magnets for a VCM located at the sides of the housing. Providing magnets for a VCM at the corners of the housing is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the location of the magnets/dummy magnets with a location at the corners of the housing to achieve the predictable result of moving the lens for AF and OIS.
Regarding claim 18, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 17), in addition, Sugawara discloses, wherein the first position sensor (24), the first sensor (23A), and the second sensor (23B) are disposed between the circuit board and the base (fig. 10).
Regarding claim 19, Sugawara and Official Notice, the combination, discloses everything claimed as applied above (see claim 17), in addition, Sugawara discloses, wherein the projection (111g) of the bobbin (11) comprises a hole, and the sensing magnet (113) is disposed in the hole of the projection ([0068]; fig. 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M BERARDESCA whose telephone number is (571)270-3579. The examiner can normally be reached Mon-Thurs 10-8, Fri 10-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sinh Tran can be reached at (571)272-7564. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PAUL M. BERARDESCA
Examiner
Art Unit 2637
/PAUL M BERARDESCA/Primary Examiner, Art Unit 2637 5/30/2026
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