DETAILED ACTION
This is the First Action on the Merits for U.S. Patent Application No. 18/841,832, filed 27 August 2024, which is a National Stage Entry of International Application No. PCT/CN2023/087909, filed 12 April 2023, which claims foreign priority to Chinese Application No. CN202211048898.0, filed 30 August 2022.
Claims 1–20 are pending.
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 obviousness-type double patenting rejection is based on a longstanding judicial interpretation of 35 U.S.C. § 101 grounded in public policy 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. An obviousness-type 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 U.S.P.Q.2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 U.S.P.Q.2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 U.S.P.Q. 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 U.S.P.Q. 761 (C.C.P.A. 1982); In re Vogel, 422 F.2d 438, 164 U.S.P.Q. 619 (C.C.P.A. 1970); and In re Thorington, 418 F.2d 528, 163 U.S.P.Q. 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on obviousness-type 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 M.P.E.P. § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in M.P.E.P. § 2159. See M.P.E.P. § 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 C.F.R. § 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to an obviousness-type double patenting (OTDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the OTDP rejection is provisional the reply must be complete. A request to hold the OTDP rejection in abeyance does not meet this completeness requirement and will be considered non-responsive. See M.P.E.P. § 804(I)(B)(1). For a reply to a non-final Office action, see 37 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 1.113(c) may be filed after final for consideration. See M.P.E.P. §§ 706.07(e) and 714.13.
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Claim 1 is provisionally rejected on the ground of obviousness-type double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/841,138 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the required limitations in the present application are rearrangements of the limitations in the ‘138 application, such that every limitation in the claimed invention is claimed in the ‘138 application. A detailed comparison of the two applications is given.
18/841,832
18/841,138
1. A lens carrying device, at least comprising:
a base, comprising a first accommodation portion,
a rotating support, disposed in the first accommodation portion, wherein
the rotating support is rotatably connected to the base,
the rotating support rotates relative to the base around a first axis, and
the rotating support comprises a second accommodation portion;
a swinging support, disposed in the second accommodation portion, wherein
the swinging support is rotatably connected to the rotating support,
the swinging support rotates relative to the rotating support around a second axis,
the swinging support comprises a third accommodation portion, and
the first axis and the second axis are perpendicular to each other; and
a braking assembly, wherein
the braking assembly is disposed between the base and the rotating support, and
the braking assembly is configured to perform braking on the on the rotating support; and/or,
the braking assembly is disposed between the base and the swinging support, and
the braking assembly is configured to perform braking on the swinging support.
1. A lens carrying device, comprising:
a base, comprising a first accommodation portion,
a rotating support, disposed in the first accommodation portion, wherein
the rotating support is rotatably connected to the base,
. . . to drive the rotating support to rotate relative to the base around a first axis;
the rotating support comprises a second accommodation portion,
a swinging support, disposed in the second accommodation portion, wherein
the swinging support is rotatably connected to the rotating support,
. . . to drive the swinging support to rotate relative to the rotating support around a second axis,
the swinging support comprises a third accommodation portion;
the first axis, the second axis, and the third axis are perpendicular to each other.
7. . . . wherein the lens carrying device further comprises a braking assembly,
the braking assembly is disposed between the base and the rotating support, and
the braking assembly is configured to brake the rotating support.
This is a provisional obviousness-type double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 U.S.C. § 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)(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 1 is rejected under 35 U.S.C. § 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2023/0161227 A1 (“Kim”).
Kim, directed to a camera with image stabilization, teaches with respect to claim 1 a lens carrying device, at least1 comprising:
a base, comprising a first accommodation portion (Figs. 1, 13, 15; base 500 with circular mount for piezoelectric device 320),
a rotating support, disposed in the first accommodation portion (Fig. 1, housing 200 connected to base 500 through piezoelectric device 320), wherein
the rotating support is rotatably connected to the base (¶ 0161, piezoelectric device 320 controls the tilt of housing 200),
the rotating support rotates relative to the base around a first axis (id.), and
the rotating support comprises a second accommodation portion (Fig. 1, housing 200 contains space for prism unit 400 and first driving unit 301);
a swinging support, disposed in the second accommodation portion (Figs. 2, 3, guide protrusion 271 on which driving unit 301 is mounted), wherein
the swinging support is rotatably connected to the rotating support (¶ 0104, first piezoelectric device in driving unit 301 controls the tilt of prism unit 400),
the swinging support rotates relative to the rotating support around a second axis (Fig. 13; ¶ 0098, guide protrusion 271 tilts the prism unit about the y axis; ¶ 0163, piezoelectric device 320 tilts the first housing about the x-axis),
the swinging support comprises a third accommodation portion (Fig. 4, ¶¶ 0093–95; prism unit comprises prism mover 430 in which prism 410 is disposed), and
the first axis and the second axis are perpendicular to each other (Fig. 13; ¶ 0098, guide protrusion 271 tilts the prism unit about the y axis; ¶ 0163, piezoelectric device 320 tilts the first housing about the x-axis), and
a braking assembly, wherein the braking assembly is disposed between the base and the rotating support (Fig. 13, ¶¶ 0166–175; yokes 333 and 334 that hold the piezoelectric device 320 and first housing 200 in a set position), and
the braking assembly is configured to perform braking on the rotating support (id.); and/or
the braking assembly is disposed between the base and the swinging support (Fig. 13, ¶¶ 0113–121; yokes 331 and 332 that hold the first driving unit 301 and prism unit 400 in a set position), and
the braking assembly is configured to perform braking on the swinging support (id.)
Allowable Subject Matter
Claims 2–20 are objected to provisionally, pending receipt of a human translation of WO 2022/166677 A1, 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.
The following is a statement of reasons for the indication of allowable subject matter: claim 2 recites a specific active braking structure of a limiting portion and a limiting stopper, in which the limiting stopper comprises a limiting elastic piece and an actuator that drives the elastic piece to engage or disengage with the limiting portion. The statement in the European Search Report for corresponding application EP 4462798 that “Adding an actuator-driven engagement with a limiting recess” to a stopper element “is a routine design choice and does not provide a non-obvious technical advancement” does not meet United States standards for obviousness.
Generally the prior art uses passive dampers, usually as deformable shock absorbers or viscous dashpots. This includes closest prior art CN 212410942 U, used to reject claim 2 in corresponding application PCT/CN2023/087909. The electromagnetic driving mechanism 40 does not cause elastic member 15 to be engaged with or separated from base 10 or connecting plate 22, but elastic member 15 is integrated on base 10 and is fixedly connected to connecting plate 22. While normally making prior art components separable is not sufficient to establish patentability (M.P.E.P. § 2144.04(V)(C)), in this case, changing from deforming a fixed member to actively engaging and disengaging a mobile member changes the principle of operation of the prior art. Closest prior art US 2021/0072492 A1 uses a permanent arrangement of repelling magnets (Fig. 5) and elastic members (Fig. 6) to regulate and center the lens elements, but does not teach the claimed arrangement of elements. Closest prior art DE 102008041310 A1 uses electromagnets as active dampers, but does not drive a limiting elastic piece as claimed. US 2018/0321504, cited in prosecution of the ‘138 application, teaches passive elastic elements 41 that serve as brakes as claimed by providing resistance to a rotation, but do not have active actuators to engage or disengage as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2021/0287384 A1 (cited as prior art in the ‘138 application)
US 2020/0400464 A1 (cited as prior art in the ‘138 application)
US 2019/0230255 A1 (cited as prior art in the ‘138 application)
US 2024/0201469 A1
US 2024/0036304 A1
US 2023/0259002 A1
US 2023/0251550 A1
US 2023/0229058 A1
US 2023/0072601 A1
US 2023/0024495 A1
US 11,539,864 B1
US 2022/0263981 A1
US 2022/0163089 A1
US 2020/0379321 A1
US 2020/0344417 A1
US 2020/0096782 A1
US 2019/0278102 A1
US 2019/0243216 A1
US 2019/0204532 A1
US 2018/0246342 A1
US 2017/0176768 A1
US 2016/0070114 A1
US 2016/0062134 A1
US 2015/0110480 A1
US 2014/0368911 A1
US 2013/0201392 A1
US 2012/0120297 A1
US 2010/0293940 A1
US 7,769,281 B1
US 2007/0122132 A1
US 2004/0140737 A1
US 5,978,600 A
US 5,946,032 A
US 3,703,999 A
WO 2022/166677 A1
CN 113950642 A
GB 2594015 A
EP 3217202 A1
The following prior art was found using an Artificial Intelligence assisted search using an internal AI tool that uses the classification of the application under the Cooperative Patent Classification (CPC) system, as well as from the specification, including the claims and abstract, of the application as contextual information. The documents are ranked from most to least relevant. Where possible, English-language equivalents are given, and redundant results within the same patent families are eliminated. See “New Artificial Intelligence Functionality in PE2E Search”, 1504 OG 359 (15 November 2022), “Automated Search Pilot Program”, 90 F.R. 48,161 (8 October 2025).
US 2017/0176766 A1
US 2023/0164415 A1
US 2018/0309931 A1
US 2018/0217475 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David N Werner whose telephone number is (571)272-9662. The examiner can normally be reached M--F 7:30--4:00 Central.
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/David N Werner/Primary Examiner, Art Unit 2487
1 In United States practice, “comprising” is open-ended and “at least comprising” is not needed to preserve the right to include more components. M.P.E.P. § 2111.03(I).
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