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.
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Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/884368 in view of Min et al. (U.S. Patent Application Publication No. 2022/0035173).
Claim 1 of the ‘368 application discloses all of the elements of claim 1 of the present application except for the movable part as being for connecting an optical element. Min, however, teaches and renders obvious the connection of the optical element to the movable part (e.g. lens of 1210; Paragraph [0113]) for the purpose of providing movement and optical stabilization of a lens within a camera according to the teachings of Min (Paragraph [0009]).
This is a provisional nonstatutory double patenting rejection.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/884421 in view of Min et al. (U.S. Patent Application Publication No. 2022/0035173).
Claim 1 of the ‘421 application discloses all of the elements of claim 1 of the present application except for the driving assembly. Min, however, teaches and renders obvious the driving assembly (1321-1324, 1221-1222, 1431, and corresponding parts), driving the optical element to move relative to the fixed part (Paragraphs [0112], [0121]) for the purpose of providing movement and optical stabilization of a lens within a camera according to the teachings of Min (Paragraph [0009]).
This is a provisional nonstatutory double patenting rejection.
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.
(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.
Claims 1-2, 5, 9, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Min et al. (U.S. Patent Application Publication No. 2022/0035173).
Regarding claim 1, Min discloses an optical element driving mechanism comprising:
a movable part (Figure 7 element 1200 and corresponding moving parts connected to 1200) for connecting an optical element (e.g. lens of 1210; Paragraph [0113]);
a fixed part (1400) wherein the movable part is moveable relative to the fixed part (Paragraphs [0112], [0121]); and
a driving assembly (1321-1324, 1221-1222, 1431, and corresponding parts), driving the optical element to move relative to the fixed part (Paragraphs [0112], [0121]).
Regarding claim 2, Min discloses the driving assembly as including:
a first coil (Figure 8 element 1221), having a long bar structure, wherein the first coil includes a first section (upper) and a second section (lower), and the second section is parallel to the first section; and
a first magnetic element (1322), having a first magnetic element surface (facing 1221) facing the first coil;
wherein the first coil and the first magnetic element are for driving the movable part to move along a first axis, and the first axis is perpendicular to the first magnetic element surface (Paragraph [0127] specifies driving in the “Y-direction”, see in conjunction with Figure 4).
Regarding claim 5, Min discloses the driving assembly as further including:
a second coil (Figure 8 element 1222), having a long bar structure, wherein the second coil includes a third section (upper) and fourth section (lower), and the third section is parallel to the fourth section; and
a second magnetic element (1323), having a second magnetic element surface facing the second coil.
Regarding claim 9, Min discloses the first section as parallel to the third section (Figure 8).
Regarding claim 12, Min discloses:
a third coil (1431); and
a third magnetic element (1321) having a third magnetic element surface (bottom surface) facing the third coil;
the third coil and the third magnetic element are for driving the movable part to move along a third axis (Paragraph [0127]; x-axis), and the third axis is parallel to the third magnetic element surface.
Regarding claim 13, Min discloses the first axis (y-axis) and the third axis (x-axis) as perpendicular to each other;
the first axis as parallel to the third magnetic element surface; the third axis as parallel to the first magnetic element surface (Figures 4, 7).
Claim Rejections - 35 USC § 103
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 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.
Claims 3-4, 6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Min in view of Kim et al. (U.S. Patent Application Publication No. 2022/0221734 “Kim”).
Regarding claim 3, Min discloses the limitations as discussed above, but fails to disclose the coil and magnetic element configuration. Kim, however, teaches an analogous coil and magnetic element arrangement in which the shortest distance between the first section (Figure 23b element 1322C upper section as labeled below) and the center of the first magnetic element (1311M) is different from the shortest distance between the second section and the center of the first magnetic element (1322C lower section as labeled below).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to configure the coil and magnetic element as proposed. One would have been motivated to configure the elements as proposed to enable a mode minimizing image distortion and deformation (Kim: Paragraph [0227]).
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Regarding claim 4, Min discloses the limitations as discussed above, but fails to disclose the coil and magnetic element configuration. Kim, however, teaches an analogous coil and magnetic element arrangement in which the shortest distance between the first section (Figure 23b element 1322C upper section as labeled below) and the center of the first magnetic element (1311M) is larger than the shortest distance between the second section and the center of the first magnetic element (1322C lower section as labeled below).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to configure the coil and magnetic element as proposed. One would have been motivated to configure the elements as proposed to enable a mode minimizing image distortion and deformation (Kim: Paragraph [0227]).
It is further noted that the configuration is reversed on the right side of figure 23b and that the assignment of the first section and second section of the coil may be swapped.
Regarding claim 6, Min discloses the limitations as discussed above, but fails to disclose the coil and magnetic element configuration. Kim, however, teaches an analogous coil and magnetic element arrangement in which the shortest distance between the first section (Figure 23b element 1322C upper section as labeled below) and the center of the first magnetic element (1311M) is different from the shortest distance between the second section and the center of the first magnetic element (1322C lower section as labeled below).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to configure the coil and magnetic element as proposed. One would have been motivated to configure the elements as proposed to enable a mode minimizing image distortion and deformation (Kim: Paragraph [0227]).
Regarding claim 11, Min discloses the limitations as discussed above, but fails to disclose the coil and magnetic element configuration. Kim, however, teaches an analogous coil and magnetic element arrangement in which the shortest distance between the first section (Figure 23b element 1322C upper section as labeled below) and the center of the magnetic element (1311M) is larger than the shortest distance between the second section and the center of the first magnetic element (1322C lower section as labeled below).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to configure the coil and magnetic element as proposed. One would have been motivated to configure the elements as proposed to enable a mode minimizing image distortion and deformation (Kim: Paragraph [0227]).
Claims 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Min in view of Chiang (U.S. Patent Application Publication No. 2011/0001836).
Regarding claim 7, Min fails to disclose the arrangement of the first and second magnetic elements. Chiang, however, teaches an arrangement of a first magnetic element surface (e.g. 6422/6424) and second magnetic element (6426/6428) as arranged along a second axis (Figure 6, parallel to Z-axis) perpendicular to the first axis (Min: Paragraph [0127]; movement in the x/y direction which is perpendicular to the z-direction in the height direction of the lens).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to arrange the first magnetic element and second magnetic element along a second axis to enable higher driving forces to the actuator with equal electrical current (Chiang: Paragraph [0038]).
Regarding claim 8, Min as modified by Chiang discloses the first magnetic element surface 6422/6424) and the second magnetic element surface (6426/6428) as facing the same direction.
Regarding claim 10, Min as modified by Chiang discloses wherein when viewed along a direction perpendicular to the first magnetic element surface, the second section (e.g. 6223) is located between the first section (6221) and the third section (6225).
Allowable Subject Matter
Claims 14-20 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 14, Min teaches other coils (e.g. 1431-2, 1431-3), but fails to disclose or suggest the arrangement of a fourth coil corresponding to both the first magnetic element and the second magnetic element, wherein the fourth coil and the first magnetic element are for driving the optical element to move along a fourth axis. Each of the coils 1431-2 and 1431-3 correspond to only a single magnetic element.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL H CALEY whose telephone number is (571)272-2286. The examiner can normally be reached M-F 9am - 5pm.
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/MICHAEL H CALEY/ Supervisory Patent Examiner, Art Unit 2871
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