CTNF 18/925,372 CTNF 91492 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Claim 1 of this application is patentably indistinct from claim 1 of Application No. 18/926,495. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co. , 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. 08-32 AIA Claim 1 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/926,495 . This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. In the instant claim and the copending claim are identical in scope. The wording differences (“member/element”, “portion/part”, and “configured/for”) are merely synonymous and do not patentably distinguish the claimed subject matter. Therefore, the claims define the same invention . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-2 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Liu et al. US 2020/0241236 . Regarding claim 1 , Liu teaches an optical member driving mechanism (para 0002: teaches a lens driving module, para 0037: lens driving module 10, and Fig. 2: 10), comprising: a movable portion (para 0045, 0048: movement of the lens holder 200 relative to the base 500), configured to connect an optical member (para 0050: “the lens holder 200 and the lens 30 disposed thereon can be driven to move upwardly or downwardly relative to the base 500”); a fixed portion (Fig. 3: upper housing 100 and base 500), wherein the movable portion is movable relative to the fixed portion (para 0048: “The lens holder 200 can be hung in the box formed by the upper housing 100 and the base 500 by the first elastic member E1 and the second elastic member E2. Moreover, when the lens holder 200 moves relative to the base 500”); and a driving assembly (para 0038: the first electromagnetic driving assembly 300 and second electromagnetic driving assembly 400, para 49: listing first electromagnetic driving assembly 300 and second electromagnetic driving assembly 400 as components of the module), configured to drive the movable portion to move relative to the fixed portion (para 0049: the lens holder 200 can be driven to move relative to the base 500 along the Z-axis by electromagnetic effect between the first electromagnetic driving assembly 300 and the second electromagnetic driving assembly 400. Para 0050 further teaches: explaining that current through the driving coil causes electromagnetic interaction with magnets, driving lens holder 200 and lens 30 upward/downward relative to base 500 and the image sensor for focus adjustment). Regarding claim 2 , Liu teaches the optical member driving mechanism as claimed in claim 1, wherein as observed along a main axis, the fixed portion (see Fig. 7A-7B: base 500) comprises a polygonal profile (see para 0052 and Fig. 7A: based 500 having rectangular shape), and the polygonal profile comprises: a first side (see para 0052 and Fig. 7A-7B: base 500 comprises two first sides 501), extending along a first axis (see Fig. 7A: side 501 extends along Y axis); and a second side (see para 0052 and Fig. 7A-7B: base 500 comprises two first sides 502), extending along a second axis (see Fig. 7A: side 502 extends along X axis), wherein the first axis is not parallel to the second axis (as shown in Fig. 7A: X and Y axis are perpendicular to each other), largest dimensions of the first side along the first axis are different from largest dimensions of the second side along the second axis (see para 0052: “The length of the second side 502 is greater than that of the first side 501. Thus, the base 500 substantially has a rectangular structure.”), and the driving assembly is situated at the first side (para 0053: teaches that the first protrusion 510, the platform 540, the poles 550, the later wall 560 and the recess 570 are adjacent to the first side 501, and para 0060: further teaches that the second electromagnetic driving assembly 400 is attached to the sticking surface 510 of the latera wall 560) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 3-17 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The closest secondary prior art for claim 3 is Chan et al. US 2017/0168314 . Regarding claim 3 , Liu teaches the optical member driving mechanism as claimed in claim 2, wherein the driving assembly comprises: a coil (see Fig. 3 and para 0050: coil 300); a first magnetic member (Fig. 3: first magnet 400), corresponding to the coil (300); and a second magnetic member (second magnet 400), adjacent to the first magnetic member (as shown in Fig. 3: two magnet 400 are adjacent i.e., since the claim doesn’t narrowly define the term adjacent, as shown in Fig. 3, under BRI the two magnets 400 are considered to be adjacent). However, Liu fails to teach : wherein the first magnetic member has a first surface facing the coil, and the first surface is perpendicular to a third axis, the first magnetic member further has a second surface facing the second magnetic member, and the second surface is perpendicular to a fourth axis, the second magnetic member has a third surface facing the first magnetic member, and the third surface is perpendicular to the fourth axis, and as observed along the fourth axis, at least a portion of the second surface does not overlap the third surface . In the same field of endeavor, Chan teaches a driving mechanism (see Fig. 4), comprising a coil (C1) a first magnet (M1), a second magnet (M2), wherein the first magnetic member (M1) has a first surface facing the coil (see Fig. 4: M1 has a surface that face coil C1), and the first surface is perpendicular to a third axis (as shown in Fig. 4: surface that face C1 is perpendicular to X axis direction), the first magnetic member (M1) further has a second surface facing the second magnetic member (as shown in Fig. 4: the lower surface of M1 faces the upper surface of M2), and the second surface is perpendicular to a fourth axis (as shown in Fig. 4: lower surface of M1 is perpendicular to Z axis), the second magnetic member (M2) has a third surface facing the first magnetic member (Fig. 4 the upper surface of M2 which faces the lower surface of M1), and the third surface is perpendicular to the fourth axis (as shown in Fig. 4: the upper surface of M1 is perpendicular to the Z axis). The combination of Liu and Chan fails to teach: as observed along the fourth axis, at least a portion of the second surface does not overlap the third surface . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2017/0094182 (Fig. 12G), US 2014/0009631 (Fig. 6), US 2011/0205648 (fig. 3), US 2011/0096178 (Fig. 4), US 2014/0160311 and US 2011/0013895 (Fig. 2) teaches, first and second magnet being overlapped. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EPHREM ZERU MEBRAHTU whose telephone number is (571)272-8386. The examiner can normally be reached 10 am -6 pm (M-F). 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, Stephone Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /EPHREM Z MEBRAHTU/Primary Examiner, Art Unit 2872 Application/Control Number: 18/925,372 Page 2 Art Unit: 2872 Application/Control Number: 18/925,372 Page 3 Art Unit: 2872 Application/Control Number: 18/925,372 Page 4 Art Unit: 2872 Application/Control Number: 18/925,372 Page 5 Art Unit: 2872 Application/Control Number: 18/925,372 Page 6 Art Unit: 2872 Application/Control Number: 18/925,372 Page 7 Art Unit: 2872
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