CTNF 18/926,495 CTNF 82728 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. DETAILED ACTION Notice of Pre-AIA or AIA Status 07-06 AIA 15-10-15 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 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. Specification 06-11 AIA The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. Claim Objections 07-29-01 AIA Claim 8 is objected to because of the following informalities: The limitation “when observed along the second axis, the coil comprises: a first portion; and a second portion, wherein the first portion is closer to the support part than the second portion; wherein along the first axis, the shortest distance between the first portion and the magnetic element is different from the shortest distance between the second portion and the magnetic element” appears to be a conditional claim. For examining purposes, the examiner assumes the first part of the limitation is no longer valid if it is not observed along the second axis . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. Claim 15 is 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. The specific limitation “the first connecting element does not contact the second surface” as presented in claim 15 appears to be unclear. Even though the first connecting element does not directly contact the second surface, it can indirectly contact the second surface via other surfaces and elements. Appropriate correction is required. 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 Claim s 1-4 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Lee et al. (US 2014/0146406) . Regarding claim 1 , Lee et al. (figures 1-7) discloses an optical element driving mechanism, comprising: a movable part, for connecting an optical element (131; see at least paragraph 0043); a fixed part, wherein the movable part may move relative to the fixed part (11); and a driving assembly, wherein the driving assembly drives the movable part to move relative to the fixed part (13). Regarding claim 2 , Lee et al. (figures 1-7) discloses a positioning assembly (12 and 14), wherein the driving assembly includes a coil and a magnetic element, and the positioning assembly positions the coil (151 and 152). Regarding claim 3 , Lee et al. (figures 1-7) discloses wherein the positioning assembly (12 and 14) includes: a side wall, positioning the coil, wherein the side wall includes: a first surface facing the coil (the surface of 210 facing the coil 152; figure 7); and a second surface facing the magnetic element (the surface of 210 facing the magnetic 151; figure 7). Regarding claim 4 , Lee et al. (figures 1-7) discloses wherein the second surface is not parallel to the first surface (the surface of 210 facing the coil 152 and the surface of 210 facing the magnetic 151; figure 7) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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 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. 07-20-aia AIA 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. 07-21-aia AIA Claim 5-10, 12-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2014/0146406) . Regarding claim 5 , Lee et al. discloses the claimed invention except for the first surface has a first axis, parallel to the first surface, wherein: along the first axis, the shortest distance between the coil and the magnetic element is greater than the shortest distance between the second surface and the magnetic element. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first surface has a first axis, parallel to the first surface, wherein: along the first axis, the shortest distance between the coil and the magnetic element is greater than the shortest distance between the second surface and the magnetic element, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Regarding claim 6 , Lee et al. (figures 1-7) discloses wherein the positioning assembly further (12 and 14) includes a support part, fixedly connected to the side wall (1441 and 1442). Lee et al. discloses the claimed invention except for along the first axis, the maximum dimension of the support part is greater than the maximum dimension of the side wall. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have along the first axis, the maximum dimension of the support part is greater than the maximum dimension of the side wall, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Regarding claim 7 , Lee et al. discloses the claimed invention except for the second surface has a second axis, parallel to the second surface, and the second axis is perpendicular to the first axis, wherein: along the second surface, the maximum dimension of the support part is greater than the maximum dimension of the side wall. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the second surface has a second axis, parallel to the second surface, and the second axis is perpendicular to the first axis, wherein: along the second surface, the maximum dimension of the support part is greater than the maximum dimension of the side wall, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Regarding claim 8 , Lee et al. discloses the claimed invention except for when observed along the second axis, the coil comprises: a first portion; and a second portion, wherein the first portion is closer to the support part than the second portion; wherein along the first axis, the shortest distance between the first portion and the magnetic element is different from the shortest distance between the second portion and the magnetic element. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have when observed along the second axis, the coil comprises: a first portion; and a second portion, wherein the first portion is closer to the support part than the second portion; wherein along the first axis, the shortest distance between the first portion and the magnetic element is different from the shortest distance between the second portion and the magnetic element, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Regarding claim 9 , Lee et al. discloses the claimed invention except for along the first axis, the shortest distance between the first portion and the magnetic element is greater than the shortest distance between the second portion and the magnetic element. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have along the first axis, the shortest distance between the first portion and the magnetic element is greater than the shortest distance between the second portion and the magnetic element, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Regarding claim 10 , Lee et al. discloses the claimed invention except for along the first axis, the shortest distance between the second portion and the magnetic element and the shortest distance between the first portion and the magnetic element has a difference value, and the difference value is at least 0.008 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have along the first axis, the shortest distance between the second portion and the magnetic element and the shortest distance between the first portion and the magnetic element has a difference value, and the difference value is at least 0.008 mm, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Regarding claim 12 , Lee et al. (figures 1-7) discloses a circuit assembly, electrically connected to the driving assembly, wherein the circuit assembly is at least partially disposed on the support part (153; figure 7). Regarding claim 13 , Lee et al. (figures 1-7) discloses wherein the circuit assembly (153) comprises: a first connecting part, corresponding to an external circuit; and a second connecting part, corresponding to the driving assembly (1531 and 1532); wherein along the second axis (x, y or z direction), the center of the movable part is located between the first connecting part and the second connecting part (131). Regarding claim 14 , Lee et al. (figures 1-7) discloses a first connecting element (1532a, 1311, and the connecting layers between the first surface and 13; figure 7), wherein the coil is connected to the positioning assembly via the first connecting element; and the first connecting element is in direct contact with the first surface and the support part (1441 and 1442). Regarding claim 15 , Lee et al. (figures 1-7) discloses wherein the first connecting element does not contact the second surface (the surface of 210 facing the magnetic 151; figure 7). Regarding claim 16 , Lee et al. (figures 1-7) discloses a protecting assembly and a second connecting element (14422 and the connecting element between 14422 and 14421), wherein the protecting assembly corresponds to the driving assembly. Regarding claim 17 , Lee et al. (figures 1-7) discloses wherein: the side wall further includes a third surface, the protecting assembly includes a protecting element, and the protecting element is disposed on the third surface; and the direction in which the third surface is facing is different from the first surface and the second surface (xyz direction; figure 2). Regarding claim 19 , Lee et al. (figures 1-7) discloses a guiding assembly (141-143), wherein the movable part moves relative to the fixed part via the guiding assembly, and the guiding assembly includes: a guiding element, disposed on the support part; and a corresponding part, corresponding to the guiding element, wherein the corresponding part moves relative to the guiding element (a plurality of rolling members 143 (four into two pairs as shown) and the elastic pre-stress structure 144. A pair of the rolling members 143 is restrained to move inside a longitudinal Z-axial channel formed between the groove 141 and the constraint block 142, while another pair of the rolling members 143 is restrained to move inside another longitudinal Z-axial channel formed between another groove 141' and the elastic pre-stress structure 144. Upon such an arrangement, the lens carrier 131 can thus shift along the Z axis with respect to the frame 12 inside the inner compartment 110; see at least paragraph 0038). The limitation, “wherein the corresponding part moves relative to the guiding element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so. Regarding claim 20 , Lee et al. (figures 1-7) discloses a sensing assembly (161) for sensing the movement of the movable part, wherein: the sensing assembly is at least partially disposed on the support part; and the guiding element and the sensing assembly are disposed on different surfaces of the support part (figure 2), wherein these surfaces face different directions . 07-21-aia AIA Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2014/0146406) in view of Ozaki et al. (DE 11-2013-006750) . Regarding claim 20 , Lee et al. discloses the limitations as shown in the rejection of claim 10 above. However, Lee et al. is silent regarding wherein the coil is made of a lead wire, and the difference value is greater than the dimension of the cross-section of the lead wire. Ozaki et al. teaches wherein the coil is made of a lead wire (see at least page 30; 6 th paragraph). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coils as taught by Ozaki et al. in order to improve the efficiency of rotary electric machines. In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the difference value is greater than the dimension of the cross-section of the lead wire, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 18 is 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 specific limitations of “wherein the second connecting element is in direct contact with the protecting element, the coil, and the third surface” in the combination as claimed in claim 18 are not provided nor made obvious by the prior art of record. Claim 18 would therefore be allowable if rewritten in independent form . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LAUREN NGUYEN/Primary Examiner, Art Unit 2871 Application/Control Number: 18/926,495 Page 2 Art Unit: 2871 Application/Control Number: 18/926,495 Page 3 Art Unit: 2871 Application/Control Number: 18/926,495 Page 4 Art Unit: 2871 Application/Control Number: 18/926,495 Page 5 Art Unit: 2871 Application/Control Number: 18/926,495 Page 6 Art Unit: 2871 Application/Control Number: 18/926,495 Page 7 Art Unit: 2871 Application/Control Number: 18/926,495 Page 8 Art Unit: 2871 Application/Control Number: 18/926,495 Page 9 Art Unit: 2871
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