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 .
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.
Specification
The disclosure is objected to because of the following informalities:
a) 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.
b) Several paragraphs of the originally filed specification states “rods 32” which appears to be a typographical error of: rods [[32]] 23
Appropriate correction is required.
Double Patenting
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.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/945041 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/944397 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/940341 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/944391 (US 391). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 391 recites all the limitations of claim 1 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,032,224 (US 224). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 224 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,505,944 (US 944). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 944 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,852,886 (US 886). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 886 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,796,894 (US 894). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 894 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,066,745 (US 745). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 745 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,235,512 (US 512). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 512 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,225,276 (US 276). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 276 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,921,307 (US 307). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 307 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,235,478 (US 478). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 478 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,235,510 (US 510). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 510 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,164,172 (US 172). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 172 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,130,546 (US 546). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 546 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,774,704 (US 704). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 704 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,719,996 (US 996). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 996 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,681,156 (US 156). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 156 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,153,280 (US 280). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 280 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,867,970 (US 970). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 970 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,650,481 (US 481). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 481 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,262,527 (US 527). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 527 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,604,327 (US 327). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 327 recites all the limitations of claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,474,416 (US 416). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 416 recites all the limitations of claim 1.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a) sensor…for detecting the position of the magnescale…in claim 17
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
As to claim 17, the claim recites “a magnescale” which is unclear what such element is, and thus appears subjective to a practitioner of the invention (MPEP 2173.05(b)). Applicant’s specification provides no details what is, or is not, the magnescale. Is this a magnet? Something else? Examiner will understand the claim includes a magnet.
As to claim 17, the claim recites “sensor…for detecting the position of the magnescale” which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Applicant has not provided the necessary structure/material which performs the function of sensing the magnescale. While Applicant’s specification1 discloses a “Hall effect sensor” the specification also states “or other magnetic field sensor” which lacks the necessary structure/material for performing the function.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 18-19 are rejected as dependent upon claim 17.
As to claim 18, the claim recites “the main body is perpendicular to the vertical direction” which is a relative term (MPEP 2173.05(b)). Specifically, the circuit main body is a multidimensional object (e.g. 3D object), thus it is unclear what it means to be perpendicular to the vertical direction. Additionally, what constitutes the vertical direction is entirely arbitrary. For purposes of compact prosecution, Examiner will understand the claim such that so long as there is a printed circuit, such circuit will necessarily have a main body perpendicular to any arbitrary vertical direction.
As to claim 19, the claim recites “the sensor and the rod do not overlap in the vertical direction” which is a relative term (MPEP 2173.05(b)). What constitutes the vertical direction is subjective. The claimed device is a driving mechanism found within a smartphone. Such phones can be oriented in space in any way. Thus, the identical invention would simultaneously infringe and not infringe simply based on how the device is held. For purposes of compact prosecution, Examiner will understand the claim such that so long as the art includes a rod and sensor, such features are necessarily met.
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)(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.
(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.
Claims 1-3, 6, 13-16, 20 are rejected under 35 U.S.C. 102(a1) as being anticipated by Ishimoda et al. (US 2008/0084622 - Ishimoda).
As to claim 1, Ishimoda teaches a driving mechanism for moving an optical element (Ishimoda Figs. 1-9b) comprising
a fixed part (Ishimoda Fig. 1 - 100, 50; Fig. 2 - 10A; Fig. 4 - 10A);
a movable part (Ishimoda Fig. 4 - 2m, 2k, 4m 4k), movably connected to the firx part for holding the optical element (Ishimoda Fig. 4 - 2, 4; para. [0059]);
a driving assembly (Ishimoda Fig. 4 - 20, 20k, 20r; 21, 21k, 21r), configured for moving the movable part relative to the fixed part (Ishimoda para. [0057], [0058]).
As to claim 2, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Ishimoda further teaches a rod extending in a horizontal direction (Ishimoda Fig. 4 - 16, 15), wherein the fixed part includes a base (Ishimoda Fig. 2 - 10A, 10B) and a housing (Ishimoda Fig. 1 - 100) connected to each other (Ishimoda Fig. 1) and the base has a first sidewall (Ishimoda Fig. 4 - 10A) and a second sidewall (Ishimoda Fig. 4 - 10B), wherein a first end portion of the rod is affixed in a first hole of the first sidewall (Ishimoda Fig. 4 - 10A, 16, 15), a second end portion of the rod is affixed in a second hole of the second sidewall (Ishimoda Fig. 4 - 10B, 16, 15), and the movable part is slidably disposed on the rod (Ishimoda Fig. 4 - 2k, 4k; para. [0057], [0058]).
PNG
media_image1.png
715
530
media_image1.png
Greyscale
As to claim 3, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 2, and Ishimoda further teaches the first and second sidewalls are located on opposite sides of the base (Ishimoda Fig. 4 - 10A, 10B), and the first end portion does not protrude from an outer surface of the base (Ishimoda Fig. 4 - 10A, 10B, 15, 16).
As to claim 6, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 2, and Ishimoda further teaches the first and second sidewalls are located on opposite sides of the base (Ishimoda Fig. 4 - 10A, 10B), and the second end portion does not protrude from an outer surface of the base (Ishimoda Fig. 4 - 10A, 10B, 15, 16).
As to claim 13, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 2, and Ishimoda further teaches the base has a protrusion located between the first and second sidewalls (Ishimoda Fig. 4 - 10A, 10B) and the rod is disposed on the protrusion (Ishimoda Fig. 4 - 10A, 10B, 15, 16).
As to claim 14, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 13, and Ishimoda further teaches the protrusion forms a curved surface (Ishimoda Fig. 4 - 10A, 16, 10B, 15; see below) and the rod is disposed on the curved surface (Ishimoda Fig. 4 - 10A, 16, 10B, 15).
PNG
media_image2.png
384
635
media_image2.png
Greyscale
As to claim 15, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 14, and Ishimoda further teaches the radius of curvature of the curved surface is greater than the radius of curvature of the rod (Ishimoda Fig. 4 - 10A, 16, 10B, 15 - fitting holes are larger than the rods).
As to claim 16, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 14, and Ishimoda further teaches the protrusion forms a cavity on the curved surface (Ishimoda Fig. 4 - 10A, 16, 10B, 15 - fitting holes).
As to claim 20, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 2, and Ishimoda further teaches the first sidewall has a first thickness in the horizontal direction (Ishimoda Fig. 4 - 10A), the second sidewall has a second thickness in the horizontal direction (Ishimoda Fig. 4 - 10B), and the first thickness is less than the second thickness (Ishimoda Fig. 4 - 10A, 10B; see below).
PNG
media_image3.png
652
562
media_image3.png
Greyscale
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ishimoda as applied to claim 2 above, and further in view of Yu et al. (US 2018/0017844 - Yu).
As to claim 17, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 2, but doesn’t specify a printed circuit element, a magnescale, and a sensor, wherein the printed circuit element is affixed to the base, the magnescale is disposed on the movable part, and the sensor is disposed on the printed circuit element for detecting the position of the magnescale.
In the same field of endeavor Yu teaches a driving mechanism for an optical element (Yu Fig. 5) having a printed circuit element (Yu Fig. 5 - F; para. [0037]), a magnescale (Yu Fig. 5 - H1, H2; para. [0043]), and a sensor (Yu Fig. 5 - H2, H1; para. [0043]), wherein the printed circuit element is affixed to a base (Yu Fig. 5 - 10, F), the magnescale is disposed on a movable part (Yu Fig. 5 - H2, 30; para. [0041]) , and the sensor is disposed on the printed circuit element for detecting the position of the magnescale (Yu Fig. 5 - H1, F; para. [0043]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide such sensor and magnescale since, as taught by Yu, such elements allow for detecting the position of the optical element (Yu para. [0043]).
As to claim 18, Ishimoda in view of Yu teaches all the limitations of the instant invention as detailed above with respect to claim 17, and Yu further teaches the printed circuit element has a main body (Yu Fig. 5 - F) and a bent portion (Yu Fig. 6 - F101) connected to the main body (Yu Fig. 6), the sensor is disposed on the main body (Yu Fig. 5 - H1), and the main body is perpendicular to a vertical direction (Yu Fig. 5 - F, Z), wherein the sensor and the magnescale at least partially overlap in the vertical direction (Yu Fig. 12 - H1, H2).
As to claim 19, Ishimoda in view of Yu teaches all the limitations of the instant invention as detailed above with respect to claim 18, and Ishimoda/Yu teach the sensor and the rod do not overlap in the vertical direction (Ishimoda Fig. 4 - 16, 15; Yu Fig. 12 - H1, H2). Additionally, such features amount to a rearrangement of parts. It would have been obvious to one of ordinary skill in the art at the time of invention to rearrange the sensor location, since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). Such arrangement/positioning of the sensor allows for form factor packaging.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ishimoda as applied to claim 3 above, and further in view of Ferrari et al. (US 2,969,008 - Ferrari) and Nakayam et al. (US 5,602,681 - Nakayama).
As to claim 4, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 3, but doesn’t specify a metal sheet embedded in the first sidewall and exposed to the first hole, wherein the first end portion of the rod and the metal sheet are bonded to each other by soldering or welding.
In the same field of endeavor Ferrari teaches lens driving mechanism with rods having a metal sheet embedded in the first sidewall and exposed to a first hole (Ferrari Fig. 1 - 40, 41; col. 4:14-20 - metal screw). Ferrari doesn’t specify the rod and sheet are bonded by welding/soldering.
In the same field of endeavor Nakayama teaches welding the ends of rods (Nakayama Fig. 18 - 141a, 141, 141b; col. 9:8-13).
It would have been obvious to one of ordinary skill in the art to provide metal sheets since as taught by Ferrari, such elements (e.g. screws) are well known in the art for the purpose of mounting rods in lens barrels (Ferrari Fig. 1 - 40, 41; col. 4:14-20 - metal screw) and welding since, as taught by Nakayama, such materials allow for attaching rods to additional elements (Nakayama Fig. 18 - 141a, 141, 141b; col. 9:8-13).
PNG
media_image4.png
325
455
media_image4.png
Greyscale
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ishimoda, Ferrari, and Nakayama as applied to claim 4 above, and further in view of Ouchi (US 2011/0128641).
As to claim 5, Ishimoda in view of Ferrari and Nakayama teaches all the limitations of the instant invention as detailed above with respect to claim 4, and Ishimoda/Ferrari further teach the first sidewall forms a recess located adjacent to the metal sheet and communicated with the first hole (Ishimoda Fig. 4 - 15, 16; Ferrari Fig. 1 - 40, 41) but doesn’t specify a glue.
In the same field of endeavor Ouchi teaches lens driving mechanisms with a rod having an end in a hole of a base comprising glue in the hole (Ouchi Fig. 5 - 62, 36; para. [0106]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to bond the rod to the base (Ouchi Fig. 5 - 62, 36; para. [0106]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ishimoda as applied to claim 6 above, and further in view of Ouchi (US 2011/0128641).
As to claim 7, Ishimoda teaches all the limitations of the instant invention as detailed above with respect to claim 6, but doesn’t specify a glue disposed in the second hole for adhering the second portion to the base.
In the same field of endeavor Ouchi teaches lens driving mechanisms with a rod having an end in a hole of a base comprising glue in the hole (Ouchi Fig. 5 - 62, 36; para. [0106]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to bond the rod to the base (Ouchi Fig. 5 - 62, 36; para. [0106]).
Allowable Subject Matter
Claims 8-12 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:
As to claim 8, although the prior art teaches the optical element driving mechanism as detailed above in claims 1+2+6+7, the prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of claim 8, in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper, including the details of the second hole and the sloped surfaces. For example, each of Ishimoda, Ouchi, Ferrari having holes for the rod do not include the details of claim 8 in combination with claims 1+2+6+7.
Claims 9-12 depend on claim 8 and thus are allowable as per their dependency.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Documents - the following documents are cited as examples of optical element drivers having features claimed and disclosed by the instant application, including various rods, driving assemblies, glues/adhesives for the rods, and/or magnetic (e.g. Hall) sensors for detecting the element positioning:
Suzuki (US 12,416,780; 20230100905); Yu et al. (US 11,796,894); Ouchi (US 8,639,036); Ishimoda et al. (US 7,808,731); Ohsato (US 7,362,522; 2006/0262431); Onda (US 6,650,488); Fujii et al. (US 6,069,745); Akada (US 5,812,330); Tanii et al. (US 4,712,871).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. 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.
/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 September 10, 2026
1 Originally filed spec. para. [0037]
Prosecution Insights