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 .
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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al (US 2021/0302690 A1).
In regard to claim 1, Lin et al discloses a driving mechanism for moving an optical element (page 19, section [0363], Figure 57), comprising: a fixed part (Figure 57, “5-FA”); a movable part (Figure 57, “5-MA”), movably connected to the fixed part for holding the optical element (page 19, section [0363]); and a driving assembly, configured for moving the movable part relative to the fixed part (page 19, section [0363], Figure 57, “5-DA”).
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 respective claim 1 of copending Application Nos. 18/944,391; 18/945,041; 18/944,214; 18/600,090 (reference applications). 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 respective claim 1 of copending Application Nos. 18/504,488; 18/896,083; 18/896,162; 18/896,304; 18/764,566; 18/764,601; 18/768,209; 18/792,907; 18/792,956; 18/937,458; 18/938,911; 19/016,642 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the current application are disclosed in the respective claim of the copending applications and are therefore anticipated by said applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Current Application
Copending Applications
1. A driving mechanism for moving an optical element,
comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element;
and a driving assembly, configured for moving the movable part relative to the fixed part.
18/896,162; 18/896,304
1. A driving mechanism for moving an optical element that has an optical axis, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element, wherein the optical element has an optical axis;
and a driving assembly, configured for moving the movable part relative to the fixed part.
1. A driving mechanism for moving an optical element,
comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element;
and a driving assembly, configured for moving the movable part relative to the fixed part.
18/896,083; 19/016,642
1. A driving mechanism for moving an optical element that has an optical axis, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element; and a driving assembly, configured for moving the optical element relative to the fixed part.
1. A driving mechanism for moving an optical element, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element;
and a driving assembly, configured for moving the movable part relative to the fixed part.
18/792,907
1. A driving mechanism for moving an optical element, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element, wherein the optical element has an optical axis; and a driving assembly, configured for moving the movable part relative to the fixed part.
1. A driving mechanism for moving an optical element, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element; and a driving assembly, configured for moving the movable part relative to the fixed part.
18/792,956
1. A driving mechanism for moving an optical element, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element; and a driving assembly, configured for moving the optical element relative to the fixed part.
1. A driving mechanism for moving an optical element,
comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element;
and a driving assembly, configured for moving the movable part relative to the fixed part.
18/504,488; 18/764,566; 18/764,601; 18/768,209; 18/938,911; 18/937,458
1. A driving mechanism for moving an optical element that has an optical axis, the driving mechanism comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element; and a driving assembly, configured for moving the movable part relative to the fixed part.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over respective claim 1 of U.S. Patent Nos. 12,619,066 B2; 12,693,489 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claim of the current application are disclosed in the respective claim of the Patents and therefore anticipate said claim.
Current Application
U.S. Patent
1. A driving mechanism for moving an optical element, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element; and a driving assembly, configured for moving the movable part relative to the fixed part.
12,619,066 B2
1. A driving mechanism for moving an optical element, comprising: a fixed part; a movable part, movably connected to the fixed part for holding the optical element; a driving assembly, configured for moving the movable part relative to the fixed part, wherein the driving assembly includes a first driving element that drives the movable part to rotate relative to the fixed part around a first axis; and a sensor, wherein the sensor and the first driving element are disposed on the fixed part, and when viewed in a reference direction, the first driving element and the sensor at least partially overlap, wherein the fixed part includes a base and a plate member connected to the base, and a cavity and a protrusion are formed on an inner surface of the plate member, wherein the first driving element is disposed on a bottom surface of the cavity, and the sensor is disposed on a top surface of the protrusion, wherein the bottom surface and the top surface are parallel to the reference direction, and the first driving element and the sensor do not protrude from the inner surface of the plate member.
1. A driving mechanism for moving an optical element, comprising: a fixed part;
a movable part, movably connected to the fixed part for holding the optical element; and a driving assembly, configured for moving the movable part relative to the fixed part.
12,693,489 B2
1. A driving mechanism for moving an optical element, comprising: a fixed part, having a housing and a base connected to each other;
a movable part, movably connected to the fixed part for holding the optical element; a driving assembly, configured for moving the movable part relative to the fixed part, wherein the driving assembly has a coil and a magnetic element, the coil is disposed on the movable part, and the magnetic element and the movable part are received in the housing; and a thin magnetic-permeable element, having a shielding portion located between the magnetic element and a sidewall of the housing, wherein a gap is formed between the shielding portion of the magnetic-permeable element and the sidewall of the housing.
Allowable Subject Matter
Claims 2-20 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: The prior art fails to teach a combination of all the claimed features as presented in claims 2-5: a driving mechanism as claimed, specifically comprising an upper sheet spring and a rear sheet spring, wherein the fixed part includes a base and a housing connected to each other, and the upper and rear sheet springs are connected between the base and the movable part.
The prior art fails to teach a combination of all the claimed features as presented in claims 6-9: a driving mechanism as claimed, specifically comprising a metal sheet, a support member affixed to the metal sheet, and a buffer element encompassing the support member, wherein the metal sheet is embedded in the movable part, and the support member comprises metal material.
The prior art fails to teach a combination of all the claimed features as presented in claims 10-17: a driving mechanism as claimed, specifically comprising a pad and a ball joint, wherein the ball joint pivotally connects the movable part to the fixed part, and the movable part forms a cavity for receiving the pad, wherein a part of the ball joint is located in an opening of the pad.
The prior art fails to teach a combination of all the claimed features as presented in claims 18-20: a driving mechanism as claimed, specifically comprising a plurality of ball elements and a ball joint, wherein the ball joint pivotally connects the movable part to the fixed part, the movable part forms a cavity for receiving the ball elements, and the ball joint contacts the ball elements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C CHOI whose telephone number is (571)272-2324. The examiner can normally be reached Monday- Friday, 9:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CHOI/Primary Examiner, Art Unit 2872 August 8, 2026
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