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.
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.
Claims 1, 2, 4-5, 7, 10-14, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11,895,382 in view of Official Notice.
Regarding claim 1, claims 1, 3 and 4 of ‘382 teach all the limitations of instant claim 1 except that power signal having the first voltage is a ground signal.
However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Claims 1, 3, and 4 of ‘382 teaches providing power to the first and second driver ICs using the third and fourth terminals of the circuit board. Power signals are well-known to include a positive voltage signal along with a ground signal. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the undisclosed lower voltage in claims 1, 3, and 4 of ‘382 with a ground voltage to achieve the predictable result of powering the two driver ICs.
Regarding claim 2, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 1 of ‘382 teaches all the limitations of instant claim 2.
Regarding claim 4, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 1 of ‘382 teaches all the limitations of instant claim 4 except that the position sensor detecting movement of the bobbin is a driver IC.
However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
The combination teaches a first position sensor for detecting movement of the bobbin. Providing the first position sensor as a driver IC is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the first position sensor of the combination with a driver IC to achieve the predictable result of simplifying the circuit board arrangement.
Regarding claim 5, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 4 of ‘382 discloses that the second voltage is higher than the first voltage.
Regarding claim 7, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), however, the combination fails to explicitly disclose that the second coil includes a first coil unit to move the bobbin in the second direction and a second coil unit to move the bobbin in the third direction. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
The combination teaches a second coil. Providing a second coil comprising a first coil unit for moving the bobbin in an X direction and a second coil unit for moving the bobbin in a Y direction is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the second coil with an x coil and a y coil to achieve the predictable result of performing shake compensation in both the x and y direction.
Regarding claim 10, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 4), in addition, claim 3 of ‘382 teaches all the limitations of instant claim 10.
Regarding claim 11, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 10), in addition, claim 3 of ‘382 discloses that the lower voltage signal is supplied to the first position sensor and the second position sensor.
Regarding claim 12, claims 1, 3, and 4 of ‘382 and Official Notice, the combination, discloses everything claimed as applied above (see claim 7), in addition, claim 1 discloses a magnet facing the second coil.
However, the combination fails to explicitly disclose the magnet includes a first magnet unit and a second magnet unit facing the first and second coil units. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
The combination teaches an OIS magnet which faces the OIS coil. Providing an X magnet and Y magnet facing an X coil and a Y coil is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the magnet with an X magnet and Y magnet to achieve the predictable result of performing shake compensation in both the x and y direction.
Regarding claim 13, claims 1, 3, and 4 of ‘381 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 1 teaches all the limitations of instant claim 13.
Regarding claim 14, claims 1, 3, and 4 of ‘381 and Official Notice, the combination, discloses everything claimed as applied above (see claim 2), however, the combination fails to explicitly disclose that the first and second driver ICs use I2C communication. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
The combination teaches first and second driver ICs which transmit and receive signals. Using I2C communication between ICs is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the undisclosed interface between the ICs and the other components with I2C communication to achieve the predictable result of transmitting and receiving data to perform shake compensation.
Regarding claim 20, claim 1 of ‘382 teaches all the limitations of instant claim 20.
Claims 1-2, 13, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 1, claim 1 of ‘547 teaches all the limitations of instant claim 1 except for the second coil. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Claim 1 of ‘547 teaches a bobbin which moves in second and third directions perpendicular to the first direction. Moving a bobbin for OIS using an X magnet, an X coil, a Y magnet, and a Y coil is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the undisclosed actuator with the VCM described above to achieve the predictable result of performing image stabilization.
Regarding claim 2, claim 1 of ‘547 discloses everything claimed as applied above (see claim 1), in addition, claim 1 of ‘547 teaches all the limitations of instant claim 2.
Regarding claim 13, claim 1 of ‘547 discloses everything claimed as applied above (see claim 1), in addition, claim 1 of ‘547 teaches all the limitations of instant claim 13.
Regarding claim 20, claim 1 of ‘547 teaches all the limitations of instant claim 20.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 3, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 3 of ‘547 teaches all the limitations of instant claim 3.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 4, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 4 of ‘547 teaches all the limitations of instant claim 4.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 5, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 5 of ‘547 teaches all the limitations of instant claim 5.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 7, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 7 of ‘547 teaches all the limitations of instant claim 7.
Claims 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 8 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claims 8-9, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 7), in addition, claim 8 of ‘547 teaches all the limitations of instant claims 8-9.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 12, claims 1 and 7 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 7).
However, the combination fails to explicitly disclose the magnet includes a first magnet unit and a second magnet unit facing the first and second coil units. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
The combination teaches an OIS magnet which faces the OIS coil. Providing an X magnet and Y magnet facing an X coil and a Y coil is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the magnet with an X magnet and Y magnet to achieve the predictable result of performing shake compensation in both the x and y direction.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 14, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 2), in addition, claim 14 of ‘547 teaches all the limitations of instant claim 14.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 15, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 1), in addition, claim 15 of ‘547 teaches all the limitations of instant claim 15.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, and 16 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 16, claim 1 of ‘547 and Official Notice, the combination, discloses everything claimed as applied above (see claim 15), in addition, claim 16 of ‘547 teaches all the limitations of instant claim 16.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,177,547 in view of Official Notice.
Regarding claim 17, claim 17 of ‘547 teaches all the limitations of instant claim 17 except for the second coil. However, the examiner takes official notice of the fact that it was well known in the art before the effective filing date of the claimed invention (AIA ) to provide this.
Claim 17 of ‘547 teaches a bobbin which moves in second and third directions perpendicular to the first direction. Moving a bobbin for OIS using an X magnet, an X coil, a Y magnet, and a Y coil is well-known. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to substitute the undisclosed actuator with the VCM described above to achieve the predictable result of performing image stabilization.
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.
Claim(s) 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (US 2016/0277684 A1) hereinafter referenced as Park.
Regarding claim 20, Park discloses A device for performing handshake correction comprising:
a base (210; fig. 2);
a circuit board (250; fig. 2);
a bobbin (110; fig. 2) disposed above the base and configured to move in a first direction ([0055]); and
a position sensor (170, 240a, 240b; fig. 2) conductively connected to the circuit board ([0173]) and detect a movement of the bobbin ([0102], [0195]).
Allowable Subject Matter
Claims 6, 18, and 19 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 claims 6, 18, and 19, the closest prior art Saito et al. (US 2021/0231906 A1) discloses two driver ICs (353e, 353f; fig. 25) detecting movement of the bobbin sharing the power, ground, data, and clock terminals of the circuit board (344; fig. 25). However, Saito fails to disclose that the two driver ICs detect movement of the bobbin in the second direction perpendicular to the first direction and the third direction perpendicular to the first direction and different from the second direction respectively. Rather, the two driver ICs of Saito detect movement of the bobbin in undisclosed directions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M BERARDESCA whose telephone number is (571)270-3579. The examiner can normally be reached Mon-Thurs 10-8, Fri 10-2.
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PAUL M. BERARDESCA
Examiner
Art Unit 2637
/PAUL M BERARDESCA/Primary Examiner, Art Unit 2637 4/1/2026