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
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).
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Wu et al. (US 20230209201 A1) . Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of Wu anticipates the claim of the current application.
Instant application
Patent: US 20230209201 A1
A method for controlling an optical element driving mechanism, comprising: providing an optical element driving mechanism, wherein the optical element driving mechanism comprises a movable portion and a fixed portion; and driving the movable portion to move in a first dimension relative to the fixed portion.
A method for controlling an optical element driving mechanism, comprising: controlling a driving assembly by a control assembly to drive a movable portion moving relative to a fixed portion; wherein the movable portion is used for connecting an optical element, and the movable portion is movable relative to the fixed portion.
Claims 2-17 are rejected, for their dependency on claim 1.
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.
(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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 20230296963 A1).
Regarding claim 1, Li discloses in at least figure 5, a method for controlling (an electrical signal applied to the piezoelectric material is controlled to enable the piezoelectric material to generate mechanical deformation, so as to push another component of the ultrasonic piezoelectric motor 20 to move through the deformation, and further drive the camera lens 10 to move paragraph [0132]) an optical element driving mechanism (ultrasonic piezoelectric motor 20 fig. 5), comprising:
providing an optical element driving mechanism (ultrasonic piezoelectric motor 20 fig. 5),
wherein the optical element driving mechanism (ultrasonic piezoelectric motor 20 fig. 5) comprises a movable portion (carrier 23 fig. 5) and a fixed portion (frame 22 fig. 5); and
driving (the carrier 23 can move in the Z direction relative to the frame 22 paragraph [0170]) the movable portion (carrier 23 fig. 5) to move in a first dimension (z direction fig. 5) relative to the fixed portion (frame 22 fig. 5).
Regarding claim 2, Li discloses all the limitations of claim 1 and further discloses, wherein the optical element driving mechanism (ultrasonic piezoelectric motor 20 fig. 5) further comprises a first driving portion (Z-direction piezoelectric driver 28 fig. 5) and a second driving portion (X-direction piezoelectric driver 29 fig. 5), and the method (an electrical signal applied to the piezoelectric material is controlled to enable the piezoelectric material to generate mechanical deformation, so as to push another component of the ultrasonic piezoelectric motor 20 to move through the deformation, and further drive the camera lens 10 to move paragraph [0132]) further comprises:
outputting a first driving signal (the Z-direction drive circuit 260 may generate the first electrical signal to control the Z-direction piezoelectric driver 28 paragraph [0201]) to the first driving portion (Z-direction piezoelectric driver 28 fig. 5); and
outputting a second driving signal (the X-direction drive circuit 240 is configured to generate a drive signal for driving the X-direction piezoelectric driver 29 paragraph [0146]) to the second driving portion (X-direction piezoelectric driver 29 fig. 5).
Regarding claim 3, Li discloses all the limitations of claim 2 and further discloses, wherein the first driving signal (the Z-direction drive circuit 260 may generate the first electrical signal to control the Z-direction piezoelectric driver 28 paragraph [0201]) and the second driving signal (the X-direction drive circuit 240 is configured to generate a drive signal for driving the X-direction piezoelectric driver 29 paragraph [0146]) are different from each other (the z and x drive signals are different paragraphs [0201] and [0146]).
Claim Rejections - 35 USC § 103
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 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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al.(US 20230296963 A1) as applied to claim 1 above and in view of Yu et al. (US 20190129133 A1).
Regarding claim 4, Li discloses all the limitations of claim 2.
Li does not disclose, further comprising:
sensing the movement of the movable portion relative to the fixed portion to output a first sensing signal.
However Hu discloses in at least figure 1, further comprising:
sensing the movement (the position detecting unit 240 calculates a position of the lens barrel moving by the electromagnetic interaction between the magnet and the driving coil 220 through the detection target 230 to generate the feedback signal Sf paragraph [0066]) of the movable portion (the position detecting unit 240 may correspond to the OIS sensing coils 122d_1, 122d_2, 122d_3, and 122d_4 included in the second actuator 122 paragraph [0068] and the second actuator 122 is configured to move the lens module 130 in an X-axis direction and a Y-axis direction paragraph [0041]) relative to (the lens module 130 can move in an optical axis direction and directions perpendicular to the optical axis in the housing unit 110 paragraph [0037] and the housing unit 110 includes a housing 111 paragraph [0038]) the fixed portion (housing 111 fig. 1) to output (provide the feedback signal Sf to the driving device 210 paragraph [0066]) a first sensing signal (feedback signal Sf fig. 2).
Therefore it would be obvious for one skilled in the art before the effective filling date of the claimed invention to output a sensing signal as taught by Yu in the method of Li. The position detecting unit 240 includes sensing coils, and calculates a position of the lens barrel in response to inductances of the sensing coils (paragraph [0068]).
Regarding claim 5, the combination of Li and Yu discloses all the limitations of claim 4.
Li does not disclose further comprising:
a first control unit outputs the first driving signal based on the first sensing signal and a main command signal.
However Yu further discloses, further comprising:
a first control unit (divining device 210 fig. 2) outputs the first driving signal (driving signal Sdr fig. 2) based on (the divining device 210 generates a driving signal Sdr in response to an input signal Sin applied from an external source and a feedback signal Sf generated by the position detecting unit 240 paragraph [0065]) the first sensing signal (feedback signal Sf fig. 2) and a main command signal (input signal Sin fig. 2).
Therefore it would be obvious for one skilled in the art before the effective filling date of the claimed invention to output a driving signal based on the sensing signal as taught by Yu in the method of Li. The position detecting unit 240 includes sensing coils, and calculates a position of the lens barrel in response to inductances of the sensing coils (paragraph [0068]).
Allowable Subject Matter
Claims 6-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 6 would be allowable, the combination of Li and Yu discloses all the limitations of claim 5.
Li or in combination with another reference does not disclose, further comprising:
outputting a first contact signal to a second control unit.
There is no prior art in the record that teaches outputting a first contact signal to a second control unit. Therefore the combination of features is considered to be allowable.
Claims 7-17 would be allowable for their dependency on claim 9.
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.
Kasamatsu (US 10613342 B2) discloses an image stabilizer with position detector.
Cui (US 9888164 B1) discloses a digital camera with two values of a drive input signal.
Chung et al. (US 20170150055 A1) discloses a photographing apparatus with a sensing signal and a driving signal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW R WRIGHT whose telephone number is (703)756-5822. The examiner can normally be reached Mon-Thurs 7:30-5 Friday 8-12.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at 1-571-270-1284. 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.
/ANDREW R WRIGHT/Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/Primary Examiner, Art Unit 2872
Prosecution Insights