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 .
DETAILED ACTION
The instant application having Application No. 18/979,916 filed on December 13, 2024 is presented for examination by the examiner.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Drawings
The applicant’s drawings submitted on December 13, 2024 are acceptable for examination purposes.
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. 18/979,436 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Instant application
Co-pending application 18/979,436
1. An optical element driving mechanism, comprising:
a first movable portion used for connecting an optical element;
a fixed portion, wherein the first movable portion is movable relative to the fixed portion; and
a driving assembly used for driving the first movable portion to move relative to the fixed portion.
1. An optical element driving mechanism, comprising:
a first movable portion used for connecting an optical element;
a fixed portion, wherein the first movable portion is movable relative to the fixed portion; and
a driving assembly used for driving the first movable portion to move relative to the fixed portion.
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. 18/978,558 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Instant application
Co-pending application 18/978,558
1. An optical element driving mechanism, comprising:
a first movable portion used for connecting an optical element;
a fixed portion, wherein the first movable portion is movable relative to the fixed portion; and
a driving assembly used for driving the first movable portion to move relative to the fixed portion.
1. An optical element driving mechanism, comprising:
a movable portion used for connecting an optical element;
a fixed portion, wherein the movable portion is movable relative to the fixed portion; and
a driving assembly used for driving the movable portion to move relative to the fixed portion.
Note that the addition of the word “first” to the “movable portion” is merely a numeric indicator that does not change the scope of the claim.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsu et al. US 2021/0223504 A1 (hereafter Hsu).
Regarding claim 1, Hsu teaches (Figs. 18-37) “An optical element driving mechanism (optical system 3-1000, with optical element 3-1 and first drive mechanism 3-D1), comprising:
a first movable portion (first movable part 3-M1 with holder 3-70 and frame 3-80) used for connecting an optical element (paragraph [0279]: “The first movable part 3-M1 is used for connected to a first optical element 3-1”);
a fixed portion (immovable part 3-I), wherein the first movable portion is movable relative to the fixed portion (paragraph [0279]: “The first movable part 3-M1 is movable relative to the immovable part 3-I”); and
a driving assembly (first drive mechanism 3-D1) used for driving the first movable portion to move relative to the fixed portion (e.g. paragraph [0279]: “The first movable part 3-M1 is movable relative to the immovable part 3-I via the supporting assembly 3-H and the first drive mechanism 3-D1.”).”
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang US 2021/0124145 A1 (hereafter Zhang).
Regarding claim 1, Zhang teaches “An optical element driving mechanism (first camera module 100), comprising:
a first movable portion (rotating member 20 or lens assembly 70 with moving member 72) used for connecting an optical element (prism 24 or lens unit 74);
a fixed portion (fixing member 10), wherein the first movable portion is movable relative to the fixed portion (paragraph [0122]: “a rotating member 20 disposed on and rotatable relative to the fixing member 10” and paragraph [0160]: “The third drive mechanism 76 is configured to drive the moving member 72 in a direction of the optical axis of the lens unit 74.”); and
a driving assembly (drive mechanism 50 or third drive mechanism 76) used for driving the first movable portion to move relative to the fixed portion (paragraph [0146]: “The drive mechanism 50 may be controlled to drive the rotating member 20 to rotate” and paragraph [0160]: “The third drive mechanism 76 is configured to drive the moving member 72 in a direction of the optical axis of the lens unit 74.”).”
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. US 2021/0223504 A1 (hereafter Hsu) as applied to claim 1 above, and further in view of Zhang US 2021/0124145 A1 (hereafter Zhang).
Regarding claim 2, Hsu teaches “The optical element driving mechanism as claimed in claim 1, further comprising a second movable portion (supporting element 3-50 with structural strengthening element 3-501 paragraph [0308]: “The supporting element 3-50 is movable relative to the holder 3-70, the frame 3-80, and the immovable part 3-I.”) corresponding to the driving assembly (3-50 “corresponds to” 3-D1 at least in the sense that they are both part of the mechanism that moves the optical element and in the sense that one of the L-shaped legs of 3-50 is located on the same side as one of the magnet-coil pairs of 3-111/3-112 or 3-121/3-122, see Fig. 21), the second movable portion comprising:
a first main body (3-50) made of … material (paragraph [0313]: “the supporting element 3-50 is made of a plastic material”); and
a first metal assembly comprises metal (paragraph [0313]: “the supporting element structural strengthening element 3-501 is made of a metal material”) and disposed on the first main body (see Fig. 25 and paragraph [0313]: “The supporting element structural strengthening element 3-501 is placed inside the supporting element 3-50 to strengthen the structural strength of the supporting element 3-50. For example, the supporting element structural strengthening element 3-501 is formed inside the case 3-10 supporting element 3-50 by insert molding.” Being inside 3-50 is considered to being “on” 3-50, because the metal assembly in the instant application is similarly disposed in the first main body see e.g. paragraph [0060]: “the second movable portion 1220 may further include a first metal assembly 1222 disposed in the first main body 1221. In some embodiments, the first metal assembly 1222 may include metal and may be disposed in the first main body 1221, such as may be partially embedded in the first main body 1221”);
wherein:
the driving assembly comprises a first circuit assembly (first circuit mechanism 3-C1 of 3-20 and 3-30), and the first metal assembly corresponds to the first circuit assembly (3-50 and 3-30 correspond to one another at least in the sense that the corners of 3-50 are proximate to the cut-out corners of 3-30, see Figs. 21, 24 and 25).”
However, Hsu fails to explicitly teach “a first main body made of dielectric material” instead merely disclosing plastic. One of ordinary skill in the art would know that plastic materials are typically dielectric, see paragraph [0053] of the instant application “non-conductive materials such as dielectric materials like plastic”, however, it is possible to add metallic particles to plastic such that it would not be dielectric. Thus Hsu does not necessarily anticipate this limitation.
Zhang teaches (claim 1) “An optical element driving mechanism (first camera module 100), comprising:
a first movable portion (rotating member 20 or lens assembly 70 with moving member 72) used for connecting an optical element (prism 24 or lens unit 74);
a fixed portion (fixing member 10), wherein the first movable portion is movable relative to the fixed portion (paragraph [0122]: “a rotating member 20 disposed on and rotatable relative to the fixing member 10” and paragraph [0160]: “The third drive mechanism 76 is configured to drive the moving member 72 in a direction of the optical axis of the lens unit 74.”); and
a driving assembly (drive mechanism 50 or third drive mechanism 76) used for driving the first movable portion to move relative to the fixed portion (paragraph [0146]: “The drive mechanism 50 may be controlled to drive the rotating member 20 to rotate” and paragraph [0160]: “The third drive mechanism 76 is configured to drive the moving member 72 in a direction of the optical axis of the lens unit 74.”).”
(claim 2) “a first main body (rear cover 204) made of dielectric material (paragraph [0115]: “a portion of the rear cover 204 may be made of a dielectric or other low conductivity material.); and
a first metal assembly comprises metal (paragraph [0115]: “the rear cover 204 or at least some of the structures constituting the rear cover 204 may be formed from metal components.”) and disposed on the first main body (paragraph [0115]: “the rear cover 204 or at least some of the structures constituting the rear cover 204 may be formed from metal components.”).”
Zhang further teaches (paragraph [0115]): “The rear cover 204 may be made of plastic, glass, ceramic, fiber composite, metal (e.g., stainless steel, aluminum, etc.), or other suitable materials or a combination of these materials. In some embodiments, a portion of the rear cover 204 may be made of a dielectric or other low conductivity material.”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
In the instant case, Hsu teaches a metal-reinforced plastic main body while Zhang teaches that a main body where at least some of the structures are formed from metal components could be either plastic or a dielectric. Zhang further teaches that a dielectric has the advantage of a low conductivity.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a dielectric as the material for the main body as taught by Zhang in the optical element driving mechanism of Hsu since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07. One would have been motivated to choose a dielectric material as taught by Zhang for the advantage of having a low conductivity as taught by Zhang paragraph [0115]).
Allowable Subject Matter
Claims 3-20 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:
Regarding claim 3, the Hsu - Zhang combination teaches “The optical element driving mechanism as claimed in claim 2,” and Hsu further teaches “further comprising a first amplification element (case structural strengthening element 3-11, see paragraph [0288]: “the case structural strengthening element 3-11 is made of a magnetically-permeable material” and paragraph [0314]: “the magnetic attraction force generated between the case structural strengthening element 3-11 and the first magnetic element 3-111 and/or the second magnetic element 3-121 may be used for positioning the relative positions of the case 3-10 and frame 3-80.” Thus 3-11 is an amplification element at least in the sense that it is made of a material which is capable of guiding/amplifying a magnetic field and providing a magnetic attraction.) disposed [proximate to] the first circuit assembly and the first metal assembly (see Fig. 21 3-11 is part of 3-10 which is proximate to 3-30 and 3-50);
wherein:
the first amplification element comprises metal (paragraph [0288]: “the case structural strengthening element 3-11 is made of a magnetically-permeable material and/or a metal material. A magnetically-permeable material means the material has a magnetic permeability, such as ferromagnetic materials, including iron (Fe), nickel (Ni), cobalt (Co) or alloys thereof.”);
the first amplification element and the first metal assembly comprise different materials (paragraph [0314]: “The supporting element structural strengthening element 3-501 and the case structural strengthening elements 3-11 have different materials”);
magnetic permeability of the first amplification element is greater than magnetic permeability of the first metal assembly (paragraph [0314]: “The magnetic permeability of the case structural strengthening element 3-11 is greater than the magnetic permeability of the supporting element structural strengthening element 3-501.”).”
However, the prior art taken either singly or in combination fails to teach or reasonably suggest the following limitation when taken in context of the claim as a whole: “a first amplification element disposed between the first circuit assembly and the first metal assembly.” In particular, Hsu teaches instead that circuit 3-30 is between elements 3-11 and 3-501. This choice of positioning in Hsu enables the functionality that “the magnetic attraction force generated between the case structural strengthening element 3-11 and the first magnetic element 3-111 and/or the second magnetic element 3-121 may be used for positioning the relative positions of the case 3-10 and frame 3-80” (see paragraph [0314]). Thus, not only is there no prior art that teaches the claimed disposition, it would not be proper to modify Hsu to meet claim 3, even if such art existed.
Claims 4-20 depend from claim 3 and are allowable for at least the reason stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lai et al. US 2023/0003963 A1 “Optical Element Driving Unit, Imaging Optical Module and Electronic Device” teaches two ferromagnetic metal elements 375 that can be embedded in mounting part 333 of carrier 33, pertinent to claims 1 and 2.
Park et al. KR 20230161057 A “Actuator for Camera” teaches an optical element driving mechanism having two moving frames, middle guide 200 and AF carrier 300, both of which have a reinforcing member (220 and 320), pertinent to claims 1 and 2.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky L 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.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872
