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 Objections
Claims 2, 7, and 11 are objected to because of the following informalities: the phrase “… a holder received in the holder ...” is assumed to be a typographical error. Examiner assumes that the phrase should have been written “… a holder received in the frame ...”. Appropriate correction is required.
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12,754,390 in view of US 2021/0271049.
Instant Application 19/016,642
US 12,754,390 in view of US 2021/0271049
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.
that has an optical axis,
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;
US 12,754,390 does not specifically disclose an optical element that has an optical axis.
However, US 2021/0271049, in the same field of endeavor, teaches an optical element that has an optical axis (Paragraph 0055), for the purpose of focusing an optical device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include the optical element that has an optical axis for the purpose of focusing an optical device.
and a substrate and a circuit board, wherein the fixed part includes a base and a housing connected to each other, the substrate is affixed to the base, the circuit board is affixed in a cavity of the substrate, and the driving assembly includes a first magnetic element disposed on the movable part and a first coil disposed on the substrate, wherein the circuit board and the first coil are disposed on opposite sides of the substrate.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seo et al. (US 2021/0271049).
Regarding Claim 1, Seo discloses a driving mechanism for moving an optical element that has an optical axis (Fig. 2, lens barrel 200, optical axis Z, Paragraphs 0069-0071), comprising:
a fixed part (Fig. 2, coil 330a and carrier 310 are fixed to the housing 120, Paragraphs 0073-0074);
a movable part (Fig. 2, lens barrel 200, lens holder 420, and carrier 310, Paragraphs 0069-0071), movably connected to the fixed part for holding the optical element (Paragraphs 0048-0050, the lens barrel 200 accommodates a lens); and
a driving assembly (Fig. 2, driving device 500 and focus adjustment driving unit, Paragraphs 0067-0071), configured for moving the movable part relative to the fixed part.
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.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US 2021/0271049) in view of Wang et al. (US 2025/0110389).
Regarding Claim 2, Seo discloses as is set forth above and further discloses further comprising a piece (Fig. 2, Frame 410, Paragraphs 0098-0100) and a plurality of ball elements affixed to the piece (Fig. 2, ball members 800, Paragraphs 0118-0121), wherein the piece has a C-shaped structure (Fig. 2, Frame 410 is “C-shaped” as shown), and the movable part includes a frame (Fig. 2, carrier 310, Paragraphs 0070-0071) and a holder (Fig. 2, lens barrel 200) received in the frame, wherein the optical element is disposed on the holder (Paragraphs 0048-0050, the lens barrel 200 accommodates a lens), and the ball elements are in contact between the frame and the holder (Fig. 2, carrier 310, lens barrel 200, and balls 800, as shown).
Seo does not specifically disclose a metal piece.
However, Wang, in the same field of endeavor, teaches a metal piece (Paragraph 0047, lines 16-22, the carrier can be made of a metal such as aluminum), for the purpose of enhancing stability of the unit.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the driving mechanism of Seo with a metal piece, of Wang, for the purpose of enhancing stability of the unit.
Allowable Subject Matter
Claims 3-6, 7-10, and 11-20 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: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Specifically, with respect to claim 3, none of the prior art either alone or in combination disclose or teach a driving mechanism including, as the distinguishing feature(s) in combination with the other limitations, wherein the frame forms a first recess, a second recess and a third recess, the holder forms a first cavity, a second cavity and a third cavity, and the ball elements includes a first ball element, a second ball element and a third ball element, wherein the first ball element is movably received in the first recess and the first cavity, the second ball element is movably received in the second recess and the second cavity, and the third ball element is movably received in the third recess and the third cavity.
Specifically, with respect to claim 7, none of the prior art either alone or in combination disclose or teach a driving mechanism including, as the distinguishing feature(s) in combination with the other limitations, wherein the fixed part includes a housing and a base mounted to each other, and the movable part includes a frame and a holder received in the frame, wherein the optical element is disposed on the holder, and the driving assembly includes a first coil, a second coil, a first magnet, and a second magnet, wherein the first and second coils are disposed on different sides of the base, the first magnet is disposed on the frame and located corresponding to the first coil, and the second magnet is disposed on the holder and located corresponding to the second coil.
Specifically, with respect to claim 11, none of the prior art either alone or in combination disclose or teach a driving mechanism including, as the distinguishing feature(s) in combination with the other limitations, wherein the fixed part includes a housing and a base mounted to each other, and the movable part includes a frame and a holder received in the frame, wherein the optical element is disposed on the holder, and the driving assembly includes a first coil, a second coil, a first magnet, and a second magnet, wherein the first coil is disposed on the base, the second coil is disposed on the frame, the first magnet is disposed on the frame and located corresponding to the first coil, and the second magnet is disposed on the holder and located corresponding to the second coil.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chiu (US 2022/0229266), Suzuka (US 2012/0219275), Hong et al. (US 2025/0264778), and Hsu et al. (US 2022/0103728) are cited to show similar driving mechanisms for moving an optical element but do not disclose the allowable subject matter as detailed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM R ALEXANDER whose telephone number is (571)270-7656. The examiner can normally be reached M-F 8:30 AM- 4:00 PM.
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 on (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.
/WILLIAM R ALEXANDER/ Primary Examiner, Art Unit 2872
