NON-FINAL OFFICE ACTION
This non-final Office action addresses U.S. Application No. 19/355,066, which is a broadening reissue application of U.S. Application No. 17/281,765 (hereinafter the “765 Application"), entitled CAMERA ACTUATOR AND CAMERA MODULE COMPRISING SAME, which issued as U.S. Patent No. 12,210,209 (hereinafter the “209 Patent").
The status of the claims is as follows:
Claims 19-37 are pending herein.
Claims 19-37 are withdrawn.
I. STATUS OF CLAIMS AND DISCLOSURE
The 209 Patent issued with claims 1-18.
Applicant filed a preliminary amendment on October 10, 2025 (hereinafter the "2025 Preliminary Amendment") along with the filing of this reissue application. This amendment has been entered. In the 2025 Preliminary Amendment, the specification was amended to add cross-noting application information, patented claims 1-18 were cancelled and new claims 19-37 were added. Therefore, claims 19-37 are pending herein.
II. RESTRICTION
Restriction to one of the following inventions is required under 35 U.S.C. §121:
I. Cancelled patent claims 1-18, drawn to a camera actuator comprising a housing, a base, a shaper unit having a hole, lens unit and four protrusions, first and second driving parts, a prism and recited structural relationships, classified in CPC G02B 7/09 {adapted for automatic focusing or varying magnification}.
II. New claims 19-37, drawn to a camera module having a sensor, a lens, a prism, a specially arranged gyro sensor and a cover member, classified in H04N 23/68 {for stable pick-up of the scene, e.g. compensating for camera body vibrations}.
The inventions are distinct, each from the other because of the following reasons:
Inventions in Groups I and II are directed to related cameras and parts thereof and thus can be used in combination together. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed in each of the Groups I and II have a different utility from each other based on the features specifically noted above which defines each group, which are not required in the other groups. Thus, each group has distinct structures and requirements from the other groups and thus has separate utilities. Furthermore, the inventions as claimed in each group do not encompass overlapping subject matter, have a materially different design and there is nothing of record to show them to be obvious variants. For example, Group I, cancelled patent claims 1-18, requires a camera comprising first and second driving units and a shaper unit having a hole, a lens unit and four protrusions which is not required in Group II. Conversely, Group II requires a camera with specific detail of a gyro sensor and a cover member which is not required in Group I.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
First, the inventions in Groups I and II are classifiable in different and distinct areas based on their diverse subject matter which would require diverse search terms and considerations.
Second, the distinctly claimed subject matter in each of Groups I and II would require different prior art considerations for the distinctly recited structural and method requirements as discussed above which would require parallel examination for each of the Groups, for purposes of searching, drafting Office actions and considerations of any appeals.
Since Group I was patented in the 209 Patent and this reissue is for the 209 Patent, Group I has been constructively elected by original presentation for prosecution on the merits. Accordingly, Group II, new claims 19-37 are withdrawn from consideration as being directed to a non-elected invention. See 37 C.F.R. §1.142(b) and MPEP §821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 C.F.R. §1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. §103 of the other invention.
III. DISCLAIMER
37 C.F.R. §1.176 Examination of reissue (in part)
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
MPEP §1450 (I) (in part)
Once the examiner has issued the Office action providing notification of the restriction requirement and treating the original patent claims on the merits, it is too late to obtain an examination on the added claims in the reissue application by filing a disclaimer of all the original patent claims. If reissue applicant wishes to have the newly added claims treated on the merits, a divisional reissue application must be filed to obtain examination of the added claims. Reissue applicants should carefully note that once a disclaimer of the patent claims is filed, it cannot be withdrawn. It does not matter whether the reissue application is still pending, or whether the reissue application has been abandoned or issued as a reissue patent. For all these situations, 37 CFR 1.176(b) states that the disclaimer cannot be withdrawn; the disclaimer will be given effect. Note that cancellation of all the original patent claims in the reissue application will not be effective as an alternative to disclaiming all the original patent claims, and 37 CFR 1.176(b) will not be waived to permit the same. This is because the patent owner can subsequently file a reissue continuation presenting the original patent claims.
If all original patent claims are canceled prior to examination and no new claims are directed to invention(s) covered by the original patent claims, the examiner may notify the applicant that a disclaimer of the original patent claims is required if examination of the new claims directed to new invention(s) is desired in the present reissue application. The examiner may provide a time period for the applicant to file the disclaimer.
If applicant does not file a disclaimer, then the examiner shall deem the canceled original patent claims as elected by original presentation. In this situation, claims drawn to new independent and distinct inventions (e.g., added inventions) will be withdrawn from examination. The non-elected claims will only be examined if filed in a divisional reissue application.
As provided above, Examiners find that the cancelled patent claims in Group I are restrictable from the new claims in Group II. Furthermore, in accordance with the procedure noted above, since all original patent claims have been cancelled in the 2025 Preliminary Amendment and no new claims are covered by Group I, Examiners in this Office action are providing notice to Applicant that a disclaimer of the original patent claims is required.
Therefore, Applicant has the following options if Applicant desires to continue examination of Group II in this reissue application:
Applicant can traverse the restriction requirement above by pointing out that the inventions in Group I and II are not patentably distinct by submitting evidence, arguments or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case.
Applicant can file a disclaimer of the original patent claims.
IV. REJECTIONS – 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
V.A. Rejections Based on No Error Corrected
This application as a whole is rejected under 35 U.S.C. §251 because this reissue application is not correcting any error in the original patent, i.e., the 209 Patent. As provided in the procedure above, Applicant has cancelled the original patent claims (Group I) and has add new claims patentably distinct claims (Group II). Furthermore, Applicant has not followed the procedure provided in 37 C.F.R. §1.176 by disclaiming in the original patent claims when filing the new patentably distinct claims. Thus, following the guidance in the rules and the MPEP, the original patent claims in Group I are constructively elected, but cancelled and the new claims in Group II are not elected and are withdrawn. Therefore, this application has no pending claims and thus this reissue is not correcting any error in the 209 Patent, which is not a valid basis for reissue.
V. OBJECTION TO AMENDMENTS
37 C.F.R. §1.173 Reissue specification, drawings, and amendments (in part)
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:…
(1) Specification other than the claims, "Large Tables" (§ 1.58(c)), a "Computer Program Listing Appendix" (§ 1.96(c)), a "Sequence Listing" (§ 1.821(c), or a "Sequence Listing XML" (§ 1.831(a)).
(i) Changes to the specification, other than to the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ) must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. The precise point in the specification where any added or rewritten paragraph is located must be identified.
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
Examiners object to the amendments to both the specification and the claims in the 2025 Preliminary Amendment because they are improper under the rules above. For example, the amendments to the specification do not use any markings. As noted above, amendments to the specification and claims must use single brackets for deletions and underlining for additions and must be amended with respect to the original patent, i.e., the 209 Patent. Furthermore, the presentation of new claims 19-37 do not have appropriate identifiers. Since each of claims 19-37 are new with respect to the original patent, i.e., the 209 Patent, they should have appropriate identifiers, i.e., “New.”
VI. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 209 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
VII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
VIII. CONCLUSION
Claims 19-37 are pending but withdrawn.
No claims are subject to examination.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
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