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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the back group that has at least one air contact surface between a lens surface closest to the object side and a lens surface closest to the image side of the back group, and satisfies: 0.003 ≤ |(TANF-TANC)/TANd|≤ 0.020 (4) where TANF is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for an F-line and indicates an emission direction thereof from a lens surface of the moving group closest to the image side, TANC is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a C-line and indicates an emission direction thereof from the lens surface of the moving group closest to the image side, and TANd is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a d-line and indicates an emission direction thereof from the lens surface of the moving group closest to the image side must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 8, 10, and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a front group having a concave surface on a most image side thereof, the concave surface of the front group having a negative refractive power.” Additionally, claim 1 recites “a back group having a concave surface on the most object side thereof, the concave surface of the back group having a negative refractive power.” However, it is unclear whether the claim is intending for the concave surfaces to have a negative refractive power or for the front group and/or back group as a whole to have a negative refractive power. Specifically, any concave image side surface of a lens in air will necessarily have negative refractive power and any concave object side surface of a lens in air will have negative refractive power. As such, if the refractive power is intended to be the power of the lens, such a limitation appears to be redundant. the purposes of examination, any front group having a concave surface on a most image side thereof and back group with a concave surface on a most object side thereof will be interpreted as reading on the claimed limitation.
Claim 1 further recites that “the immersion microscope objective includes only one moving group, the moving group being one of the first lens group, the second lens group, or the third lens group.” However, it is unclear if the claim positively requires a moving group, i.e., if the claim is requiring at most only one moving group. Moreover, it is unclear if the claims is intended to require a single moving group in each of the first, second, and third lens groups, at most one moving group in each of the first, second, and third lens groups, a single moving group across all lens groups, or at most one moving group across all lens groups. For the purposes of examination, any microscope objective having one and only one moving group, or having a first, second, and third group which each include no more than one moving group will be interpreted as reading on the claimed limitation.
Claim 1 additionally recites that “the back group has at least one air contact surface between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof, and… 0.003 ≤ |(TANF-TANC)/TANd|≤ 0.020 (4) where…TANF is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for an F-line and indicates an emission direction thereof from a lens surface of the moving group closest to the image side, TANC is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a C-line and indicates an emission direction thereof from the lens surface of the moving group closest to the image side, and TANd is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a d-line and indicates an emission direction thereof from the lens surface of the moving group closest to the image side.” However, it is unclear how TANF can be defined to be “a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for an F-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group,” how TANC can be defined to be “a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a C-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group” or how TANd can be defined to be “a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a d-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group.” Specifically, it is unclear how the cosines of the axial marginal ray are being defined and it is unclear that the claim positively requires a moving group. Furthermore, it is unclear what constitutes a “longitudinal direction cosine to a transverse direction cosine” as the various cosines do not have defined angles or hypotenuses or distances.
Moreover, a ratio of a longitudinal direction cosine to a transverse direction cosine would merely be the same as a ratio of a distance in a longitudinal direction to a distance in a transverse direction and it is unclear how these distances should be defined. If the claimed cosines are to be defined with based on the angle of intersection between the axial marginal ray and the longitudinal and transverse direction, respectively, then the ratio of the cosines would be equal to 1, as the longitudinal cosine would be the length of some value in the transverse direction divided by the length of some value in the longitudinal direction, and it is unclear how these values should be defined.H f
Additionally, this limitation is unclear as it recites functional language without providing a discernable boundary on what element/structure of the immersion microscope objective performs the function. Specifically, it is unclear if a specific material/structure/element must be present in the immersion microscope objective to perform the function of providing the claimed conditional expression. As such, the metes and bounds of the claim cannot be discerned and the claim is unclear. See Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc) (“Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim”) (MPEP § 2173.05(g)).
For the purposes of examination, any objective having a back group meeting the claimed structural requirements of the claims will be interpreted as reading on the claimed limitation.
Claims 3-5, 8, 10, and 12 are rejected as being dependent upon claim 1 and failing to cure the deficiencies of the rejected base claim.
Claim 3 recites that “a plurality of immersion liquids having different refractive indices are usable together with the immersion microscope objective and a following conditional expression is satisfied: 0.25 ≤ 1/|(iνd1-iνd2)×WD| ≤ 10 [mm-1] (2) where iνd1 is an Abbe number of an immersion liquid having a lowest refractive index among the plurality of immersion liquids, and iνd2 is an Abbe number of an immersion liquid having a highest refractive index among the plurality of immersion liquids.” However, as the claim merely recites “a plurality of immersion liquids having different refractive indices are usable together with the immersion microscope objective,” it is unclear if the claim actually is intended to require a plurality of immersion liquids, or if the claim merely requires the conditional expression to be met when there are a plurality of immersion liquids. It is further unclear if the plurality of immersion liquids should be combined or are intended to be used with the immersion microscope objective separately. Further, it is unclear if such a limitation is simply a functional characteristic of the objective, or a combination of the objective and the liquids. Specifically, such a feature is a feature of the liquids which do not appear to actually be a part of the claimed invention. Moreover, it is unclear if the claimed limitations could be met by a singular immersion liquid. For the purposes of examination, claim 3 will be interpreted as positively requiring a plurality of immersion liquids with the immersion microscope objective.
Claim 5 is rejected as being dependent upon claim 3 and failing to cure the deficiencies of the rejected base claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites “The immersion microscope objective according to claim 2” and therefore depends upon claim 2. Additionally, claim 5 depends upon claim 3 and thus, ultimately, depends upon claim 2. However, claim 2 has been cancelled. As such, claims 3 and 5 are incomplete claims (See MPEP §608.01(n)v). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1, 3-5, 8, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kasahara (U.S. Patent No. 8,358,469).
Regarding claim 1, Kasahara teaches an immersion microscope objective having a magnification of 35 times or less (See value of β for each of Examples 1-2 and 5-7), the immersion microscope objective comprising, in order from an object side:
a first lens group (LG1) including a meniscus lens (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 4, L. 31-41);
a second lens group (LG2) including a cemented lens (CL2 or CL3) and having a positive refractive power for converting a divergent pencil of light into a convergent pencil of light (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 6-27); and
a third lens group (LG3) having a negative refractive power (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43), wherein:
the immersion microscope objective includes only one moving group, the moving group being one of the first lens group, the second lens group, or the third lens group (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 10, L. 22-24; C. 19, L. 23-41),
the third lens group is formed of, in order from the object side:
a front group (CL4) having a concave surface on a most image side thereof, the concave surface of the front group having a negative refractive power (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43); and
a back group (CL5) having a concave surface on a most object side thereof, the concave surface of the back group having a negative refractive power (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43),
the back group has at least one air contact surface between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7, each teaching a back group having a claimed configuration meeting the structural requirements of the claimed back group), and
conditional expressions (1) and (4) are satisfied:
0.64 ≤ NA×WD ≤ 3.5 (1) (Kasahara teaches a broad range on NAxWD reading on the claimed range with sufficient specificity and teaches specific examples lying within Applicant’s claimed range, e.g. – Ex. 6: NAxWD = 0.87; Ex. 7: NAxWD = 1.03)
0.003 ≤ |(TANF-TANC)/TANd| ≤ 0.020 (4) (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7, each teaching a back group having a claimed configuration meeting the structural requirements of the claimed back group and thus meeting the claimed condition)
where NA is a numerical aperture on the object side of the immersion microscope objective, and WD is a working distance of the immersion microscope objective (C. 5, L. 44 – C. 6, L. 38: Kasahara teaches a range of NA×WD of 0.4 to 3, which reads on the claimed range with sufficient specificity; See also values for Embodiments 6-7 above which each teaches a value within Applicant’s claimed range) in mm, TANF is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for an F-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group, TANC is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a C-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group, and TANd is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a d-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7, each teaching a back group having a claimed configuration meeting the structural requirements of the claimed back group and thus meeting the claimed condition).
Examiner further notes that the limitation that even when any of a plurality of immersion liquids used together with the immersion microscope objective is used, an amount of chromatic aberration at each of wavelengths in a range from 435.18 nm to 656.13 nm, which has an e-line as a reference, is smaller than a magnitude of depth of focus of the immersion microscope objective at the wavelength is directed to an intended use of the claimed apparatus. It has been held that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, Kasahara teaches an immersion microscope objective which satisfies all of the structural limitations of the claim. As such, the recitation of the intended use of the apparatus does not differentiate the claim from the prior art, and Kasahara anticipates the claim.
Regarding claim 3, Kasahara teaches the immersion microscope objective according to claim 1, as above.
Kasahara further teaches that a plurality of immersion liquids having different refractive indices are usable together with the immersion microscope objective and a following conditional expression is satisfied: 0.25 ≤ 1/|(iνd1 – iνd2) × WD| ≤ 10 [mm-1] (2) where iνd1 is an Abbe number of an immersion liquid having the lowest refractive index among the plurality of immersion liquids, and iνd2 is an Abbe number of an immersion liquid having the highest refractive index among the plurality of immersion liquids (C. 6, L. 5-24; See also Embodiments 1-7 – Kasahara teaches the use of a single immersion liquid and thus does not include the use of a plurality of immersion liquids, meeting the alternative limitation of “even when a plurality of immersion liquids are used”).
Regarding claims 4 and 5, Kasahara teaches the immersion microscope objective according to claims 1 and 3, respectively, as above.
Kasahara further teaches that the first lens group includes a cemented lens on a most object side, the cemented lens includes, from the object side, a first lens and the meniscus lens, and the cemented lens being a two-piece cemented lens in which the first lens and the meniscus lens are cemented, and a following conditional expression is satisfied: -20 ≤ (νdG1-νdG2)/R1 ≤ -5 [mm-1] (3) where νdG1 is an Abbe number of the first lens, and νdG2 is an Abbe number of the meniscus lens, and R1 is a radius of curvature in mm of a cemented surface of the cemented lens (See Tables for Each of Kasahara’s embodiments which disclose values of the condition within Applicant’s claimed range – Ex. 1: (νdG1-νdG2)/R1 = -7.02; Ex. 2: (νdG1-νdG2)/R1 = -7.34; Ex. 3: (νdG1-νdG2)/R1 = -7.57; Ex. 4: (νdG1-νdG2)/R1 = -8.3; Ex. 5: (νdG1-νdG2)/R1 = -6.11; Ex. 6: (νdG1-νdG2)/R1 = -5.8; Ex. 7: (νdG1-νdG2)/R1 = -18.12.
Regarding claim 8, Kasahara teaches the immersion microscope objective according to claims 6 and 1, as above.
Kasahara further teaches that the moving group is a cemented lens including one or more positive lenses and one or more negative lenses, and a following conditional expression is satisfied: 0.3 ≤ (νdZ1-νdZ2)/FZ1 ≤ 3 [mm-1] (5) where vdZl is a highest Abbe number among Abbe numbers of one or more positive lenses included in the moving group, vdZ2 is a lowest Abbe number among Abbe numbers of one or more negative lenses included in the moving group, and FZ1 is a focal length of the moving group (See values in C. 22 – C. 23 for the sixth embodiment: (νdZ1-νdZ2)/FZ1 = (94.93-40.76)/113.207 = 0.48, within Applicant’s claimed range; See values in C. 23 – C. 25 for the seventh embodiment: (νdZ1-νdZ2)/FZ1 = (94.93-40.76)/96.838 = 0.56, within Applicant’s claimed range).
Regarding claim 10, Kasahara teaches the immersion microscope objective according to claim 8, as above.
Kasahara further teaches that the second lens group (LG2) includes a plurality of cemented lenses (CL2, CL3) (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 6-27).
Regarding claim 12, Kasahara teaches the immersion microscope objective according to claim 10, as above.
Kasahara further teaches that the plurality of cemented lenses (CL2, CL3) includes a positive-negative-positive three-piece cemented lens (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 6-27).
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(s) 1, 3-5, 8, 10, and 12 is/are additionally rejected under 35 U.S.C. 103 as being unpatentable over Kasahara in view of Kasahara (U.S. PG-Pub No. 2014/0320975; hereinafter – “Kasahara’975).
Regarding claim 1, Kasahara teaches an immersion microscope objective having a magnification of 35 times or less (See value of β for each of Examples 1-2 and 5-7), the immersion microscope objective comprising, in order from an object side:
a first lens group (LG1) including a meniscus lens (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 4, L. 31-41);
a second lens group (LG2) including a cemented lens (CL2 or CL3) and having a positive refractive power for converting a divergent pencil of light into a convergent pencil of light (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 6-27); and
a third lens group (LG3) having a negative refractive power (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43), wherein:
the immersion microscope objective includes only one moving group, the moving group being one of the first lens group, the second lens group, or the third lens group (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 10, L. 22-24; C. 19, L. 23-41),
the third lens group is formed of, in order from the object side:
a front group (CL4) having a concave surface on a most image side thereof, the concave surface of the front group having a negative refractive power (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43); and
a back group (CL5) having a concave surface on a most object side thereof, the concave surface of the back group having a negative refractive power (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43),
the back group has at least one air contact surface between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7, each teaching a back group having a claimed configuration meeting the structural requirements of the claimed back group), and
conditional expressions (1) and (4) are satisfied:
0.64 ≤ NA×WD ≤ 3.5 (1) (Kasahara teaches a broad range on NAxWD reading on the claimed range with sufficient specificity and teaches specific examples lying within Applicant’s claimed range, e.g. – Ex. 6: NAxWD = 0.87; Ex. 7: NAxWD = 1.03)
0.003 ≤ |(TANF-TANC)/TANd| ≤ 0.020 (4) (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7, each teaching a back group having a claimed configuration meeting the structural requirements of the claimed back group and thus meeting the claimed condition)
where NA is a numerical aperture on the object side of the immersion microscope objective, and WD is a working distance of the immersion microscope objective (C. 5, L. 44 – C. 6, L. 38: Kasahara teaches a range of NA×WD of 0.4 to 3, which reads on the claimed range with sufficient specificity; See also values for Embodiments 6-7 above which each teaches a value within Applicant’s claimed range) in mm, TANF is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for an F-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group, TANC is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a C-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group, and TANd is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a d-line and is a tangent indicating a direction at a time of emission from a lens surface closest to the image side of the moving group (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7, each teaching a back group having a claimed configuration meeting the structural requirements of the claimed back group and thus meeting the claimed condition).
Examiner further notes that the limitation that even when any of a plurality of immersion liquids used together with the immersion microscope objective is used, an amount of chromatic aberration at each of wavelengths in a range from 435.18 nm to 656.13 nm, which has an e-line as a reference, is smaller than a magnitude of depth of focus of the immersion microscope objective at the wavelength is directed to an intended use of the claimed apparatus. It has been held that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Furthermore, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, Kasahara teaches an immersion microscope objective which satisfies all of the structural limitations of the claim. As such, the recitation of the intended use of the apparatus does not differentiate the claim from the prior art, and Kasahara anticipates the claim.
Regarding the limitation that 0.64 ≤ NA×WD ≤ 3.5, even if Kasahara’s disclosed range did not meet the claimed range with sufficient specificity, Kasahara clearly discloses a range of 0.4 ≤ NAxWD ≤ 3 which overlaps the claimed range such that “the brightness necessary for a fluorescent observation can be secured and a light fluorescent image can be observed” (C. 6, L. 5-24).
Therefore, even if Kasahara did not explicitly disclose the claimed range on NAxWD, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the immersion microscope objective of Kasahara such that 0.64 ≤ NA×WD ≤ 3.5 since it has been held that where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (See MPEP 2144.05.I.), and such that “the brightness necessary for a fluorescent observation can be secured and a light fluorescent image can be observed,” as in Kasahara (C. 6, L. 5-24).
Additionally, Kasahara further teaches adjusting the values of the back group such that “both the Petzval sum and a chromatic aberration can be effectively corrected in a compact Gaussian type lens structure” (C. 9, L. 58 – C. 10, L. 22).
Therefore, even if Kasahara did not disclose that 0.003 ≤ |(TANF-TANC)/TANd| ≤ 0.020, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the immersion microscope objective of Kasahara such that 0.003 ≤ |(TANF-TANC)/TANd| ≤ 0.020 such that “both the Petzval sum and a chromatic aberration can be effectively corrected in a compact Gaussian type lens structure,” as in Kasahara (C. 9, L. 58 – C. 10, L. 22), and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Regarding the limitation that the back group has at least one air contact surface between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof, Kasahara teaches a configuration reading on the broadest reasonable interpretation of the claimed limitation.
Nevertheless, in the interest of compact prosecution, Examiner further submits reference Kasahara’975.
Kasahara’975 teaches an immersion microscope objective comprising a first lens group (G1), a second lens group (G2), and a third lens group (G3) wherein the third lens group is formed of a front group (L12, L13) having a concave surface on a most image side thereof, and a back group (L14, L15) having a concave surface on a most object side thereof, and the back group has at least one air contact surface (r24, r25) between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof (See e.g. Fig. 1; Paragraphs 0046-0047, 0119-0120, and 0129-0130).
Kasahara’975 teaches this air contact surface such that “it is possible to make Petzval's sum small” (Paragraph 0047) to provide “a large numerical aperture and a superior imaging performance” (Paragraph 0006).
Therefore, even if Kasahara did not disclose the claimed air contact surface, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the immersion microscope objective of Kasahara with the air contact surface of Kasahara’975 such that “it is possible to make Petzval's sum small” to provide “a large numerical aperture and a superior imaging performance,” as in Kasahara’975 (Paragraphs 0006 and 0047), and since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Regarding claim 3, Kasahara in view of Kasahara’975 teaches the immersion microscope objective according to claim 1, as above.
Kasahara further teaches that a plurality of immersion liquids having different refractive indices are usable together with the immersion microscope objective and a following conditional expression is satisfied: 0.25 ≤ 1/|(iνd1 – iνd2) × WD| ≤ 10 [mm-1] (2) where iνd1 is an Abbe number of an immersion liquid having the lowest refractive index among the plurality of immersion liquids, and iνd2 is an Abbe number of an immersion liquid having the highest refractive index among the plurality of immersion liquids (C. 6, L. 5-24; See also Embodiments 1-7 – Kasahara teaches the use of a single immersion liquid and thus does not include the use of a plurality of immersion liquids, meeting the alternative limitation of “even when a plurality of immersion liquids are used”).
Regarding claims 4 and 5, Kasahara in view of Kasahara’975 teaches the immersion microscope objective according to claims 1 and 3, respectively, as above.
Kasahara further teaches that the first lens group includes a cemented lens on a most object side, the cemented lens includes, from the object side, a first lens and the meniscus lens, and the cemented lens being a two-piece cemented lens in which the first lens and the meniscus lens are cemented, and a following conditional expression is satisfied: -20 ≤ (νdG1-νdG2)/R1 ≤ -5 [mm-1] (3) where νdG1 is an Abbe number of the first lens, and νdG2 is an Abbe number of the meniscus lens, and R1 is a radius of curvature in mm of a cemented surface of the cemented lens (See Tables for Each of Kasahara’s embodiments which disclose values of the condition within Applicant’s claimed range – Ex. 1: (νdG1-νdG2)/R1 = -7.02; Ex. 2: (νdG1-νdG2)/R1 = -7.34; Ex. 3: (νdG1-νdG2)/R1 = -7.57; Ex. 4: (νdG1-νdG2)/R1 = -8.3; Ex. 5: (νdG1-νdG2)/R1 = -6.11; Ex. 6: (νdG1-νdG2)/R1 = -5.8; Ex. 7: (νdG1-νdG2)/R1 = -18.12.
Regarding claim 8, Kasahara in view of Kasahara’975 teaches the immersion microscope objective according to claims 6 and 1, as above.
Kasahara further teaches that the moving group is a cemented lens including one or more positive lenses and one or more negative lenses, and a following conditional expression is satisfied: 0.3 ≤ (νdZ1-νdZ2)/FZ1 ≤ 3 [mm-1] (5) where vdZl is a highest Abbe number among Abbe numbers of one or more positive lenses included in the moving group, vdZ2 is a lowest Abbe number among Abbe numbers of one or more negative lenses included in the moving group, and FZ1 is a focal length of the moving group (See values in C. 22 – C. 23 for the sixth embodiment: (νdZ1-νdZ2)/FZ1 = (94.93-40.76)/113.207 = 0.48, within Applicant’s claimed range; See values in C. 23 – C. 25 for the seventh embodiment: (νdZ1-νdZ2)/FZ1 = (94.93-40.76)/96.838 = 0.56, within Applicant’s claimed range).
Regarding claim 10, Kasahara in view of Kasahara’975 teaches the immersion microscope objective according to claim 8, as above.
Kasahara further teaches that the second lens group (LG2) includes a plurality of cemented lenses (CL2, CL3) (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 6-27).
Regarding claim 12, Kasahara in view of Kasahara’975 teaches the immersion microscope objective according to claim 10, as above.
Kasahara further teaches that the plurality of cemented lenses (CL2, CL3) includes a positive-negative-positive three-piece cemented lens (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 6-27).
Claim(s) 3 is/are additionally rejected under 35 U.S.C. 103 as being unpatentable over Kasahara or Kasahara in view of Kasahara’975, as applied to claim 1 above, and further in view of Konishi (U.S. PG-Pub No. 2015/0109681).
Regarding claim 3, Kasahara and Kasahara in view of Kasahara’975 each teaches the immersion microscope objective according to claim 1, as above.
Kasahara further teaches that a plurality of immersion liquids having different refractive indices are usable together with the immersion microscope objective and a following conditional expression is satisfied: 0.25 ≤ 1/|(iνd1 – iνd2) × WD| ≤ 10 [mm-1] (2) where iνd1 is an Abbe number of an immersion liquid having the lowest refractive index among the plurality of immersion liquids, and iνd2 is an Abbe number of an immersion liquid having the highest refractive index among the plurality of immersion liquids (C. 6, L. 5-24; See also Embodiments 1-7 – Kasahara teaches the use of a single immersion liquid and thus does not include the use of a plurality of immersion liquids, meeting the alternative limitation of “even when a plurality of immersion liquids are used”).
Additionally, Konishi teaches an immersion microscope objective and microscope using the same comprising a first lens group, a second lens group, and a third lens group wherein a plurality of immersion liquids having different refractive indices are usable together with the immersion microscope objective and a following conditional expression is satisfied: 0.25 ≤ 1/|(iνd1 – iνd2) × WD| ≤ 10 [mm-1] (2) where iνd1 is an Abbe number of an immersion liquid having the lowest refractive index among the plurality of immersion liquids, and iνd2 is an Abbe number of an immersion liquid having the highest refractive index among the plurality of immersion liquids (See e.g. Figs. 1 and 19; Paragraphs 0048 and 0086-0095).
Konishi further teaches adjusting the Abbe number of immersion liquids such that “even if the refractive index of the immersion liquid is changed, a favorable imaging performance can be maintained” and “It is therefore possible to maintain a favorable imaging performance for a variety of types of immersion liquids” (Paragraph 0095).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the immersion microscope objective of Kasahara such that multiple immersion liquids are used and 0.25 ≤ 1/|(iνd1 – iνd2) × WD| ≤ 10 [mm-1] as in Konishi such that “even if the refractive index of the immersion liquid is changed, a favorable imaging performance can be maintained” and “It is therefore possible to maintain a favorable imaging performance for a variety of types of immersion liquids,” as taught by Konishi (Paragraph 0095), and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Response to Arguments
Applicant's arguments, see page 7, filed 08/22/2025, with respect to the drawing objections have been fully considered but they are not persuasive.
Applicant argues that “this objection has been addressed by the amendments to the claims set forth above (see also the below discussion regarding the amendments to the claims), and that the original drawings illustrate all of the features now recited in the amended claims.” However, Examiner respectfully disagrees.
Specifically, as detailed previously and above, the drawings do not illustrate an objective 0.003 ≤ |(TANF-TANC)/TANd|≤ 0.020 (4) where TANF is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for an F-line and indicates an emission direction thereof from a lens surface of the moving group closest to the image side, TANC is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a C-line and indicates an emission direction thereof from the lens surface of the moving group closest to the image side, and TANd is a ratio of a longitudinal direction cosine to a transverse direction cosine of an axial marginal ray for a d-line and indicates an emission direction thereof from the lens surface of the moving group closest to the image side, as claimed in claim 1. Thus, the objection to the drawings is maintained.
Applicant's arguments, see pages 7-8, filed 08/22/2025, with respect to the 35 U.S.C. 112(b) rejections have been fully considered but they are not persuasive.
Applicant argues that “the term ‘direction cosine’ recited in amended claim 1 would be understood by a person having ordinary skill in the art as having a specific definition, and that the features of amended claim 1 are clear when interpreted in light of this understanding.” However, Examiner respectfully disagrees.
Specifically, while one of ordinary skill in the art at the time the invention was filed would understand what a “direction cosine” is, it remains unclear how the cosines of the axial marginal ray are being defined and it is unclear that the claim positively requires a moving group. Specifically, it is unclear which dimension should be the “longitudinal” dimension of an optical objective or which dimension should be the “transverse direction” of the optical objective. Additionally, a “direction cosine” requires an angle of the vector to be defined. It is unclear what angle is being utilized for defining such a cosine. It is unclear if this should be an angle of a specific ray of light made with a lens surface, of an optical axis with the surface of the lens, or some other angle. As such, Examiner maintains that the claimed limitation is indefinite.
Applicant further argues that “while conditional expression (4) now recited in amended claim 1 does not include a specific material/structure/element of the objective (as noted by the Examiner on page 8 of the Office Action), it does define the emission direction of a marginal ray emitted from the moving group” and “defines the working of a specific group and differs from defining a function of the entire objective.” However, Examiner respectfully disagrees and notes that “the working of a specific group” is a function of the overall objective and the conditional expression is a functional characteristic of the lens system. As such, the claimed limitation remains indefinite.
Applicant's arguments, see pages 8-10, filed 08/22/2025, with respect to the 35 U.S.C. 102 rejection in view of Kasahara have been fully considered but they are not persuasive.
Applicant argues that “it is respectfully submitted that Kasahara fails to disclose or suggest the feature recited in amended independent claim 1 whereby the back group has at least one air contact surface between (i) a lens surface of the back group closest to the object side thereof and (ii) a lens surface of the back group closest to the image side thereof.” However, Examiner respectfully disagrees.
Specifically, as defined previously and above, each of the surfaces S21 and S23 are between a lens surface of the back group closest to the object side thereof and (ii) a lens surface of the back group closest to the image side thereof and would constitute an “air contact surface” given the broadest reasonable interpretation of the claims (See e.g. Figs. 1, 4, 6, 8, 10, 12, and 14; C. 5, L. 28-43; See also Tables for Kasahara’s embodiments 1-7). To be clear, the broadest reasonable interpretation of the claimed limitation “the back group has at least one air contact surface between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof” is inclusive. That is, it includes the lens surface of the back group closest to the object side thereof and the lens surface of the back group closest to the image side thereof. Thus, Kasahara teaches such a feature, as both the most object side and most image side surfaces of the back group contact the air.
Applicant further argues that “with the structure recited in amended claim 1, at least one (additional) air gap surface other than the object-most and image-most lens surfaces of the back group is present in the back group, between the object-most and image-most lens surfaces of the back group.” However, the claims do not positively require an “additional” air gap as argued by Applicant, but merely require an “air contact surface” which is interpreted as any surface that contacts the air. There is nothing in the claims that precludes the “air contact surface” from being the object-most or image-most lens surfaces. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an additional air gap) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, any lens in an optical objective such as the one of Kasahara also necessarily has side surfaces on the edges of the object and image sides. These side surfaces would contact air by the nature of the construction of lenses and would be “between a lens surface of the back group closest to the object side thereof and a lens surface of the back group closest to the image side thereof.” As such, the side surfaces of the lenses of Kasahara would also meet the claimed limitation.
Nevertheless, in the interest of compact prosecution, Examiner further submits reference Kasahara’975. Applicant’s arguments, see pages 8-10, filed 08/22/2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102 in view of Kasahara have been fully considered but are further moot upon further consideration and a new ground(s) of rejection made in view of Kasahara’975, as detailed above and necessitated by Applicant’s amendments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas R Pasko whose telephone number is (571)270-1876. The examiner can normally be reached M-F 8 AM - 5 PM.
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Nicholas R. Pasko
Primary Examiner
Art Unit 2896
/Nicholas R. Pasko/Primary Examiner, Art Unit 2896