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 .
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.
Information Disclosure Statement
The information disclosure statement(s) filed on January 5, 2026; March 19, 2026 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Response to Amendment
Applicant’s amendments have not resolved the USC 112(a) issues. Specifically, the claims are still drawn to an infinite number of species of lens group powers while only disclosing the following species: (+ - + - -); (+ - +); (+ - + + -).
Applicant’s amendments have not resolved the USC 112(b) issues as they pertain to the magnification of claims 4, 11, 12.
Applicant’s amendments resolved the USC 112(d) issue of claim 18.
Applicant’s arguments with respect to claim 1, 19, 20 as they pertain to the prior art have been considered but are moot in view of the new ground(s) of rejection, as necessitated by amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 1, 19 and 20, the claims are drawn to the genus of a generic first group of positive power and second groups of any power and any sub-groups separated by an aperture with a negative focusing lens of the second group and satisfying 0. 50 < ST/TL < 0.95; 0.65 < f/(-fF) < 1.40; 0.708 ≤ ST/TL < 0.95. Such genus having a functionally infinite number of lenses and power combinations for the groups and/or sub-groups while only disclosing the following power combination species of such optical systems: (+ - + - -); (+ - +); (+ - + + -). As is consistent with the MPEP (MPEP 2163.II.A.3.a.ii) the written description is satisfied when a representative number of species are disclosed by Applicant (MPE 2163 - A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014)).
Here Applicant’s three (3) species falls far short of the functionally infinite species of a first positive group with any number of rear groups/units and their associated powers. In other words Applicant’s specification fails to provide adequate written description support for any species beyond the disclosed power combinations.
MPEP 2163 - Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation." Such correlations may be established "by the inventor as described in the specification," or they may be "known in the art at the time of the filing date." See AbbVie, 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91 (Fed. Cir. 2014).
Claims 2-18 are rejected as dependent upon claim 1.
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 1-20 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.
As to claims 1, 19, 20, the claims recite “the rear group consists of a plurality of lens groups” which appears to contradict close-ended (MPEP 2111.03.II) with open-ended (MPEP 2111.03.I). Specifically, the rear groups “consists of” a plurality, yet the plurality is not capped and is therefore open-ended. The metes and bounds are unclear because those of ordinary skill in the art would fail to understand what is, or is not, excluded with “consists of a plurality of lens groups”. Examiner will understand the claim as “the rear group comprises a plurality of lens groups”.
Claims 2-18 are rejected as dependent upon claim 1.
As to claim 4, the claim recites “the following conditional expression is satisfied 0.00 < βR1/βF < 0.25…βR1: a lateral magnification of the succeeding lens group upon focusing on an infinity object… βF…a lateral magnification of the focusing lens group upon focusing on the infinity object” is a function that does not follow from the recited structure (MPEP 2173.05(g)) and are based on a relative object (MPEP 2173.05(b)). Specifically, the magnification of the lens/lens group is a function of the lens/group focal length and the object distance1, however the claim(s) contains no details on such structures of the optical system and lens/lens groups. The metes and bounds are unclear since what structure and object distance allows for meeting the limitation appear arbitrary. For purposes of compact prosecution, Examiner will understand that art having the structural limitations of the claims necessarily meets the magnification properties.
As to claim 11, the claim recites “the following conditional expression is satisfied 0.08 < 1/βF < 0.25…βF: a lateral magnification of the focusing lens group upon focusing on the infinity object” which is a function that does not follow from the recited structure (MPEP 2173.05(g)) and is based on a relative object (MPEP 2173.05(b)). Specifically, the magnification of the lens/lens group is a function of the lens/group focal length and the object distance, however the claim contains no details on such structures of the optical system and lens/lens groups. The metes and bounds are unclear since what structure and object distance allows for meeting the limitation appear arbitrary. For purposes of compact prosecution, Examiner will understand that art having the structural limitations of the claims necessarily meets the magnification properties.
As to claim 12, the claim recites “the following conditional expression is satisfied (βF+(1+ βF))-2 < 0.15…βF: a lateral magnification of the focusing lens group upon focusing on the infinity object” which is a function that does not follow from the recited structure (MPEP 2173.05(g)) and is based on a relative object (MPEP 2173.05(b)). Specifically, the magnification of the lens/lens group is a function of the lens/group focal length and the object distance, however the claim contains no details on such structures of the optical system and lens/lens groups. The metes and bounds are unclear since what structure and object distance allows for meeting the limitation appear arbitrary. For purposes of compact prosecution, Examiner will understand that art having the structural limitations of the claims necessarily meets the magnification properties.
As to claim 14, the claim recites “the following conditional expression is satisfied 0.05 < βB/βF < 0.5…βB: a lateral magnification of the rear group upon focusing on an infinity object… βF…a lateral magnification of the focusing lens group upon focusing on the infinity object” is a function that does not follow from the recited structure (MPEP 2173.05(g)) and are based on a relative object (MPEP 2173.05(b)).
The magnification of the lens/lens group is a function of the lens/group focal length and the object distance, however the claim(s) contains no details on such structures of the optical system and lens/lens groups. The metes and bounds are unclear since what structure and object distance allows for meeting the limitation appear arbitrary. For purposes of compact prosecution, Examiner will understand that art having the structural limitations of the claims necessarily meets the magnification properties.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4, 6, 8-9, 11-14, 16-20 are rejected under 35 U.S.C. 102(a1) as being anticipated by Suzaki (JP 2013-238740; text references made to the associated machine translation).
As to claim 1, Suzaki teaches an optical system consisting of, in order from an object to an optical axis (Suzaki Fig. 1; Fig. 3) a front group (Suzaki Fig. 1 - GR1; Fig. 3 - GR1), an aperture stop (Suzaki Fig. 1 - STO; Fig. 3 - STO), an a rear group (Suzaki Fig. 1 - GR2+GR3; Fig. 3 - GR2+GR3);
the front group has a positive refractive power (Suzaki Fig. 1 - GR1; Fig. 3 - GR1);
wherein the rear group consists of a plurality of lens groups which includes a focusing lens group that is disposed closest to the object in the rear group (Suzaki Fig. 1 - GR2; Fig. 3 - GR2; para. [0016]), and has a negative refractive power (Suzaki Fig. 1 - GR2; Fig. 3 - GR2; Table 7);
upon focusing, the focusing lens group moves on the optical axis (Suzaki Fig. 1 - GR2; Fig. 3 - GR2 para. [0016]), and distances between the focusing lens group and a lens group adjacent to the focusing lens group among the plurality of lens groups and between the focusing lens group and the front group change (Suzaki Fig. 1 - GR2; Fig. 3 - GR2; para. [0016]);
and satisfying:
0.50 < ST/ TL < 0.95 (Suzaki Table 1 - as calculated ST ≈ 0.72; TL ≈ 1.04; Table 5 - as calculated ST ≈ 0.73; TL ≈ 1.02);
0.65 < f/(-fF) < 1.40 (Suzaki Table 7 - f = 1.00; fF = f2 = -0.763; f = 1.00; fF = -0.705).
As to claim 2, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches satisfying 0.65 < (-fF)/fA < 1.20 (Suzaki Table 7 - fF = -0.705; fA = 0.648).
As to claim 4, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches the rear group comprises a succeeding lens group disposed adjacent on an image side of the focusing lens group (Suzaki Fig. 1 - GR3; Fig. 3 - GR3), but doesn’t provide the values of βR1, βF. However, Suzaki teaches all the claimed structure of claims 1 and 4, and thus it is presumed Suzaki also satisfies the properties of 0.00 < βR1/βF < 0.25 (MPEP 2112.01).
As to claim 8, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches the focusing lens group consists of one negative lens component (Suzaki Fig. Fig. 1 - L4).
As to claim 9, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches satisfying: -2.50 < (rFR2 + rFR1)/(rFR2 - rFR1) < -0.25 (Suzaki Table 1 - rFR2 = 0.33789; rFR1 = 3.11070).
As to claim 11, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches the structure of claim 1 (Suzaki Fig. 1; Fig. 3) and thus is considered to necessarily satisfy 0.08 < 1/βF < 0.55 (MPEP 2112.01).
As to claim 12, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches the structure of claim 1 (Suzaki Fig. 1; Fig. 3) and thus is considered to necessarily satisfy (βF+(1+ βF))-2 < 0.15 (MPEP 2112.01).
As to claim 13, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches satisfying 0.003 < BLDF/TL < 0.060 (Suzaki Table 1 - BLDF = 0.025253; as calculated TL ≈ 1.04).
As to claim 14, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches the structure of claim 1 (Suzaki Fig. 1; Fig. 3) and thus is considered to necessarily satisfy 0.05 < βB/βF < 0.50 (MPEP 2112.01).
As to claim 16, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches 1.00 < FNO < 3.00 (Suzaki para. [0038] - FNO = 2.00).
As to claim 17, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches satisfying 12.00 < 2w < 40.00 (Suzaki para. [0038] - 2w = 2*19.62 = 39.24o).
As to claim 18, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches and further teaches a lens barrel (Suzaki para. [0001] - interchangeable lens camera).
As to claim 19, Suzaki teaches the optical system according to claim 1, thus claim 19 is similarly rejected as the method for manufacturing the lens system.
As to claim 20, Suzaki teaches an optical system consisting of, in order from an object to an optical axis (Suzaki Fig. 1; Fig. 3) a front group (Suzaki Fig. 1 - GR1; Fig. 3 - GR1), an aperture stop (Suzaki Fig. 1 - STO; Fig. 3 - STO), an a rear group (Suzaki Fig. 1 - GR2+GR3; Fig. 3 - GR2+GR3);
the front group has a positive refractive power (Suzaki Fig. 1 - GR1; Fig. 3 - GR1);
wherein the rear group consists of a plurality of lens groups which includes a focusing lens group that is disposed closest to the object in the rear group (Suzaki Fig. 1 - GR2; Fig. 3 - GR2; para. [0016]), and has a negative refractive power (Suzaki Fig. 1 - GR2; Fig. 3 - GR2; Table 7);
upon focusing, the focusing lens group moves on the optical axis (Suzaki Fig. 1 - GR2; Fig. 3 - GR2 para. [0016]), and distances between the focusing lens group and a lens group adjacent to the focusing lens group among the plurality of lens groups and between the focusing lens group and the front group change (Suzaki Fig. 1 - GR2; FIg. 3 - GR2; para. [0016]);
and satisfying:
0.708 < ST/ TL < 0.95 (Suzaki Table 5 - as calculated ST ≈ 0.73; TL ≈ 1.02);
As to claim 6, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 20, and Suzaki further teaches satisfying 0.65 < f/(-fF) < 1.60 (Suzaki Table 7 - f = 1.00; fF = f2 = -0.763; f = 1.00; fF = -0.705).
Claims 1-20 are rejected under 35 U.S.C. 102(a1) as being anticipated by Yonetani et al. (US 2014/0184887 - Yonetani; cited by Applicant).
As to claim 1, Yonetani teaches an optical system consisting of, in order from an object to an optical axis (Yonetani Fig. 7; Fig. 19) a front group (Yonetani Fig. 7 - G1; Fig. 19 - G1), an aperture stop (Yonetani Fig. 7 - A; Fig. 19 - A), an a rear group (Yonetani Fig. 7 - G2-G6; Fig. 19 - G2, G3);
the front group has a positive refractive power (Yonetani Fig. 7 - G1; Fig. 19 - G1);
wherein the rear group consists of a plurality of lens groups which includes a focusing lens group that is disposed closest to the object in the rear group (Yonetani Fig. 7 - G2; Fig. 19 - G2), and has a negative refractive power (Yonetani Fig. 7 - G2; Fig. 19 - G2);
upon focusing, the focusing lens group moves on the optical axis (Yonetani Fig. 7 - G2; Fig. 19 - G2), and distances between the focusing lens group and a lens group adjacent to the focusing lens group among the plurality of lens groups and between the focusing lens group and the front group change (Yonetani Fig. 7 - G1, G2, G3; Fig. 19 - G1, G2, G3);
and satisfying:
0.50 < ST/TL < 0.95 (Yonetani Table 9; Table 11 - TL = 1.4062; SL = ∑d9-21 +Bf ≈ 0.86; Table 27 - TL = 1.739; Table 25 - ST = ∑d8-20+Bf ≈ 1.28);
0.65 < f/(-fF) < 1.40 (Yonetani Table 11, Table 12 - f = 1.0000; fF = -0.73417; Tables 27, 28 - f = 1.0002; fF = -1.12689).
As to claim 2, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying 0.65 < (-fF)/fA < 1.20 (Yonetani Table 12 - fF = -0.73417; fA = 1.08074).
As to claim 3, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the rear group comprises at least one lens group disposed closer to the image surface than the focusing lens group (Yonetani Fig. 7 - G4), and satisfying
0.70 < (-fF)/fR < 1.80 (Yonetani Table 12 - fF = -0.73417; fR = 0.68564).
As to claim 4, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the rear group comprises a succeeding lens group disposed adjacent on an image side of the focusing lens group (Yonetani Fig. 7 - G3, G4, G5, G6), but doesn’t provide the values of βR1, βF. However, Yonetani teaches all the claimed structure of claims 1 and 4, and thus it is presumed Yonetani also satisfies the properties of 0.00 < βR1/βF < 0.25 (MPEP 2112.01).
As to claim 5, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the focal length is f = 1.000, 1.0002 (Yonetani Tables 11, 27) and the maximum amount of movement of the focusing lens group (Table 9 - d11; Table 25 - d10) is 0.1725, 0.24340, respectively, thus the movement ranges are: 0 < Δx/f < 0.17250; 0 < Δx/f < 0.2434 which are overlapping ranges of sufficient specificity (MPEP 2131.03).
As to claim 7, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches 2.00 < TL/(FNO*Bf) < 10.00 (Yonetani Table 11 - TL = 1.4062; FNO = 1.24848; Bf = 0.14939).
As to claim 8, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the focusing lens group consists of one negative lens component (Yonetani Fig. 7 - L6).
As to claim 9, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying : -2.50 < (rFR2 + rFR1)/(rFR2 - rFR1) < -0.25 (Yonetani Table 9 - rFR2 = 0.48480; rFR1 = 6.67320).
As to claim 10, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying 0.90 < (rNR2 + rNR1)/(rNR2 - rNR1) < 2.65 (Yonetani Table 25 - rNR2 = 0.75910; rNR1 = 0.33700).
As to claim 11, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the structure of claim 1 (Yonetani Fig. 7; Table 9) and thus is considered to necessarily satisfy 0.08 < 1/βF < 0.55 (MPEP 2112.01).
As to claim 12, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the structure of claim 1 (Yonetani Fig. 7; Table 9) and thus is considered to necessarily satisfy (βF+(1+ βF))-2 < 0.15 (MPEP 2112.01).
As to claim 13, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying 0.003 < BLDF/TL < 0.060 (Yonetani Table 9 - BLDF = 0.01940; f = 1.000).
As to claim 14, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches the structure of claim 1 (Yonetani Fig. 7; Table 9) and thus is considered to necessarily satisfy 0.05 < βB/βF < 0.50 (MPEP 2112.01).
As to claim 15, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying 0.05 < Bf/TL < 0.25 (Yonetani Table 11 - Bf = 0.14939; TL = 1.4062).
As to claim 16, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying 1.00 < FNO < 3.00 (Yonetani Table 11 - Fno = 1.24848).
As to claim 17, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches satisfying 12.00 < 2w < 40.00 (Yonetani Table 11 - 2w = 2*14.1813 = 28.3626o).
As to claim 18, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Yonetani further teaches a lens barrel (Yonetani Fig. 22).
As to claim 19, Yonetani teaches all the optical system of claim, and thus claim 19 directed to manufacturing the optical system of claim 1 is similarly rejected.
As to claim 20, Yonetani teaches an optical system consisting of, in order from an object to an optical axis (Yonetani Fig. 19) a front group (Yonetani Fig. 19 - G1), an aperture stop (Yonetani Fig. 19 - A), an a rear group (Yonetani Fig. 19 - G2, G3);
the front group has a positive refractive power (Yonetani Fig. 19 - G1);
wherein the rear group consists of a plurality of lens groups which includes a focusing lens group that is disposed closest to the object in the rear group (Yonetani Fig. 19 - G2), and has a negative refractive power (Yonetani Fig. 19 - G2);
upon focusing, the focusing lens group moves on the optical axis (Yonetani Fig. 19 - G2), and distances between the focusing lens group and a lens group adjacent to the focusing lens group among the plurality of lens groups and between the focusing lens group and the front group change (Yonetani Fig. 19 - G1, G2, G3);
and satisfying:
0.708 ≤ ST/TL < 0.95 (Yonetani Table 27 - TL = 1.739; Table 25 - ST = ∑d8-20+Bf ≈ 1.28).
As to claim 6, Yonetani teaches all the limitations of the instant invention as detailed above with respect to claim 20, and Yonetani further teaches satisfying 0.65 < f/(-fF) < 1.60 (Yonetani Table 27, 28 - f = 1.0002; fF = -1.12689).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kuzuhara et al. (US 2013/0242163 - Kuzuhara; of record).
As to claim 1, Kuzuhara teaches an optical system consisting of, in order from an object on an optical axis, a front group (Kuzuhara Fig. 1 - G1), an aperture stop (Kuzuhara Fig. 1 - A), and a rear group (Kuzuhara Fig. 1 - G2);
wherein the front group has a positive refractive power (Kuzuhara Fig. 1 - G1);
wherein the rear group consists of a plurality of lens groups which includes a focusing lens group that is disposed closest to the object in the rear group (Kuzuhara Fig. 1 - L6), and has a negative refractive power (Kuzuhara Fig. 1 - L6; para. [0050]; Table 1 - lens of r11, r12);
upon focusing, the focusing lens group moves on the optical axis, and distances between the focusing lens group and a lens group adjacent to the focusing lens group among the plurality of lens groups and between the focusing lens group and the front group change (Kuzuhara Fig. 1 - G1, L6, L7);
and satisfying 0.50 < ST/TL < 0.95 (Kuzuhara Table 1 - TL = 80.0052; ST = ∑d10-d20 ≈ 54.8).
Kuzuhara teaches a value of f/(-fF) ≈ 1.46 (Kuzuhara Table 1 - f = 63.9925; as calculated fF ≈ -43.8)., which is just outside the claimed range of 0.65 < f/(-fF) < 1.40.
Kuzuhara also teaches the focal length/power of the focusing lens group is adjustable (Kuzuhara para. [0094]-[0097]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to satisfy 0.65 < f/(-fF) < 1.40, since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close that one of ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner 227 USPQ 773 (Fed. Cir. 1985); MPEP 2144.05. Kuzuhara teaches adjustment of the focal length of the focus lens group for the purpose of ensuring the proper distance to allow for high-speed focusing and downsizing of the lens (Kuzuhara para. [0097]).
As to claim 2, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches satisfying 0.65 < (-fF)/fA < 1.20 (Kuzuhara Table 1 - as calculated fF ≈ -43.8; fA ≈ 53.5).
As to claim 3, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches the rear group comprises at least one lens group disposed closer to the image surface than the focusing lens group (Kuzuhara Fig. 1 - L7) and satisfying 0.70 < (-fF)/(fR) < 1.80 (Kuzuhara Table 1 - as calculated fF ≈ -43.8; fR ≈ 40).
As to claim 4 (as understood), Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches the rear group comprises a succeeding lens group disposed adjacent on an image side of the focusing lens group (Kuzuhara Fig. 1 - L7-L11), but doesn’t provide the values of βR1, βF. However, Kuzuhara teaches all the claimed structure of claims 1 and 4, and thus it is presumed Kuzuhara also satisfies the properties of 0.00 < βR1/βF < 0.25.
As to claim 5, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches satisfying 0.03 < Δx/f < 0.35 (Kuzuhara Table 1 - teaching f = 63.9925 and the max value of the movement being 10.53882 (d12), thus 0.0 < Δx/f < (10.53882/63.9925) = 0.0 < Δx/f < 0.16; which is an overlapping range of sufficient specificity MPEP 2131.03).
As to claim 7, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches 2.00 < TL/(FNO*Bf) < 10.00 (Kuzuhara Table 1 - TL = 80.0052; FNO = 1.84985; Bf = 17.66880).
As to claim 8, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches the focusing lens group consists of one negative lens component (Kuzuhara Fig. 1 - L6).
As to claim 9, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches -2.50 < (rFR2 + rFR1)/(rFR2 - rFR1) < -0.25 (Kuzuhara Table 1 - rFR1 = 145.12920; rFR2 = 22.11130).
As to claim 10, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches 0.90 < (rNR2 + rNR1)/(rNR2 - rNR1) < 2.65 (Kuzuhara Table 1 - rNR1 = -65.35500; rNR2 = -13.63610).
As to claim 11, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches the structure of claim 1 (Kuzuhara Fig. 1; Table 1) and thus is considered to necessarily satisfy 0.08 < 1/βF < 0.55.
As to claim 12, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches the structure of claim 1 (Kuzuhara Fig. 1; Table 1) and thus is considered to necessarily satisfy (βF+(1+ βF))-2 < 0.15.
As to claim 13, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches satisfying 0.003 < BLDF/TL < 0.060 (Kuzuhara Table 1 - BLDF = 0.80000; TL = 80.0052).
As to claim 14, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches the structure of claim 1 (Kuzuhara Fig. 1; Table 1) and thus is considered to necessarily satisfy 0.05 < βB/βF < 0.50.
As to claim 15, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches satisfying 0.05 < Bf/TL < 0.25 (Kuzuhara Table 1 - Bf = 17.66880; TL = 80.0052).
As to claim 16, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches 1.00 < FNO < 3.00 (Kuzuhara Table 1 - FNO = 1.84985).
As to claim 17, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches 12.00o < 2w < 40.00o (Kuzuhara Table 1 - 2w = 2*9.5274 = 18.5148).
As to claim 18, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Kuzuhara further teaches an optical apparatus with lens barrel (Kuzuhara Fig. 1; Fig. 19).
As to claim 19, the claim is directed to the method of manufacturing the optical system of claim 1 by generically providing the optical system. Therefore claim 19 is rejected similar to claim 1 as obvious over Kuzuhara.
As to claim 20, Kuzuhara teaches an optical system consisting of, in order from an object on an optical axis, a front group (Kuzuhara Fig. 1 - G1), an aperture stop (Kuzuhara Fig. 1 - A), and a rear group (Kuzuhara Fig. 1 - G2);
wherein the front group has a positive refractive power (Kuzuhara Fig. 1 - G1);
wherein the rear group consists of a plurality of lens groups which includes a focusing lens group that is disposed closest to the object in the rear group (Kuzuhara Fig. 1 - L6), and has a negative refractive power (Kuzuhara Fig. 1 - L6; para. [0050]; Table 1 - lens of r11, r12);
upon focusing, the focusing lens group moves on the optical axis, and distances between the focusing lens group and a lens group adjacent to the focusing lens group among the plurality of lens groups and between the focusing lens group and the front group change (Kuzuhara Fig. 1 - G1, L6, L7).
Kuzuhara teaches a value of ST/TL ≈ 0.685 (Kuzuhara Table 1 - TL = 80.0052; ST = ∑d10-d20 ≈ 54.8) which is just outside the range of 0.708 ≤ ST/TL < 0.95. Kuzuhara also teaches the length (TL) of the optical system is adjustable (Kuzuhara para. [0094]-[0097]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to satisfy 0.708 ≤ ST/TL < 0.95, since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close that one of ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner 227 USPQ 773 (Fed. Cir. 1985); MPEP 2144.05. Kuzuhara teaches adjustment of the overall length of the optical system for the purpose of ensuring the proper distance to allow for high-speed focusing and downsizing of the lens (Kuzuhara para. [0097]).
As to claim 6, Kuzuhara teaches all the limitations of the instant invention as detailed above with respect to claim 20, and Kuzuhara further teaches satisfying 0.65 < f/(fF) < 1.60 (Kuzuhara Table 1 - f = 63.9925; as calculated fF ≈ -43.8).
Claims 4, 11-12, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Suzaki (cited above).
As to claim 4, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, and Suzaki further teaches the rear group comprises a succeeding lens group disposed adjacent on an image side of the focusing lens group (Suzaki Fig. 1 - GR3; Fig. 3 - GR3), but doesn’t provide the values of βR1, βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy 0.00 < βR1/βF < 0.25, 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
As to claim 11, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, but Suzaki doesn’t provide the value βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy 0.08 < βF < 0.55, 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
As to claim 12, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, but Suzaki doesn’t provide the value βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy (βF+(1+ βF))-2 < 0.15, 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
As to claim 14, Suzaki teaches all the limitations of the instant invention as detailed above with respect claim 1, but Suzaki doesn’t provide the values of βB, βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy 0.05 < βB/βF < 0.50., 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
Claims 4, 11-12, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yonetani (cited above).
As to claim 4, Yonetani teaches all the limitations of the instant invention as detailed above with respect claim 1, and Yonetani further teaches the rear group comprises a succeeding lens group disposed adjacent on an image side of the focusing lens group (Yonetani Fig. 7; Fig. 19), but doesn’t provide the values of βR1, βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy 0.00 < βR1/βF < 0.25, 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
As to claim 11, Yonetani teaches all the limitations of the instant invention as detailed above with respect claim 1, but Yonetani doesn’t provide the value βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy 0.08 < βF < 0.55, 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
As to claim 12, Yonetani teaches all the limitations of the instant invention as detailed above with respect claim 1, but Yonetani doesn’t provide the value βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy (βF+(1+ βF))-2 < 0.15, 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
As to claim 14, Yonetani teaches all the limitations of the instant invention as detailed above with respect claim 1, but Yonetani doesn’t provide the values of βB, βF. It would have been obvious to one of ordinary skill in the art at the time of invention to satisfy 0.05 < βB/βF < 0.50., 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 220 F.2d 454, 456,105 USPQ 233, 235. Such magnification features allow for adjusting the image sizing.
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 ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky 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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 April 13, 2026
1 https://en.wikipedia.org/wiki/Magnification
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