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 .
Response to Applicant’s response of 03/13/2023
The present office action is made in response to the applicant’s response of 03/13/2023. It is noted that in the response, applicant has submitted a set of 16 replacement sheets contained figs. 2A-2C, 3A-3C, 5A-5C, 6A-6C, 8A-8C, 9A-9C, 11A-11C, 12A-12C, 14A-14C, 15A-15C, 17A-17C, 18A-18C, 20A-20C, 21A-21C, 23A-23C and 24A-24C. There is not any change being made to the abstract, the specification and the claims.
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 04/21/2025, applicant has made an election of Invention I in the reply filed on 06/23/2025. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
As a result of applicant’s election, claims 1-3, 5-6 and 8-10 are examined in the present office action, and claims 4 and 7 have been withdrawn from further consideration as being directed to non-elected Inventions. Applicant should note that the non-elected claims 4 and 7 will be rejoined if the linking claim 1 is later found as an allowable claim.
Drawings
The sixteen replacement sheets contain figs. 2A-2C, 3A-3C, 5A-5C, 6A-6C, 8A-8C, 9A-9C, 11A-11C, 12A-12C, 14A-14C, 15A-15C, 17A-17C, 18A-18C, 20A-20C, 21A-21C, 23A-23C and 24A-24C were received on 03/13/2023.
As a result of the changes to the drawings, the application now contains a total of twenty six sheets of figures 1-26 which includes ten sheets of figures 1, 4, 7, 10, 13, 16, 19, 22 and 25-26 as filed on 12/17/2022 and sixteen replacement sheets contained figs. 2A-2C, 3A-3C, 5A-5C, 6A-6C, 8A-8C, 9A-9C, 11A-11C, 12A-12C, 14A-14C, 15A-15C, 17A-17C, 18A-18C, 20A-20C, 21A-21C, 23A-23C and 24A-24C as filed on 03/13/2023. The mentioned total of twenty six sheets of figures 1-26 are approved by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following reasons. In page 22: it is unclear how the range of fM1P / fM1N contain positive numbers while the focal length fM1N has a negative value. Applicant should note that because the focal length fM1P has a positive value and the focal length fM1N has a negative value, thus the ratio of fM1P / fM1N is a negative value. As a result, the value of f1Mp / fM1N in each of examples provided in the specification is questionable, see the First Example with value of fM1P / fM1N provided in page 37; the Second Example with value of fM1P/fM1N provided in page 46; … Appropriate correction/explanation is required.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 1-3, 5-6 and 8-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a1) The claim is indefinite because It is unclear the number of lens groups constituted the variable magnification optical system as recited in the features thereof “A variable magnification optical system … a close distance object” (lines 1-18).
In particular, it is unclear whether the variable magnification optical system having four lens groups constituted by the first lens group, the first intermediate lens group, the second intermediate lens group and the rear lens group OR the variable magnification optical system having at least five lens groups constituted by the first lens group, the first intermediate lens group, the second intermediate lens group, the rear lens group and at least one focusing lens group.
In case that the variable magnification optical system having four lens groups constituted by the first lens group, the first intermediate lens group, the second intermediate lens group and the rear lens group then it is complete unclear about the structural relationship(s) among the at least one focusing lens group and the other lens groups, i.e., the first, the first intermediate, the second intermediate and the rear lens group.
In case that the variable magnification optical system having at least five lens groups constituted by the first lens group, the first intermediate lens group, the second intermediate lens group, the rear lens group and at least one focusing lens group then it is unclear about the arrangement of the at least focus lens group with respect to the other lens groups, i.e., the first, the first intermediate, the second intermediate and the rear lens group.
For the purpose of examination, the feature regarding to the lens groups is understood as the variable magnification optical system having four lens groups wherein at least one lens group is moved for focusing.
a2) the feature thereof “the focusing lens group” (line 19) lacks a proper antecedent basis. Applicant should note that the claim recites that the variable magnification optical system includes at least one focusing lens group on lines 15-16 thus which one is considered as “the focusing lens group” recited in the claim on line 19? and
a3) the feature thereof “fF denotes a focal length … in the focusing lens groups” (lines 29-31) makes the claim indefinite with respect to the feature thereof “the variable magnification optical system including at least one focusing lens group” recited in the claim on lines 15-16. Applicant should note that since the terms “at least one focusing lens group: in the feature recited on lines 15-16 is understood as one focus lens group thus the feature thereof “the focusing lens groups” recited on line 31 lacks a proper antecedent basis.
b) Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “the following conditional expression … intermediate lens group” (lines 2-9).
it is unclear how the range of fM1P / fM1N contains positive numbers while the focal length fM1N has a negative value. Applicant should note that because the focal length fM1P has a positive value and the focal length fM1N has a negative value, thus the ratio of fM1P / fM1N has to have a negative value. As a result, the range governing the value of f1Mp / fM1N as claimed is indefinite.
c) Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons as set forth in element a) above.
d) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Double Patenting
11. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
12. Claims 1-2, 5-6 and 8-10, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9 of U.S. Patent No. 11,543,637. Although the claims at issue are not identical, they are not patentably distinct from each other because all features recited in present claims are read from features recited in Patent claims 1-6 and 9.
In particular, the features recited in present claims 1, 5 and 10 are read from Patent claims 1-2 and 4-5; the features recited in present claim 2 are read from Patent claim 3; the features recited in present claim 6 are read from Patent claim 6; the features recited in present claim 8 are read from Patent claim 9; and the feature recited in present claim 9 would have been obvious from the Patent claims 1-6 and 9 because the variable magnification optical system of Patent claims 1-6 and 9 is used in an optical apparatus.
Claim Rejections - 35 USC § 102
13. 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.
14. 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.
15. Claims 1, 6 and 9-10, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakahara (US Publication No. 2014/0320976).
Nakahara discloses a zoom lens for use in an optical apparatus, see paragraphs [0002] and [0068] and fig. 9.
a) Regarding present claims 1, 9 and 10, the zoom lens of the Numerical Example 1 as provided in paragraphs [0056] and [0073] and shown in fig. 1 comprises the following features:
a1) four lens groups arranged in an order from an object side to an image side of the zoom lens as follow: a first negative lens group (L1), a first positive intermediate lens group (L2), a second negative intermediate lens group (L3) and a rear lens group (L4);
a2) in a zooming process from wide angle state to a telephoto end state, the first negative lens group is moved along an optical axis (OA), the distance between the first lens group (L1) and the first intermediate lens group (L2) is variable, the distance between the first intermediate lens group (L2) and the second intermediate lens group (L3) is variable, and the distance between the second intermediate lens group (L3 and the rear lens group (L4) is variable;
a3) the second intermediate lens group (L3) is moved upon carrying out focusing from an infinite distance object to a close distance object;
a4) the focusing lens group, i.e., the second intermediate lens group (L3) comprises only one lens; and
a5) regarding the range governing the focal length, f1, of the first lens group (L1), the focal length, ftM1, of the first intermediate lens group (L2)in the telephoto end state, the focal length, fT, of the focus lens group (L3), see Note below, the focal length, ft, of the zoom lens at the telephoto end state, and the half angle of field, ω, of the zoom lens, it is noted that from optical data as provided in paragraph [0073], the following results have been obtained:
Note: there is only one focus lens group (L3) in the zoom lens of the Numerical Example 1, thus the focal length of the second intermediate lens group (L3) is considered as the one having a strongest refractive power in the focusing lens groups.
Because the focal length, f1, of the first lens group (L1) is -13.17 mm, the focal length, ftM1, of the first intermediate lens group (L2) in the telephoto end state is 18.76 mm, the focal length, fF, of the focus lens group (L3) is -30.20 mm, the focal length, ft, of the zoom lens at the telephoto end state is 17.46 mm, and the half angle of field, ω, of the zoom lens is 52.920 then
The ratio of (-f1)/ftM1 is 0.70 which is inside the range of (0.40; 2.00) as claimed in each of claims 1 and 10;
The ratio of |fF|/ftM1 is 1.61 which is inside the range of (0.80; 4.00) as claimed in each of claims 1 and 10;
The ratio of |fF|/ft is 1.73 which is inside the range of (0.70; 3.30) as claimed in each of claims 1 and 10; and
The half angle of field, ω, of the zoom lens is 52.920 which is inside the range of (38.000; 85.000) as claimed in each of claims 1 and 10.
Applicant should note that it was decided in the Courts that “the disclosure in the prior art of any value within a claimed range is an anticipation of that range.”, In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); Titanium Metals Corporation of America, 227 USPQ 773 (Fed. Cir. 1985); In re Petering, 301 F. 2d 676, 133 USPQ 275 CCPA 1962).
Regarding present claim 10, the method steps are implicitly met by the structure features of the apparatus claim 1.
b) Regarding present claim 6, the first intermediate lens group (L2) has two negative lenses, see lenses having lens surface numbered as (13, 14) and (17, 18), see the table contained data regarding “Single Lens Data”
16. Claims 1, 3, 6 and 8-10, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koida (Japanese reference No. 2015-121768).
Note that the US Publication No. 2016/034 submitted by applicant is used as an English equivalence (see also the English translation of the mentioned Japanese reference).
Koida discloses a zoom lens for use in an optical apparatus, see paragraphs [0109]-[0111] and fig. 16.
a) Regarding present claims 1, 9 and 10, the zoom lens of the Example 6 as provided in paragraphs [0185]-[0195] and [0209] and shown in figs. 11 comprises the following features:
a1) four lens groups arranged in an order from an object side to an image side of the zoom lens as follow: a first negative lens group (G1), a first positive intermediate lens group (G2), a second negative intermediate lens group (G3) and a rear lens group (G4-G5);
a2) in a zooming process from wide angle state to a telephoto end state, the first negative lens group is moved along an optical axis, the distance between the first lens group (G1) and the first intermediate lens group (G2) is variable, the distance between the first intermediate lens group (G2) and the second intermediate lens group (G3) is variable, and the distance between the second intermediate lens group (G3 and the rear lens group (G4-G5) is variable;
a3) the second intermediate lens group (G3) is moved upon carrying out focusing from an infinite distance object to a close distance object, see paragraph [0209];
a4) the focusing lens group, i.e., the second intermediate lens group (G3) comprises only one lens (L31); and
a5) regarding the range governing the focal length, f1, of the first lens group (G1), the focal length, ftM1, of the first intermediate lens group (G2) in the telephoto end state, the focal length, fT, of the focus lens group (G3), see Note below, the focal length, ft, of the zoom lens at the telephoto end state, and the half angle of field, ω, of the zoom lens, it is noted that from optical data as provided in Table 6, see paragraph [0193], the following results have been obtained:
Note: there is only one focus lens group (G3) in the zoom lens of the Example 6 is used as a focusing lens group, see paragraph [0209], thus the focal length of the second intermediate lens group (G3) is considered as the one having a strongest refractive power in the focusing lens groups.
Because the focal length, f1, of the first lens group (G1) is -2.21265 mm, the focal length, ftM1, of the first intermediate lens group (G2) in the telephoto end state is 2.40024 mm, the focal length, fF, of the focus lens group (G3), see Note below, is -8.01041 mm, the focal length, ft, of the zoom lens at the telephoto end state is 2.61mm, and the half angle of field, ω, of the zoom lens is 50.10 then
The ratio of (-f1)/ftM1 is 0.92 which is inside the range of (0.40; 2.00) as claimed in each of claims 1 and 10;
The ratio of |fF|/ftM1 is 3.34 which is inside the range of (0.80; 4.00) as claimed in each of claims 1 and 10;
The ratio of |fF|/ft is 3.07 which is inside the range of (0.70; 3.30) as claimed in each of claims 1 and 10; and
The half angle of field, ω, of the zoom lens is 50.10 which is inside the range of (38.000; 85.000) as claimed in each of claims 1 and 10.
Applicant should note that it was decided in the Courts that “the disclosure in the prior art of any value within a claimed range is an anticipation of that range.”, In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); Titanium Metals Corporation of America, 227 USPQ 773 (Fed. Cir. 1985); In re Petering, 301 F. 2d 676, 133 USPQ 275 CCPA 1962).
Regarding present claim 10, the method steps are implicitly met by the structure features of the apparatus claim 1.
b) regarding present claim 3 with the range governing the distance, D1Mw, along the optical axis between the first intermediate lens group (G2) in the wide angle state and the focal length, fw, of the variable magnification optical system, from the Table 6, it is noted that D1Mw is 3.19934 and fw is 1.00 then the value of D1Mw/fw is 3.19934 which is inside the range of (2.00; 4.00) as claimed.
c) regarding the present claim 6 with the feature regarding the number of negative lens(es), it is noted that the first intermediate lens group (G2) comprises two negative lenses, see lens es with lens surfaces numbered as (12, 13) and (14, 15).
d) regarding present claim 8 with the range governing the back focus, BFw, of the variable magnification optical system in the wide angle state and the focal length, fw, of the variable magnification optical system, from the Table 6, it is noted that BFw is 0.27 mm and fw is 1.00 then the ratio of BFw/fw is 0.27 which is inside the range of (0.10; 1.00) as claimed.
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872