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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/10/2026 has been entered.
Response to Amendment
The present office action is made in response to the amendment filed by applicant on 08/10/2026. It is note that in the amendment, applicant has made changes to the claims. There was not any change being made to the abstract, the drawings and the specification.
Regarding the claims, applicant has amended claims 1-2 and 10; canceled claims 3 and 26 and added a set of claims, i.e., claims 28-29, into the application.
Response to Arguments
The amendments to the claims as provided in the amendment of 08/10/2026, and applicant's arguments filed in the mentioned amendment, pages 9-11, have been fully considered and resulted in the following conclusions:
A) Regarding the claims, the following conclusions are made:
A1) because applicant has canceled claims 3 and 26 and added new claims 28-29 into the application, thus as amended and newly-added, the pending claims are claims 1-2, 4-18, 25 and 27-29;
A2) a review of the newly-added claims 28-29 have resulted that the scope of each new claims is different from that recited in the elected claims 1-2, 4-18, 25 and 27, thus, the new claims 28-29 are grouped into a new group different from the groups of Inventions I and II, see the below section of Election/Restriction; and
A3) As a result, claims 1-2, 6-7, 10-11, 14-18, 25 and 27 are examined in the present office action, and claims 4-5, 8-9, and 12-13, directed to Invention II, and claims 28-29, directed to Invention III have been withdrawn from further consideration as being directed to a non-elected invention. (Note that claims 19, 21 and 24 were canceled in the amendment of 04/01/2026 and claims 20, 22 and 23 were canceled in the amendment of 04/01/2026)
Applicant should note that the non-elected claims 4-5, 8-9, 12-13 and 28-29 will be rejoined if the linking claim 1 is later found as an allowable claim.
B) Regarding the rejections of claims 1-3, 6-7, 10-11, 14-18 and 25-27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 06/11/2026, the amendments to the claims as provided in the amendment of 08/10/2026, and applicant’s arguments provided in the mentioned amendment, pages 9-10, have been fully considered and are sufficient to overcome the rejections of claims 1-3, 6-7, 10-11, 14-18 and 25-27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
C) Regarding the rejection of claims 1-3, 6-7, 10-11, 14-18 and 25-27 under 35 U.S.C. 103 as being unpatentable over Nagaoka (US Patent No. 5,627,682) in view of Amano et al (US Patent No. 10,816,759), set forth in the office action of 06/11/2026, the amendments to the claims as provided in the amendment of 08/10/2026, and applicant’s arguments provided in the mentioned amendment, pages 10-11, have been fully considered but are moot because the new ground of rejection while still relying on the same arts but modified to meet the change(s) in the claims as provided in the amendment of 08/10/2026.
Election/Restrictions
6. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 2, 7 and 10-11, drawn to a zoom lens having a first positive lens group, an intermediate lens group, a rear lens group with specific features regarding ranges governing the relationships among focal lengths of the lens(es) and/or lens unit(s) constituted the zoom lens, classified in G02B15/14;
II. Claims 4-5, 8-9, and 12-13, drawn to a zoom lens having a first positive lens group, an intermediate lens group, a rear lens group with specific features regarding ranges governing the refractive index(es) and/or the Abbe number(s) of the material(s) used to make the lens(es) constituted the zoom lens, classified in G02B1/00; and
III. Claims 28-29, drawn to a zoom lens having a first positive lens group, an intermediate lens group, a rear lens group with specific features regarding the number of lens(es) constituted the lens groups of the zoom lens, classified in G02B15/143.
7. Claim 1 links inventions I-III. Note that claims 6, 14-18, 25 and 27 each does not recite any feature used to group the claims as mentioned above, thus those claims will be examined with the linking claim and the claims of the elected invention. See NOTE below. The restriction requirement between the linked inventions is subject to the nonallowance of the linking claim, claim 1. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104 Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.
Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
NOTE:
a) if the Invention I is elected then claims 1-2, 6-7, 10-11, 14-18, 25 and 27 are examined and claims 4-5, 8-9, 12-13, and 28-29 will not be examined.
b) If the Invention II is elected then claims 1, 4-6, 8-9, 12-18, 25 and 27 will be examined and claims 2, 7, 10-11 and 28-29 will not be examined.
c) If the Invention III is elected then claims 1, 6, 14-18, 25 and 27-29 will be examined and claims 2, 4-5, and 7-13 will not be examined
8. The inventions are distinct, each from the other because of the following reasons:
Inventions I-III are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, each subcombination has separate utility for use in a zoom lens having a first positive lens group, an intermediate lens group, a rear lens group without the specific features related in other subcombinations. For instance, the invention of Invention I does not need the specific ranges governing the refractive index(es) and/or the Abbe number(s) of the material(s) used to make the lens(es) constituted the zoom lens as recited in the claims of the Invention II or the numbers of lenses constituted the lens groups of the zoom lens as recited in the claims of the Invention III and vice versa. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
9. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
The different features recited in the subcombination have acquired separate status in the art in view of their different classification and require different searches.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
10. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 4-5, 8-9, 12-13 and 28-29 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
11. 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.
12. Claim 11 is 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.
The claim is rejected because it recites a range which fails to further limit the subject matter of the claim upon which it depends. In particular, the claim recites that the range governing the ratio of f1/fN1 is (-12.0; -2.0); however, its base claim 1 recites that the range governing the ratio of f1/fN1 is (-12.0; -3.8).
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 § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
15. Claims 1-3, 6-7, 10-11, 14-18, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Nagaoka (US Patent No. 5,627,682) in view of Amano et al (US Patent No. 10,816,759) (both of record).
Nagaoka discloses a zoom lens for use in a camera.
a) Regarding present claims 1, 18 and 25, the zoom lens of the fourth embodiment for use in a camera which is understood as an optical device having an image sensor for capturing an image formed by the zoom lens as described in columns 13-14 and 17-18 and shown in fig. 7 comprises the following features:
a1) a first/front positive lens unit (G1) which is fixed in a zooming process;
a2) a second/middle lens group (G2) comprises a plurality of lens units (G2F, G2R) wherein each lens unit of the plurality of lens units has a negative refractive power and is movable during a zooming process;
a3) a third/rear positive lens unit (G3) which is fixed during a zooming process;
a4) the mentioned first/front lens unit (G1), a second/middle lens group (G2), and the third/rear lens unit (G3) are arranged in that order from an object side to an image side of the zoom lens wherein the interval/distance between adjacent lens units changes in a zooming process, see columns 13-14 with data showing the zoom lens; and
a5) the first lens unit or sub-intermediate unit (G2F) of the second/middle group (G2) comprises two negative lenses and a positive lens, and the second lens unit or sub-intermediate unit (G2R) of the second/middle group (G2) comprises two negative lenses, see columns 13-14 with data showing the zoom lens.
The only feature missing from the zoom lens provided by Nagaoka is that Nagaoka does not disclose the material(s) used to make the positive and the negative lenses of the lens constituted the second/middle lens group which satisfies a set of conditions.
However, regarding the material(s) of the negative lens(es) of the fourth embodiment, in column 17 on lines 56-63, Nagaoka discloses that a glass material having a low dispersion characteristic is used to correct both the monochromatic aberrations and chromatic aberrations due to the movement of the second/middle lens group (G2).
The use of materials for positive lenses and negative lenses constituted a lens system for the purpose of reducing image aberrations is known to one skill in the art as can be seen in the imaging lens provided by Amano et al. In particular, Amano et al discloses an imaging lens having a plurality of lenses wherein the positive lens(s) and the negative lens(es) constituted the imaging lens is selected from materials which reduce image aberrations. For instance, in the imaging lens of Example 1 as provided in columns 9-10, the positive lens having lens surfaces numbered as (1, 2) is made by S-LAL54Q manufactured by OHARA INC., and the negative lens having lens surfaces numbered as (12, 13) is made by S-LAL20 manufactured by OHARA INC., see column 9 on lines 9-15. It is noted that the materials used to make the lenses as mentioned above are materials satisfying the conditions as claimed in present claims 1 and 19, see the present specification in paragraph [0046]. Applicant should note that when a work is available in one field of endeavor, design incentives and other market forces can prompt variation of it. See also In re Leshin, 125 USPQ 416 which states that a selection of known material on the basis of suitability for an intended use is within the general skill of a worker in the art. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to use glass materials such as S-LAL20, S-LAL54Q or other suitable materials as suggested by Amano et al which materials are available in the market to make the lenses constituted the zoom lens the zoom lens of the fourth embodiment provided by Nagaoka to reduce manufacture cost and the image aberrations, see Amano et al in column 1, lines 40-45, for example.
Regarding the conditions governing the materials used to make the lenses as claimed in claim 1, it is noted that the combined product provided by Nagaoka and Amano et al with lenses of the zoom lens of the fourth embodiment provided by Nagaoka made by materials as suggested by Amano et al wherein the materials are the same as those used to make the lenses of the invention thus the combined product provided by Nagaoka and Amano et al meets the claimed conditional inequalities.
Regarding present claims 1 and 11, since the focal length, f1, of the first/front lens unit (G1) is 49.8134 mm and the focal length, fN1, of the first/front/sub-intermediate lens unit (G2F), which has the strongest negative refractive power of all lens units constituted the second/middle lens group (G2), is about -17.76 mm then f1 / fN1 is about -2.80 which is closed to the upper limit of the range of (-12.0; -3.8) as claimed in claim 1 and inside the range of (-12.0; -2.0) as recited in claim 11, see Nagaoka in columns 13-14.
While the zoom lens of the fourth embodiment as provided by Nagaoka disclose that the value of ratio of f1/fN1 is inside the range of (-12.0; -3.8) as recited. However, the upper value of -3.8 of the range as claimed is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the present specification, for example, paragraphs [0049], [0081], Table 1 and in present claim 11 which recites the range governing the ratio of f1/fN1 is (-12.0; -2.0) in which the value of -2.8 of the fourth embodiment provided by Nagaoka is located inside that range. With such description/teaching as provided in the present specification and claim 11 then there is not any unexpected result or optical performance occurred between a zoom lens having a range of (-12.0; -3.8) governing the ratio of f1/fN1 and a zoom lens having a range of (-12.0; -2.0) governing the ratio of f1/fN1. Because the value of the mentioned ratio of the zoom lens of the fourth embodiment provided by Nagaoka is inside the range of (-12.0; -2.0) thus it is expect that the zoom lens of the fourth embodiment provided by Nagaoka is working fine with the range of (-12.0; -3.8). See In re Wertheim, supra; Titanium Metals Corporation of America V. Banner, supra.
Thus, the zoom lens with feature related to the ratio of f1/N14 as recited in the present claim 1 is read from the zoom lens of the fourth embodiment provided by Nagaoka or it would have obvious to one skilled in the art before the effective filing date of the invention to utilize the zoom lens of the fourth embodiment provided by Nagaoka and adjust the optical characteristics of the lens element(s) constituted the lens groups of the zoom lens so that the value of the ratio of f1/fN1 is inside the ranged claimed or any similar range(s) to meet a particular application. Applicant should further note that it has been held in the Courts that a discovery an optimum value or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233; In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980).
b) Regarding present claims 2, 7, 10 and 27, in the combined product provided by Nagaoka and Amano et al, the negative lenses each is made by material of S-LAL20 which has a refractive index of 1.6993 then the focal length, fLN1, of the negative lens having lens surfaces (10, 11), ,which lens has a strongest negative refractive power of the first/front/sub-intermediate lens unit (G2F) of the second/middle lens group (G2), is about -28.40 mm, and the focal length, fN1, of the first/front/sub-intermediate lens unit (G2F), which has the strongest negative refractive power of all lens units constituted the second/middle lens group (G2), is about -17.76 mm then fLN1 / fN1 is about 1.60 which is inside the range of (0.3; 5.0) as claimed in claim 2 or inside the range of (0.3; 4.0) as claimed in each of claims 7 and 10. See lens data of the fourth embodiment provided by Nagaoka in columns 13-14.
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).
Note that the focal length of a lens is calculated by the following formula:
1
f
=
n
-
1
1
r
1
-
1
r
2
+
d
(
n
-
1
)
2
n
r
1
r
2
where f is a focal length, n is a refractive index, r1 and r2 are radius of curvature of the object-side lens surface and the image-side lens surface, and d is a thickness of the lens.
d) Regarding present claims 6 and 14-15 the use of glass materials in the combined product provided by Nagaoka and Amano et al will yield the conditions as recited in each of present claims 6, 14-15, 21 and 24. It is also noted that the first sub-intermediate lens (G2F) of the second/middle lens group (G2) is moved monotonically to the image side of the zoom lens as provided by Nagaoka, see column 14, data regarding the distance D1 in three status, i.e., wide, intermediate and telephoto statuses, of the zoom lens.
e) Regarding present claim 16, the zoom lens of the fourth embodiment comprises an aperture stop, see the element with surface numbered as #18 which aperture stop is located between the second/middle lens group (G2) and the third/rear lens unit (G3).
f) Regarding the movement of the aperture stop as recited in present claim 17, the movement of the aperture stop is merely that of a preferred embodiment and is not critical to the invention. The support for that conclusion is found in the present specification in which in the first to sixth embodiments, the aperture SP is not moved during a zooming process. Thus, absent of any showing of criticality, it would have been obvious to one skill in the art before the effective filing date of the invention to keep the aperture stop fixed/stationary or to move the aperture stop for adjusting the size of the light bundle passing through the third/rear lens unit during an image forming process to meet a particular application.
Conclusion
16. 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
