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 Amendment
The present office action is made in response to the amendment filed by applicant on 04/01/2026. It is note that in the amendment, applicant has made changes to the specification and the claims. There was not any change being made to the abstract and the drawings.
A) Regarding the specification, applicant has made changes to paragraphs [0023], [0027], [0037] and [0087]; and
B) Regarding the claims, applicant has amended claims 1-2 and 10; canceled claims 19-24 and added a set of claims, i.e., claims 26-27, into the application.
Response to Arguments
The amendments to the specification and the claims as provided in the amendment of 04/01/2026, and applicant's arguments filed in the mentioned amendment, pages 11-15, have been fully considered and resulted the following conclusions:
A) Regarding the claims, the following conclusions are made:
A1) because applicant has canceled claims 19-24 and added new claims 26-27 into the application, thus as amended and newly-added, the pending claims are claims 1-18 and 25-27;
A2) a review of the newly-added claims 26-27 have resulted that the scope of each new claims is similar to that recited in the elected and examined claims 3 and 10, respectively, thus, the new claims 26-27 are grouped into the elected Invention I; and
A3) As a result, claims 1-3, 6-7, 10-11, 14-18 and 25-27 (Note that claims 19, 21 and 24 were canceled in the amendment of 04/01/2026) are examined in the present office action, and claims 4-5, 8-9, and 12-13 (Note that claims 20, 22 and 23 were canceled in the amendment of 04/01/2026) have been withdrawn from further consideration as being directed to a non-elected invention.
Applicant should note that the non-elected claims 4-5, 8-9, and 12-13 will be rejoined if the linking claim 1 is later found as an allowable claim.
B) Regarding the objections to the drawings set forth in the office action of 01/02/2026, the amendments to the specification as provided in the amendment of 04/01/2026, and applicant’s arguments provided in the mentioned amendment, page 11, have been fully considered and are sufficient to overcome the objections to the drawings set forth in the mentioned office action.
C) Regarding the objections to the specification set forth in the office action of 01/02/2026, the amendments to the specification as provided in the amendment of 04/01/2026, and applicant’s arguments provided in the mentioned amendment, pages 11-12, have been fully considered and are sufficient to overcome the objections to the specification set forth in the mentioned office action.
D) Regarding the rejections of claims 1-3, 6-7, 10-11, 14-19, 21 and 24-25 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 01/02/2026, the amendments to the claims as provided in the amendment of 04/01/2026, and applicant’s arguments provided in the mentioned amendment, page 12, have been fully considered. The amended claims are subjected to new rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
E) Regarding the rejection of claims 1-3, 6-7, 10-11, 14-19, 21 and 24-25 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 01/02/2026, the amendments to the claims as provided in the amendment of 04/01/2026, and applicant’s arguments provided in the mentioned amendment, page 12, have been fully considered but they are not persuasive. Thus, the claims 1-3, 6-7, 10-11, 14-19, 21 and 24-25, now applied to claims 1-3, 6-7, 10-11, 14-18 and 25-27 (Note that claims 19, 21 and 24 were canceled in the amendment of 04/01/2026), are rejected under 35 U.S.C. 103 as being unpatentable over the same arts, i.e., Nagaoka (US Patent No. 5,627,682) and Amano et al (US Patent No. 10,816,759), for the reasons as set forth in the office action of 01/02/2026 and repeated in the present office action.
In response to applicant's argument that the value of conditional expression (3), i.e., “0.490 < ƟCtLN – 0.00417 x vdLN < 0.550”, the material of S-LAL54Q as provided by Amano is not inside the range claimed, and the material of S-LAL20 provided by Amano is for a positive lens, see amendment, REMARKS in page 12, and the lens with materials as provided by Nagaoka does not satisfy the conditional expression (8), i.e., “-0.050 < ƟCtNmp – ƟCtNmn < 0.050”, see amendment, REMARKS in pages 12-15, the examiner offer the following responses:
A) In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
B) The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the use of glass materials such as S-LAL20, S-LAL54Q or other suitable materials for reducing image aberrations as suggested by Amano et al for either a positive lens or a negative lens is the teaching would have suggested to those of ordinary skill in the art.
In the zoom lens provided by Nagaoka, the primary reference, each of the negative lenses constituted the first sub-intermediate unit (G2F), i.e., the lenses having lens surfaces numbered as (r8,r9) and (r10,r11), each has a refractive index of 1.72916 (which is inside the range of 1.60; 2.00) and Abbe number of 54.68 (which is inside the range of (25.0; 60.0). Amano et al, the secondary reference, was used in combination with the primary reference, discloses a zoom lens and discloses that materials of S-LAL20, S-LAL54Q or other suitable materials are able to be use to make either a positive lens or a negative lens,
Because the materials as suggested by Amano et al are the materials used to make the lenses as disclosed by the applicant, see the present specification in paragraph [0046], then the combined product provided by Nagaoka and Amano et al satisfies all conditional inequalities as recited in the present claim 1. 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 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. See also In re Aller et al, 105 USPQ 233; In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980) which states that a discover of an optimum or workable ranges involves only routine skill in the art.
Drawings
The drawings contain twenty-nine sheets of figures 1, 2A-2C, 3, 4A-4C, 5, 6A-6C, 7, 8A-8C, 9, 10A-10C, 11, 12A-12C, 13, 14A-14C and 15 were received on 07/14/2023. These drawings are approved by the examiner.
Specification
The lengthy specification which was amended by the amendment of 04/01/2026 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.
Claim Rejections - 35 USC § 112
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, 6-7, 10-11, 14-18 and 25-27 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 by the features thereof “where ndLN is a refractive index of a material of the negative LN … for C-line and t-line” (lines 14-16). What does applicant mean by the so-called “the negative lens LN” (line 14)? What is/are the structural relationship(s) between/among the mentioned “the negative lens LN” recited on line 14 and the “at least one negative lens” of the intermediate group as recited in the claim on lines 9-10? Applicant should note that the term “LN” was canceled/deleted in the claim as provided in the amendment of 04/01/2026.
For the purpose of examination, the feature thereof “the negative lens LN” recited in the claim on line 14 is understood as --a negative lens LN of the at least one negative lens--.
a2) the lens structure of the intermediate group as recited in the claim by the features thereof “wherein the intermediate group … lens unit Nm” (lines 9-24) is unclear. In particular, it is unclear about the structural relationship(s) between the intermediate group having at least one negative lens (lines 9-10) and the “a lens unit Nm including a negative lens LNm” (line 21) where LNm is a negative lens having strongest negative refractive power in the at least one negative lens (lines 19-20). Is the so-called “a lens unit Nm” the intermediate group or a part of the intermediate group?
For the purpose of examination, the so-called “a lens unit Nm” is considered as a part of the intermediate group.
a3) It is unclear about the number of negative lens LNm in the zoom lens as recited by the feature thereof “where LNm … lens unit Nm” (lines 19-24). Applicant should note that the mentioned features recites a negative lens LNm on line 19 and another negative lens LNm on line 21. Are they the same or different from each other?
For the purpose of examination, the so-called “a negative lens LNm” recited on line 21 is considered as --the negative lens LNm-- as recited in the claim on line 19.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
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.
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 1-3, 6-7, 10-11, 14-18 and 25-27 as best as understood, 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 claims 1 and 19, 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.
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.
c) Regarding present claims 3, 11 and 26, 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 inside the range of (-12.0; -2.0) as claimed in each of claims 3 and 11, see Nagaoka in columns 13-14.
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
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 THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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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
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