NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/387,791, which is a narrowing reissue application of U.S. Application No. 16/839,500 (hereinafter the “500 Application"), entitled REAR ATTACHMENT LENS AND IMAGE PICKUP OPTICAL SYSTME USING THE SAME, which issued as U.S. Patent No. 11,169,365 (hereinafter the “365 Patent"), which issued November 9, 2021.
The status of the claims is as follows:
Claims 1-17 are pending.
Claims 1-17 are rejected.
I. STATUS OF CLAIMS
Applicant filed a response on October 28, 2025 (hereinafter the “Oct 2025 Response”) in response to the Office action mailed July 28, 2025 (hereinafter the “1st 2025 NF Action”). In the Oct 2025 Response, with respect to the 365 Patent, patent claims 1-6, 8-11 were amended, patent claim 7 was unchanged and new claims 12-17 were added. Therefore, claims 1-17 are pending and will be examined herein.
Following a review of the 1st 2025 NF Action and Applicant’s statements provided in the Oct 2025 Response, Examiners find a new rejection of the claims is necessary and thus this action is made non-final.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue application of the 500 Application, filed April 3, 2020. Examiners further acknowledge the claim of foreign priority to JP2019-073253, filed April 8, 2019.
III. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
Furthermore, Examiners find that claim 1 recites a conditional expression, which corresponds to Conditional Expression (1) cited at col. 4, line 67 of the 365 Patent. However, as noted at col. 5, lines 1-4 of the 365 Patent, “[t]he denominator component of Conditional Expression (1) corresponds to the sum of a paraxial back focus and the rear principal point position and indicates an approximate back focus.” Thus, when this definition is incorporated into claim 1, Examiners find the denominator is an approximate back focus BF.
IV. CLAIM REJECTION – 35 U.S.C. §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.
Claims 1-17 are rejected under 35 U.S.C. §112(b) as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP §2172.01. The omitted elements are the assumptions for the conditional expression |fe|/(fe×(1−βe)+np2)>9 as contemplated by Applicant. As stated by Applicant in the Oct 2025 Response, “[t]his equation is satisfied when each of the master lens and the attachment lens is regarded as a thin lens, arranged so as to contact each other, i.e., with an interval therebetween of zero.” Thus, in order for the conditional expression to be satisfied, the master and attachment lenses are assumed to be a thin lens and arranged with a zero gap. However, no such basis for the conditional expression is provided or required in the claims and thus these essential assumptions are missing, even though required as stated by Applicant for the expression to be satisfied. No new matter should be added.
V. CLAIM REJECTIONS – 35 U.S.C. §102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Anticipation Rejections Applying Sugita
Claims 1, 2, 4, 5, 7, 9 and 12-17 are rejected under 35 U.S.C. §102(a)(1) and/or (a)(2) as being anticipated by U.S. Patent Application Publication No. 2011/0080647 to Shgenobu Sugita et al. (hereinafter “Sugita”). Specifically, claims 1, 2, 4, 5, 7, 9 and 14-17 are anticipated by the camera lens system shown in FIG. 3 of Sugita while claims 1, 9, 12 and 13 are anticipated by the camera lens system shown in FIG. 5 of Sugita.
a. Rejections based on FIG. 3 of Sugita
Regarding claim 1, FIG. 3 of Sugita discloses:
a rear attachment lens attachable to an image side of master lens to form a system having an increase focal length as compared to a focal length of the master lens, comprising:
See Sugita FIG. 3, reprinted below, illustrating a camera lens system comprising a main lens arrangement LM and a rear attachment lens LA.
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Sugita FIG. 3
a first positive lens, a first negative lens, a second positive lens, a second negative lens, a third positive lens, and a fourth positive lens arranged in order from an object side to the image side,
See Sugita FIG. 3 above, note first positive lens GP1, first negative lens, second positive lens and second negative lens cemented together as lens group L2, third positive lens L3 and fourth positive lens L5.
wherein a lens surface on the image side of the fourth positive lens has a shape convex toward the image side, and
See Sugita FIG. 3 above, fourth lens L5 has a convex shape towards the image side, i.e., facing the image plane IP.
wherein the following conditional expression is satisfied:
|fe|/(fe×(1−βe)+np2)>9,
where fe represents a focal length of the rear attachment lens, βe represents a magnification of the rear attachment lens when attached to the master lens, and np2 represents a distance from the lens surface on the image side of the positive lens to a rear principal point position of the rear attachment lens when attached to the master lens.
See Sugita ¶0084 wherein the focal length of the main lens system LM is 293.58 and ¶0092 wherein the focal length the main lens and attached rear attachment lens is 586.01. Thus, using the formula 1/f = 1/f1 + 1/f2 (wherein the main leans and rear attachment lens are treated a thin lenses with no separation), Examiners thus find the focal length of the rear attachment lens is fe = -588.314 (i.e., f=586.01 and f1=293.58). Furthermore, as noted above in the claim interpretation section, the dominator of the conditional expression in claim 1 is the back focus BF of the combination of the main lens with the attached rear lens attachment. Thus, see Sugita ¶0097 wherein the BF focus of the main lens with the attached rear lens attachment shown in FIG. 3 is 57.31. Applying this focal length of the rear attachment lens (fe = -588.314) and the BF of the lens system (BF = 57.31) into the conditional expression illustrates the conditional expression is met. Specifically:
|-588.314|/(57.31) = 10.266 > 9
Furthermore, applying the disclosure of the 365 Patent that the denominator of the conditional expression in claim 1 is the back focus BF and for the lens system of FIG. 3, BF = 57.31 and the magnification is 2, then np2 is -531.004. Using these values taken from Sugita, the conditional expression of claim 1 is met. Specifically:
|-588.314|/(-588.314×(1−2)+-531.004)>9
Regarding claim 2, FIG. 3 Sugita discloses the rear attachment lens of claim 1 as evidenced above and further wherein
the following conditional expression is satisfied:
−5.00<(R2+R1)/(R2−R1)<−0.85,
where R1 represents a curvature radius of a lens surface on an object side of the positive lens, and R2 represents a curvature radius of the lens surface on the image side of the positive lens.
See Sugita FIG. 3 above and ¶0099 wherein for the fourth positive lens L5, R1=-187.967 and R2=-24.270. Adding these values into the conditional expression of claim 2, this conditional expression is met. Specifically:
(-187.967-24.270)/(-187.967+24.270)=-1.2965
Regarding claim 4, FIG. 3 of Sugita discloses the rear attachment lens of claim 1 as evidenced above and further wherein
the following conditional expression is satisfied:
−5<1000[mm]/(fe+np2)<5.
See discussion above for claim 1 wherein fe= -588.314 and np2=-531.004. Adding these values to the conditional expression of claim 4, this conditional expression is met. Specifically:
1000/(-588.314-531.004)=-.8934
Regarding claim 5, FIG. 3 of Sugita discloses the rear attachment lens of claim 1 and further wherein
the following conditional expression is satisfied:
−4<1000[mm]/(fe×βe)<4.
See discussion above for claim 1 wherein fe= -588.314 and βe(RED)=2. Adding these values to the conditional expression of claim 5, this conditional expression is met. Specifically:
1000/(-588.314x2)=-.8499
Regarding claim 7, FIG. 3 of Sugita discloses:
an image pickup apparatus, comprising: a master lens; the rear attachment lens according to claim 1; and an image pickup element that receives light from the rear attachment lens.
See FIG. 3 of Sugita above and discussion of claim 1 above wherein the image pickup apparatus comprises the master lens system LM, a rear attachment lens LA and the image plane IP where the image pick-up is located.
Regarding claim 9, FIG. 3 of Sugita discloses an optical system, comprising:
a master lens; and
See FIG. 3 of Sugita above, master lens LM
a rear attachment lens attached to an image side of the maser lens to form a system having an increase focal length as compared to a focal length of the master lens,
See FIG. 3 of Sugita above, rear attachment lens LA.
wherein the rear attachment lens includes a first positive lens, a first negative lens, a second positive lens, a second negative lens, a third positive lens and a fourth positive lens, arranged in order from an object side to the image side,
See Sugita FIG. 3 above, note first positive lens GP1, first negative lens, second positive lens and second negative lens cemented together as lens group L2, third positive lens L3 and fourth positive lens L5.
wherein a lens surface on the image side of the positive lens has a shape convex toward the image side, and
See Sugita FIG. 3 above, fourth lens L5 has a convex shape towards the image side, i.e., facing the image plane IP.
wherein the following conditional expression is satisfied:
|fe/BF|>9,
where fe represents a focal length of the rear attachment lens, and BF represents a back focus obtained when the rear attachment lens is attached to the master lens.
See Sugita ¶0084 wherein the focal length of the main lens system LM is 293.58 and ¶0092 wherein the focal length the main lens and attached rear attachment lens is 586.01. Thus, using the formula 1/f = 1/f1 + 1/f2 (wherein the main leans and rear attachment lens are treated a thin lenses with no separation), Examiners thus find the focal length of the rear attachment lens is fe = -588.314 (i.e., f=586.01 and f1=293.58). Further see Sugita ¶0097 wherein the BF focus of the main lens with the attached rear lens attachment shown in FIG. 3 is 57.31. Applying this focal length of the rear attachment lens (fe = -588.314) and the BF of the lens system (BF = 57.31) into the conditional expression illustrates the conditional expression is met. Specifically:
|-588.314/(57.31)| = 10.266 > 9
Regarding claim 14, FIG. 3 of Sugita discloses the rear attachment lens of claim 1 and further wherein
a lens surface on the object side of the first negative lens has a shape concave toward the object side.
See FIG. 3 of Sugita above, first negative lens of group L2 has a concave shape towards the object side of the rear attachment lens.
Regarding claim 15, FIG. 3 of Sugita discloses the rear attachment lens of claim 1 as evidenced above and further wherein
a lens surface on the image side of the second positive lens has a shape convex toward the image side.
See FIG. 3 of Sugita above, second positive lens in middle of lens group L2 has convex shape toward the image plane of the rear attachment lens.
Regarding claim 16, FIG. 3 of Sugita discloses the optical system of claim 9 and further wherein
a lens surface on the object side of the first negative lens has a shape concave toward the object side.
See FIG. 3 of Sugita above, first negative lens of group L2 has a concave shape towards the object side of the rear attachment lens.
Regarding claim 17, FIG. 3 of Sugita discloses the optical system of claim 9 as evidenced above and further wherein
a lens surface on the image side of the second positive lens has a shape convex toward the image side.
See FIG. 3 of Sugita above, second positive lens in middle of lens group L2 has convex shape toward the image plane of the rear attachment lens.
B. Rejections Based on FIG. 5 of Sugita
Regarding claim 1, FIG. 5 of Sugita discloses:
a rear attachment lens attachable to an image side of master lens to form a system having an increase focal length as compared to a focal length of the master lens, comprising:
See Sugita FIG. 5, reprinted below, illustrating a camera lens system comprising a main lens arrangement LM and a rear attachment lens LA.
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Sugita FIG. 5
a first positive lens, a first negative lens, a second positive lens, a second negative lens, a third positive lens, and a fourth positive lens arranged in order from an object side to the image side,
See Sugita FIG. 5 above, note first positive lens GP1, first negative lens, second positive lens and second negative lens cemented together as lens group L2, third positive lens Gp2 and fourth positive lens L4.
wherein a lens surface on the image side of the fourth positive lens has a shape convex toward the image side, and
See Sugita FIG. 5 above, fourth lens L4 has a convex shape towards the image side, i.e., facing the image plane IP.
wherein the following conditional expression is satisfied:
|fe|/(fe×(1−βe)+np2)>9,
where fe represents a focal length of the rear attachment lens, βe represents a magnification of the rear attachment lens when attached to the master lens, and np2 represents a distance from the lens surface on the image side of the positive lens to a rear principal point position of the rear attachment lens when attached to the master lens.
See Sugita ¶0084 wherein the focal length of the main lens system LM is 293.58 and ¶0102 wherein the focal length the main lens and attached rear attachment lens is 586.02. Thus, using the formula 1/f = 1/f1 + 1/f2 (wherein the main leans and rear attachment lens are treated a thin lenses with no separation), Examiners thus find the focal length of the rear attachment lens is fe = -588.30 (i.e., f=586.02 and f1=293.58). Furthermore, as noted above in the claim interpretation section, the dominator of the conditional expression in claim 1 is the back focus BF of the combination of the main lens with the attached rear lens attachment. Thus, see Sugita ¶0097 wherein the BF focus of the main lens with the attached rear lens attachment shown in FIG. 5 is 52.75. Applying this focal length of the rear attachment lens (fe = -588.30) and the BF of the lens system (BF = 52.75) into the conditional expression illustrates the conditional expression is met. Specifically:
|-588.30|/(52.75) = 11.153 > 9
Furthermore, applying the disclosure of the 365 Patent that the denominator of the conditional expression in claim 1 is the back focus BF and for the lens system of FIG. 5, BF = 52.75 and the magnification is 2, then np2 is -535.55. Using these values taken from Sugita, the conditional expression of claim 1 is met. Specifically:
|-588.30|/(-588.30×(1−2)+-535.55)>9
Regarding claim 9, FIG. 5 of Sugita discloses an optical system, comprising:
a master lens; and
See FIG. 5 of Sugita above, master lens LM
a rear attachment lens attached to an image side of the maser lens to form a system having an increase focal length as compared to a focal length of the master lens,
See FIG. 5 of Sugita above, rear attachment lens LA.
wherein the rear attachment lens includes a first positive lens, a first negative lens, a second positive lens, a second negative lens, a third positive lens and a fourth positive lens, arranged in order from an object side to the image side,
See Sugita FIG. 5 above, note first positive lens GP1, first negative lens, second positive lens and second negative lens cemented together as lens group L2, third positive lens Gp2 and fourth positive lens L4.
wherein a lens surface on the image side of the positive lens has a shape convex toward the image side, and
See Sugita FIG. 5 above, fourth lens L4 has a convex shape towards the image side, i.e., facing the image plane IP.
wherein the following conditional expression is satisfied:
|fe/BF|>9,
where fe represents a focal length of the rear attachment lens, and BF represents a back focus obtained when the rear attachment lens is attached to the master lens.
See Sugita ¶0084 wherein the focal length of the main lens system LM is 293.58 and ¶0102 wherein the focal length the main lens and attached rear attachment lens is 586.02. Thus, using the formula 1/f = 1/f1 + 1/f2 (wherein the main leans and rear attachment lens are treated a thin lenses with no separation), Examiners thus find the focal length of the rear attachment lens is fe = -588.30 (i.e., f=586.02 and f1=293.58). Further, see Sugita ¶0097 wherein the BF focus of the main lens with the attached rear lens attachment shown in FIG. 5 is 52.75. Applying this focal length of the rear attachment lens (fe = -588.30) and the BF of the lens system (BF = 52.75) into the conditional expression illustrates the conditional expression is met. Specifically:
|-588.30/(52.75)| = 11.153 > 9
Regarding claim 12, FIG. 5 of Sugita discloses the rear attachment lens of claim 1 as evidenced above and further wherein:
an air interval between the first positive lens and the first negative lens on an optical axis is wider than an air interval between the third positive lens and the fourth positive lens on the optical axis.
See FIG. 5 of Sugita above, note air gap between first positive lens Gp1 and first negative lens (first negative lens as part of lens group L2) is greater than air gap between the third positive lens Gp2 and fourth positive lens L4/Gp2. See also dimension disclosed in ¶0099.
Regarding claim 13, FIG. 5 of Sugita discloses the optical system of claim 9 as evidenced above and further wherein:
an air interval between the first positive lens and the first negative lens on an optical axis is wider than an air interval between the third positive lens and the fourth positive lens on the optical axis.
See FIG. 5 of Sugita above, note air gap between first positive lens Gp1 and first negative lens (first negative lens as part of lens group L2) is greater than air gap between the third positive lens Gp2 and fourth positive lens L4/Gp2. See also dimension disclosed in ¶0099.
VI. ALLOWABLE SUBJECT MATTER
Claims 3, 6, 8, 10 and 11 are objected to for being based on a rejected claim, but would be allowable if rewritten in independent form.
For example, while Sugita discloses the general parameters of the rear attachment lens recited in claim 3, Sugita does not disclose its lens system meeting the recited conditional expression recited in claim 3. Specifically, Sugita does not disclose or teach the effective diameter of the fourth lens (See Sugita FIG. 3, lens L5/Gp2 or FIG. 5, lens L4/Gp2) meeting the conditional expression. For the same reasons as for claim 3, claims 10 and 11 are allowable over Sugita.
Second, while Sugita discloses the general parameters of the rear attachment lens recited in claim 6, Sugita does not disclose its lens system meeting the recited conditional expression recited in claim 6. Specifically, Sugita does not disclose or teach the distance De for the first positive lens (See Sugita FIG. 3, lens Gp1 or FIG. 5, lens Gp1) meeting the conditional expression.
Third, while Sugita discloses the general parameters of the rear attachment lens recited in claim 8, Sugita does not disclose its lens system meeting the recited conditional expression recited in claim 8. Specifically, Sugita does not disclose or teach the effective diameter of the fourth lens (See Sugita FIG. 3, lens L5/Gp2 or FIG. 5, lens L4/Gp2) meeting the conditional expression.
VII. EXAMINERS’ RESPONSES TO APPLICANT’S ARGUMENTS
Applicant’s arguments provided in the Oct 2025 Response have been fully considered. Each argument is taken in turn below.
Regarding the application of the focal length measurement provided in the rejection above, Applicant first notes that the focal length “varies according to an interval between the master lens and the attachment lens.” Examiners agree to this statement in general when using the general focal length equation in general,(1/f = 1/f1 + 1/f2 - 1/(d*f1*f2) to determine the focal length of the overall system based on the specific focal lengths f1 and f2. However, if it is assumed that the distance between the master lens and the attachment lens is zero and the lenses are regarded as thin lenses, this distance aspect of the focal length equation drops out. This assumption was applied in the rejections above since the master lens arrangement and the attachment lens arrangement are attached to teach other and each lens arrangement was treated as a single thin lens.
Examiners further find such an assumption is consistent with the Applicant’s assumption in the conditional expression recited in the independent claims, i.e., |fe|/(fe×(1−βe)+np2)>9. As stated by Applicant on page 7 of the Oct 2025 Response, regarding the condition expression recited in the claims, “[t]his equation is satisfied when each of the master lens and the attachment lens is regarded as a thin lens, arranged so as to contact each other, i.e., with an interval therebetween of zero.” Thus, Examiners assumptions with regard to lens arrangements are consistent and precisely the same as those required in the claims as stated by Applicant. Thus, Examiners interpretation of overall conditions regarding the prior art is consistent with the claim conditions.
Using these assumptions as applied to the focal length equations, Examiners note Examiners are using the data provided in paragraphs [0091]-[0099] of Sugita for data of the first example when the rear attachment lens is attached to the main lens, i.e., “Data of the First Numerical Example (When Attached to the Main Lens).” Specifically, Examiners are using the data wherein the overall focal length is f=586.01 that of the main lens arrangement is f1=293.58. Thus, using the data from this first numerical example and the Applicant’s own assumptions, the rear attachment lens of Sugita reads on the claimed conditional expression as provided in the rejections above.
On page 8 of the Oct 2025 Response, Applicant argues that focal length cannot be calculated by the equation of focal length used by the Examiners in the rejection above, based on the changes in focal length when the interval length is varies. Examiners disagree. If Examiners follow the same assumptions as Applicant in the claimed conditional expression as in the application of the prior art, the prior art reads on the claimed conditional expression. Examiners further note that the using the overall focal length of Sugita as applied in the focal length equations takes into consideration the Applicant’s noted variations.
VIII. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 365 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
IX. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
X. CONCLUSION
Claims 1-17 are pending.
Claims 1-17 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992