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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, the limitation “the two lenses each have a single convex surface” contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention, since no embodiment disclosed in the drawings or written description has two lenses, each of which having single (i.e. one and only one) convex surface.
The applicant claims support in para.[0175] of the publication which recites: the lens group including two lenses each having positive power, and the two lenses each have a convex surface. However, the paragraph does not recite the two lenses each have “a single convex surface”. Furthermore fig.1 shows two lenses each with two convex surfaces (211 and 212; 221 and 222); fig.6 shows one lens with a single convex surface (11); fig.7 shows one lens with a single convex surface (21) but not each lens with a single convex surface; fig.8 shows one lens with a single convex surface (21) but not each lens with a single convex surface; fig.9 shows one lens with a single convex surface (22) but not each lens with a single convex surface; fig.10 shows one lens with a single convex surface (22) but not each lens with a single convex surface; fig.11 shows one lens with a single convex surface (21) but not each lens with a single convex surface; fig.12 shows two lenses each with two convex surfaces (211 and 212; 221 and 222); fig.13 shows two lenses each with two convex surfaces (211 and 212; 221 and 222; fig.14 shows two lenses each with two convex surfaces (211 and 212; 221 and 222); and fig.15 shows two lenses each with two convex surfaces (211 and 212; 221 and 222).
Therefore, the limitation “the two lenses [of the lens group] each have a single convex surface contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention, since no embodiment has two lenses, each of which have single (i.e. one and only one) convex surface.
Claims 2-12 inherit the deficiency of claim 1.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 JERRY L. BROOKS whose telephone number is (571)270-5711. The examiner can normally be reached M-F 9:00-4:00 PM.
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, Toan Ton can be reached at 5712722303. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY L BROOKS/Primary Examiner, Art Unit 2882
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