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 .
Election/Restrictions
Applicant’s election of Species A1, corresponding to claims 1-11 and 14-19 (and withdrawing claims 12-13) in the reply filed on April 17, 2026 is acknowledged. 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)).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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.
Claims 3 and 16 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for “-2.0≤(RC1+RB2)/(RC1-RB2)≤1.0 where RB2 represents a curvature radius of the lens surface on the image side of the lens having the positive refractive power, and RC1 represents a curvature radius of the lens surface on the object side of the second single lens”, does not reasonably provide enablement for “-2.0≤(RC1+RB2)/(RC1-RB2)≤1.0 where RB2 represents a curvature radius of the lens surface on the image side of the lens having the negative refractive power, and RC1 represents a curvature radius of the lens surface on the object side of the second single lens”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. In light of the specification, see paragraph [0048] and the values in paragraphs [0069-72] and Table 1, it is clear that RB2 represents a curvature radius of the lens surface on the most image side of the cemented lens, i.e. the “lens having a positive refractive power” introduced in claims 1 and 14. For purposes of examination the examiner will use “-2.0≤(RC1+RB2)/(RC1-RB2)≤1.0 where RB2 represents a curvature radius of the lens surface on the image side of the lens having the positive refractive power, and RC1 represents a curvature radius of the lens surface on the object side of the second single lens.”
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 1-11 and 14-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1 and 14 “40≤νBC≤80” where “νBC represents an average value of Abbe numbers for a d-line” raises clarity issues. It is unclear which elements are included in the average, e.g. the lenses of the first lens unit, or the lenses of the second lens unit, or the lenses of the third lens unit, or the lenses of some combination of the units, or all of the lenses, or of some select lenses. In light of the specification, see paragraph [0045] and figures 1, 3, 5 and 7 lenses B and C, νBC represents an average value of Abbe numbers of two particular lenses, specifically the negative lens in the cemented lens in the second lens unit and the last negative lens in the second lens unit. The examiner suggests and for purposes of examination will use “νBC represents an average value of Abbe numbers for a d-line of the lens having a negative refractive power in the second lens unit and the second single lens in the second lens unit”.
Claims 2-11 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Claims 15-19 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 14 and therefore have the same deficiencies.
Regarding claims 4 and 17 “the cemented lens” has antecedent issues. No cemented lens has been introduced and it is unclear if lenses introduced as part of the first or second lens units are being referenced (and which ones) or if new/different lenses are meant. In light of the specification, see paragraph [0051] and figures 1, 3, 5 and 7, it is clear that lens B is the cemented lens consisting of “a lens having a negative refractive power, a lens having a positive refractive power” introduced in claims 1 and 14. For purposes of examination the examiner will use “wherein the negative refractive power and the lens having a positive refractive power form a cemented lens, and a following inequality …”
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.
Claim 6 is rejected under 35 U.S.C. 112(d) 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. Regarding claim 6 the sole limitation of “wherein a following inequality is satisfied: 4.0≤|f1/f2|≤8.0 where f1 represents a focal length of the first lens unit” repeats the limitation already required by claim 1. Thus, claim 6 fails to further limit claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2, 6-11, 14-15 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al. US Patent 4,896,950.
Regarding claim 1 Endo discloses a zoom lens (title e.g. example 1 see figure 1) comprising four or more lens units including, in order from an object side to an image side, a first lens unit having a positive refractive power (abstract “first lens unit or group having a positive refractive power” e.g. a first lens unit I), a second lens unit having a negative refractive power (abstract “second lens unit or group having a negative refractive power” e.g. second lens unit II), and a third lens unit having a positive refractive power (abstract “third lens unit or group having a positive refractive power” e.g. third lens unit III), wherein a distance between adjacent lens units varies during zooming from a wide-angle end to a telephoto end (abstract “when varying the magnifying power of the lens from a wide angle end to a telephoto end, an air space between an i-th lens unit and an i+1-th lens unit varies” e.g. see figure 1), wherein the first lens unit moves during zooming (e.g. see figure 1), wherein a distance between the first lens unit and the second lens unit at the telephoto end is wider than that at the wide-angle end (e.g. see figure 1), and a distance between the second lens unit and the third lens unit at the telephoto end is narrower than that at the wide-angle end (e.g. see figure 1), wherein a lens unit disposed closest to the image side in the zoom lens (e.g. fifth lens unit V) includes a single lens having a positive refractive power (e.g. the unlabeled 14th or 15th lens), wherein the first lens unit (e.g. I) consists of three or less lenses (e.g. see figure 1), wherein the second lens unit (e.g. II) consists of, in order from the object side to the image side, a first single lens (e.g. the unlabeled 4th lens) as a spherical lens (inherent since the system no aspherical surfaces) having a negative refractive power (e.g. using the values in column 8 lines 25-59 f=-46.54), a negative refractive power (e.g. the unlabeled 5th lens using the values in column 8 lines 25-59 f=-46.69), a lens having a positive refractive power (e.g. the unlabeled 6th lens using the values in column 8 lines 25-59 f=32.45), and a second single lens (e.g. the unlabeled 7th lens) as a spherical lens (inherent since the system no aspherical surfaces) having a negative refractive power (e.g. using the values in column 8 lines 25-59 f=-45.49), and wherein following inequalities are satisfied: 40≤νBC≤80 (e.g. using the values in column 8 lines 25-59 νBC=40.8), 4.0≤|f1/f2|≤8.0 (e.g. Table 1 |f1/f2|=5.65), and 3.1≤d21/d22≤10.0 (e.g. using the values in column 8 lines 25-59 d21/d22=5.0).
Regarding claim 2 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein a following inequality is satisfied: 1.0≤-(RA2+RA1)/(RA2-RA1)≤10.0 (e.g. using the values in column 8 lines 25-59 -(RA2+RA1)/(RA2-RA1)=1.3).
Regarding claim 6 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein a following inequality is satisfied: 4.0≤|f1/f2|≤8.0 (e.g. using the values in Table 1 |f1/f2|=5.7).
Regarding claim 7 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein a following inequality is satisfied: 3.5≤|f1/fw|≤10.0 (e.g. using the values in Table 1 |f1/fw|=4.2).
Regarding claim 8 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein a following inequality is satisfied: 0.2≤|f3/ft|≤0.6 (e.g. Table 1 |f3/ft|=0.2).
Regarding claim 9 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein a following inequality is satisfied: 0.3≤V≤1.0 where V represents a third-order aberration coefficient of a distortion that occurs in the zoom lens at the wide-angle end (inherent given structure and function).
Regarding claim 10 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein a following inequality is satisfied: -15.0≤dmin≤-4.4 where dmin represents a percentage of distortion at a maximum image height, the distortion occurring in the zoom lens at the wide-angle end (inherent given structure and function).
Regarding claim 11 Endo discloses the zoom lens according to claim 1, as set forth above. Endo further discloses wherein the zoom lens consists of, in order from the object side to the image side, the first, second and third lens units (e.g. I, II and III, respectively), a fourth lens unit having a negative refractive power (abstract “fourth lens unit or group having a negative refractive power” e.g. fourth lens unit IV), and a fifth lens unit having a positive refractive power (abstract “fifth lens unit or group having a positive refractive power” e.g. fifth lens unit V).
Regarding claim 14 Endo further discloses an apparatus (column 1 lines 5-11 “photographic camera, a video camera or the like”) comprising: a zoom lens according to claim 1 (as set forth above); and a sensor configured to receive an optical image formed by the zoom lens (inherent for proper operation of a camera).
Regarding claims 15 and 19, the limitations of claims 15 and 19 are the same as the limitations of claims 2 and 7, respectively, and claims 15 and 19 are rejected for the same reasons.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-11, 14-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. US Patent Application Publication 2016/0154221 with evidence of certain facts provided by MIL-HDBK-141 “Military Standardization Handbook Optical Design” page 8-15, October 1962.
Regarding claim 1 Noda discloses a zoom lens (title e.g. examples 1-3 see figures 1-3) comprising four or more lens units including, in order from an object side to an image side, a first lens unit having a positive refractive power (abstract “positive first lens group” e.g. G1), a second lens unit having a negative refractive power (abstract “negative second lens group” e.g. G2), and a third lens unit having a positive refractive power (abstract “positive third lens group” e.g. G3), wherein a distance between adjacent lens units varies during zooming from a wide-angle end to a telephoto end (e.g. see figure 4), wherein the first lens unit moves during zooming (e.g. see figure 4), wherein a distance between the first lens unit and the second lens unit at the telephoto end is wider than that at the wide-angle end (abstract e.g. see figure 4), and a distance between the second lens unit and the third lens unit at the telephoto end is narrower than that at the wide-angle end (abstract e.g. see figure 4), wherein a lens unit disposed closest to the image side in the zoom lens (e.g. G5) includes a single lens (e.g. L51) having a positive refractive power (e.g. paragraph [0062] “G5 has a positive refractive power, and is constituted by a single lens component”), wherein the first lens unit (e.g. G1) consists of three or less lenses (e.g. L11, L12 & L13), wherein the second lens unit (e.g. G2) consists of, in order from the object side to the image side, a first single lens (e.g. L21) having a negative refractive power (paragraph [0059] “negative meniscus lens L21”), a lens (e.g. L22) having negative refractive power (paragraph [0059] “negative lens L22”), a lens (e.g. L23) having a positive refractive power (paragraph [0059] “positive lens L23”), and a second single lens (e.g. L24) as a spherical lens (e.g. Tables 1, 5 & 9 indicate spherical surfaces) having a negative refractive power (paragraph [0059] “negative lens L24”), and wherein following inequalities are satisfied: 40≤νBC≤80 (e.g. using the values in Tables 1, 5 & 9 νBC=55.105), 4.0≤|f1/f2|≤8.0 (e.g. using the values in Tables 1, 5 & 9 |f1/f2|=5.8, 5.8 & 6.1,respectively), and 3.1≤d21/d22≤10.0 (e.g. using the values in Tables 1, 5 & 9 d21/d22=6.2, 6.1 & 7.0,respectively).
Noda does not disclose the first single lens as a spherical lens. However, one skilled in the art could choose which lens surfaces are spherical or aspherical with a reasonable expectation of success, as evidenced by the Military Standardization Handbook Optical Design MIL-HNDK-141 page 8-151. There are a limited number of surfaces to choose from and it has been held "If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007) at 1397. One would be motivated to have the first and second single lenses be spherical lenses to reduce difficulty and cost of manufacture. Therefore, it would have been obvious design/engineering choice to a person of ordinary skill in the art before the effective filing date of the claimed invention for the zoom lens as disclosed by Noda to have the first and second single lenses as a spherical lenses for the purpose of reducing difficulty and cost of manufacturing and since there are a limited number of lens surfaces to choose from and it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp.
Regarding claim 2 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein a following inequality is satisfied: 1.0≤-(RA2+RA1)/(RA2-RA1)≤10. 0 (e.g. using the values in Tables 1, 5 & 9 -(RA2+RA1)/(RA2-RA1)=1.2, 1.2 & 1.2,respectively).
Regarding claim 4 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein the lens having negative refractive power (e.g. L22) and the lens having a positive refractive power (e.g. L23) form a cemented lens (e.g. see figures 1-3), and a following inequality is satisfied: 0.6≤|RBm/f2|≤3.0 (e.g. using the values in Tables 1, 5 & 9 |RBm/f2|=1.2, 1.1 & 1.2, respectively).
Regarding claim 5 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein following inequalities are satisfied: 1.51≤nBC≤1.85 (e.g. using the values in Tables 1, 5 & 9 nBC=1.71).
Regarding claim 6 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein a following inequality is satisfied: 4.0≤|f1/f2|≤8.0 (e.g. using the values in Tables 1, 5 & 9 |f1/f2|=5.8, 5.8 & 6.1,respectively).
Regarding claim 7 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein a following inequality is satisfied: 3.5≤|f1/fw|≤10.0 (e.g. using the values in Tables 1-2, 5-6 & 9-10 |f1/fw|=5.2, 5.2 & 5.3, respectively).
Regarding claim 8 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein a following inequality is satisfied: 0.2≤|f3/ft|≤0.6 (e.g. using the values in Tables 1-2 |f3/ft|=0.4).
Regarding claim 9 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein a following inequality is satisfied: 0.3≤V≤1.0 where V represents a third-order aberration coefficient of a distortion that occurs in the zoom lens at the wide-angle end (inherent given structure and function).
Regarding claim 10 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein a following inequality is satisfied: -15.0≤dmin≤-4.4 where dmin represents a percentage of distortion at a maximum image height, the distortion occurring in the zoom lens at the wide-angle end (inherent given structure and function).
Regarding claim 11 Noda discloses the zoom lens according to claim 1, as set forth above. Noda further discloses wherein the zoom lens consists of, in order from the object side to the image side, the first, second and third lens units (e.g. G1, G2 & G3), a fourth lens unit having a negative refractive power (abstract “negative fourth lens group” e.g. G4), and a fifth lens unit having a positive refractive power (abstract “positive fifth lens group” e.g. G5).
Regarding claim 14 Noda further discloses an apparatus (title e.g. figure 8 camera 30) comprising: a zoom lens (e.g. lens 20) according to claim 1 (as set forth above); and a sensor configured to receive an optical image formed by the zoom lens (e.g. paragraph [0105] “An imaging element (not shown), such as a CCD that receives images of subjects formed by the exchangeable lens 20”).
Regarding claims 15 and 17-19, the limitations of claims 15 and 17-19 are the same as the limitations of claims 2, 4-5 and 7, respectively, and claims 15 and 17-19 are rejected for the same reasons.
Claims 1-3, 5-10, 14-16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Katayose US Patent Application Publication 2018/0372993 with evidence of certain facts provided by MIL-HDBK-141 “Military Standardization Handbook Optical Design” page 8-15, October 1962.
Regarding claim 1 Katayose discloses a zoom lens (title e.g. examples 4-5, see figures 7 & 9) comprising four or more lens units including, in order from an object side to an image side, a first lens unit having a positive refractive power (abstract “positive first lens unit” e.g. L1), a second lens unit having a negative refractive power (abstract “negative second lens unit” e.g. L2), and a third lens unit having a positive refractive power (abstract “positive third lens unit” e.g. L3), wherein a distance between adjacent lens units varies during zooming from a wide-angle end to a telephoto end (e.g. see figures 7 & 9), wherein the first lens unit moves during zooming (paragraph [0052] “In Examples 4 and 5, the first lens unit L1 is configured to move” see figures 7 & 9), wherein a distance between the first lens unit and the second lens unit at the telephoto end is wider than that at the wide-angle end (see figures 7 & 9), and a distance between the second lens unit and the third lens unit at the telephoto end is narrower than that at the wide-angle end see (see figures 7 & 9), wherein a lens unit disposed closest to the image side (e.g. L5) in the zoom lens includes a single lens having a positive refractive power (paragraph [0089] “In Examples 4 and 5, the fifth lens unit L5 is preferred to include … a positive lens G52” e.g. G52), wherein the first lens unit consists of three or less lenses (see figures 7 & 9), wherein the second lens unit (e.g. L2) consists of, in order from the object side to the image side, a first single lens (e.g. G21) as a spherical lens having a negative refractive power (paragraph [0087] “negative lens G21”), a lens (e.g. G22) having negative refractive power (paragraph [0087] “negative lens G22”), a lens (e.g. G23) having a positive refractive power (paragraph [0087] “positive lens G23”), and a second single lens (e.g. G24) as a spherical lens (e.g. Tables in paragraphs [0101-02] indicate spherical surfaces) having a negative refractive power (paragraph [0087 “negative lens G24”), and wherein following inequalities are satisfied: 40≤νBC≤80 (e.g. using the values in paragraphs [0101-02] νBC=43.7), 4.0≤|f1/f2|≤8.0 (paragraph [0009] “-7.5<f1/f2<-4.8” e.g. Table 1 |f1/f2|=5.0 & 5.2, respectively), and 3.1≤d21/d22≤10.0 (e.g. using the values in paragraphs [0101-02] d21/d22=3.4 & 3.5, respectively).
Katayose does not disclose the first single lens as a spherical lens. However, one skilled in the art could choose which lens surfaces are spherical or aspherical with a reasonable expectation of success, as evidenced by the Military Standardization Handbook Optical Design MIL-HNDK-141 page 8-152. There are a limited number of surfaces to choose from and it has been held "If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007) at 1397. One would be motivated to have the first and second single lenses be spherical lenses to reduce difficulty and cost of manufacture. Therefore, it would have been obvious design/engineering choice to a person of ordinary skill in the art before the effective filing date of the claimed invention for the zoom lens as disclosed by Katayose to have the first and second single lenses as a spherical lenses for the purpose of reducing difficulty and cost of manufacturing and since there are a limited number of lens surfaces to choose from and it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp.
Regarding claim 2 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: 1.0≤-(RA2+RA1)/(RA2-RA1)≤10.0 (e.g. using the values in paragraphs [0101-02] -(RA2+RA1)/(RA2-RA1)=1.1 & 1.1, respectively).
Regarding claim 3 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: -2.0≤(RC1+RB2)/(RC1-RB2)≤1.0 (e.g. using the values in paragraphs [0101-02] (RC1+RB2)/(RC1-RB2)=-2.0 & -2.0, respectively).
Regarding claim 5 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein following inequalities are satisfied: 1.51≤nBC≤1.85 (e.g. using the values in paragraphs [0101-02] nBC=1.84).
Regarding claim 6 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: 4.0≤|f1/f2|≤8.0 (paragraph [0009] “-7.5<f1/f2<-4.8” e.g. Table 1 |f1/f2|=5.0 & 5.2, respectively).
Regarding claim 7 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: 3.5≤|f1/fw|≤10.0 (e.g. using the values in paragraphs [0101-02] |f1/fw|=4.8 & 5.0).
Regarding claim 8 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: 0.2≤|f3/ft|≤0.6 (e.g. using the values in paragraphs [0101-02] |f3/ft|=0.6 & 0.6).
Regarding claim 9 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: 0.3≤V≤1.0 where V represents a third-order aberration coefficient of a distortion that occurs in the zoom lens at the wide-angle end (inherent given structure and function).
Regarding claim 10 Katayose discloses the zoom lens according to claim 1, as set forth above. Katayose further discloses wherein a following inequality is satisfied: -15.0≤dmin≤-4.4 where dmin represents a percentage of distortion at a maximum image height, the distortion occurring in the zoom lens at the wide-angle end (inherent given structure and function).
Regarding claim 14 Katayose further discloses an apparatus (title e.g. figure 11) comprising: a zoom lens (e.g. 21 paragraph [0093] “image pickup optical system 21 including the zoom lens of one of Examples described above”) according to claim 1 (as set forth above); and a sensor (e.g. image pickup element 22) configured to receive an optical image formed by the zoom lens (paragraph [0093] “22 (photoelectric conversion element), for example, a CCD, which is configured to receive light of an object image (image) formed by the image pickup optical system 21”).
Regarding claims 15-16 and 18-19, the limitations of claims 15-16 and 18-19 are the same as the limitations of claims 2-3, 5 and 7, respectively, and claims 15-16 and 18-19 are rejected for the same reasons.
Double Patenting
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.
Claims 1-11 and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 13-18 of U.S. Patent No. 11,960,066. Although the claims at issue are not identical, they are not patentably distinct from each other because, while the claims of ‘066 are narrower any invention reading on the invention of ‘066 would necessarily read on the invention claimed by the instant application. For example, claims 1-10 and 13-18 of ‘066 and instant application claims 1-11 and 14-19 all read on the devices in Examples 1 and 2 of both the instant application and ‘066.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kato et al. US Patent Application Publication 2014/0354857; in regards to a similar zoom lens and apparatus using said zoom lens, see embodiment 7 see figure 25 zoom lens 7.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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/George G. King/Primary Examiner, Art Unit 2872 May 5, 2026
1 Particularly, making a spherical surface aspherical and vice-versa changes the lens’s peripheral region and does not substantially change the lens’s focal length, center thickness and/or gap with adjacent lenses and can be placed anywhere in an optical system. As evidenced by MIL-HDBK-141 “Military Standardization Handbook Optical Design” October 1962, page 8-15 section 8.7.4.2 points 1-3. Particularly stating: “One of the main reasons that aspheric surfaces are so valuable, is that they do allow the introduction of aberration at nearly any place in the optical system, without upsetting the distribution of focal lengths of the different elements needed to correct for color and Petzval field curvature.”
2 Ibid.
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