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 Arguments
Applicant’s arguments, see remarks, filed September 14, 2026, with respect to claim rejections under 112, and prior art rejections based on Endo and Katayose have been fully considered and in combination with the amendments are persuasive. Regarding Endo, the examiner agrees that Endo example 1 at least fails to meet the new limitation requiring the third lens unit to have a cemented lens including a biconvex and a biconcave lens. Regarding Katayose, the examiner agrees that Katayose examples 4-5 at least fail to meet the new limitation requiring the focusing unit, FR, to be negative. The claim rejections under 112, and prior art rejections based on Endo and Katayose have been withdrawn.
Applicant's arguments filed September 14, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument centered on Noda failing to disclose a lens unit FR located second closest to the image side moves in an optical axis direction during focusing (configuration A), the examiner is unpersuaded. Noda discloses a fourth lens group G4 as the second closest to the image side (see figures 1-3). Paragraph [0084] discloses the fourth lens group G4 is “configured to move toward the image side when changing focus from an object at a far distance to an object at a close distance.”
Regarding applicant’s argument centered on Noda failing to disclose the lens unit FR having a negative refractive power and consists of two or fewer lenses (configuration B), the examiner is unpersuaded. As noted above, the examiner is interpreting Noda’s fourth lens group G4 as being commensurate with the claimed focusing lens unit FR. The abstract and paragraph [0012] of Noda both disclose the zoom lens having a negative fourth lens group. Looking at figures 1-3 the fourth lens group G4 consists of a single lens and a doublet lens, i.e. two lenses. For clarity, the examiner is interpreting the doublet/cemented lens as a single lens. This is the same configuration as applicant’s example 1 seen in instant application figure 1.
Regarding applicant’s argument centered on Noda failing to disclose wherein the third lens unit includes a cemented lens in which a biconvex lens and a biconcave lens are cemented (configuration C), the examiner is unpersuaded. The examiner agrees that while Noda examples 2-3 the commensurate third lens group (G3) includes cemented lenses they fail to comprise a biconcave and a biconvex in the same doublet. However, example 1 (see figure 1 and Table 1) cemented lens L33 consisting of biconvex L33A and biconcave L33B.
Regarding applicant’s argument centered on the new limitations overcoming the obviousness-type double patenting rejection over the parent case, now US Patent 11,960,066, the examiner is unpersuaded. Particularly, none of the amendments added to the independent claims of instant application are mutually exclusive to the claim 1-10 and 13-18 of ‘066. And more specifically, at least examples 1-2 of the instant application (and parent ‘066) read on both claim sets. This opens the application to unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. The examiner respectfully notes a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome this rejection.
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 1-2, 5, 7-11, 14-15 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. US Patent Application Publication 2016/0154221, of record, with evidence of certain facts provided by MIL-HDBK-141 “Military Standardization Handbook Optical Design” page 8-15, October 1962, of record.
Regarding claim 1 Noda 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 “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 each 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 A (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. Table 1 indicates spherical surfaces) having a negative refractive power (paragraph [0059] “negative lens L24”), wherein, during focusing, a lens unit FR located second closest to the image side (e.g. G4) moves in an optical axis direction (paragraph [0084]”G4 … configured to move toward the image side when changing focus from an object at a far distance to an object at a close distance”), wherein the lens unit FR has a negative refractive power (abstract “negative fourth lens group” e.g. G4) and consists of two or fewer lenses (e.g. figure 1 shows G4 consists of a single lens & a doublet lens), wherein the third lens unit (e.g. G3) includes a cemented lens (e.g. cemented lens L33) in which a biconvex lens (e.g. L33A) and a biconcave lens (e.g. L33B) are cemented (see figure 1), and wherein following inequalities are satisfied: 40≤νBC≤80 (e.g. using the values in Table 1 νBC=55.105), 4.0≤|f1/f2|≤8.0 (e.g. using the values in Table 1 |f1/f2|=5.8), and 3.1≤d21/d22≤10.0 (e.g. using the values in Table 1 d21/d22=6.2).
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 Table 1 -(RA2+RA1)/(RA2-RA1)=1.2).
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 Table 1 nBC=1.71).
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 |f1/fw|=5.2).
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 Table 1 |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 18-19, the limitations of claims 15 and 18-19 are the same as the limitations of claims 2, 5 and 7, respectively, and claims 15 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 1-2, 5, 7-11, 14-15 and 18-19 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 1-2, 5, 7-11, 14-15 and 18-19 all read on the devices in Examples 1 and 2 of both the instant application and ‘066.
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 George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 September 23, 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.”
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