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 Pre-amendments
The present office action is made in response to the pre-amendments filed by applicant on 03/27/2024 and 04/01/2024.
In the amendment of 03/27/2024, applicant has made changes to the claims. There is not any change being made to the abstract, the drawings and the specification.
Regarding the claims, applicant has canceled claims 1-26 and added a new set of claims, i.e., claims 27-40. As a result of the changes to the claims, the pending claims are claims 27-40.
In the amendment of 04/01/2024, applicant has made changes to the specification. There is not any change being made to the abstract, the drawings, and the claims.
Regarding the specification, applicant has made changes to paragraphs [0009], [0053], [0056], [0059], [0064], [0146], [0162], [0178], [0194], [0210], [0226], [0242], [0258], [0274], [0290] and [0295].
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 01/22/2026, applicant has made an election of Invention I in the reply filed on 02/06/2026. 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)).
As a result of applicant’s election, claims 27-31 and 38-40 are examined in the present office action, and claims 32-37 have been withdrawn from further consideration as being directed to none-elected inventions. Applicant should note that the non-elected claims 32-37 will be rejoined if the linking claim 27 is later found as an allowable claim.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/431,707, filed on 08/17/2021.
Drawings
The drawings contain thirty two sheets of figures 1, 2(a)-2(b), 3, 4(a)-4(b), 5, 6(a)-6(b), 7, 8(a)-8(b), 9, 10(a)-10(b), 11, 12(a)-12(b), 13, 14(a)-14(b), 15, 16(a)-16(b), 17, 18(a)-18(b), 19, 20(a)-20(b) and 21-22 were received on 03/27/2024. These drawings are objected by the examiner for the following reason(s).
The drawings are objected to because of the following reasons.
First, each of figures 2(a), 4(a), 6(a), 8(a), 10(a), 12(a), 14(a), 16(a), 18(a) and 20(a) does not have the lower value for each of the range of spherical aberration, the range of astigmatism and the range of distortion. In particular, while each figure shows/provides an upper value, such as 0.500 or 5.00% for the upper value of each range; however, each does not show/provide a lower value of each range; and
Second, each of figures 2(a), 4(a), 6(a), 8(a), 10(a), 12(a), 14(a), 16(a), 18(a) and 20(a) does not have the upper value for the range of the lateral chromatic aberration. In particular, while each figure shows/provides a lower value, such as -0.050 for the lower value of the range; however, each does not show/provide an upper value of the range.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it contains two paragraphs. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The lengthy specification which was amended by the pre-amendment of 04/01/2024 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.
The disclosure is objected to because of the following informalities:
a) Paragraph [0007]: what does applicant mean by “[Figure 1] Figure 1”, “[Figure 2] Figure 2”, …, “[Figure 22] Figure 22”? Should “[Figure 1] Figure 1” be changed to --Figure 1-- ? The similar suggestion is also raised to other figures?
b) Paragraph [0025]: on line 5 of the paragraph, “Figure 1” should be changed to --Figure 3--. Applicant is respectfully invited to review paragraph [0007] on lines 9-11 which states that the second example of the magnification-variable optical system is shown in Figure 3. In the same viewpoint, in paragraph [0038] (line 5 of the paragraph), “Figure 1” should be changed to --Figure 5--; in paragraph [0051] (line 5 of the paragraph), “Figure 1” should be changed to --Figure 7--; in paragraph [0059] (line 5 of the paragraph), “Figure 1” should be changed to --Figure 9--; in paragraph [0064] (line 5 of the paragraph), “Figure 1” should be changed to --Figure 11--;
c) Paragraph [0051]: the description of the magnification-variable optical system of the fourth embodiment as provided on lines 1-5 of the paragraph is unclear with respect to the lens structure as shown in figure 7and described in paragraphs [0186]-[0201]. Applicant should note that figure 7 shows a magnification-variable optical system having a first negative lens group (G1) and a rear positive lens group (Gr) wherein the rear lens group (Gr) comprises a second positive lens group (G2), a third positive lens group (G3), a fourth negative lens group (G4) and a fifth positive lens group (G5), see also paragraphs [0186]-[0201] which disclose the lens structure with optical features of the lenses constituted the lens groups. The disclosure does not disclose that the magnification-variable optical system of the fourth embodiment having only a first negative lens group, a second positive lens group and a third positive lens group as mentioned in the paragraph [0051]. The similar question is also raised to the magnification-variable optical system of the fifth embodiment and the magnification-variable optical system of the sixth embodiment provided in paragraphs [0059] and [0064], respectively. Correction or explanation is required.
There are still some grammatical and idiomatic errors in the specification. Applicant should carefully proofread the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112
14. 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.
15. Claims 27-31 and 38-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
a) Claim 27 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 features thereof “80.00 < v1n” (line 14) and “v1n: Abbe number … a d line” (lines 18-19) make the claim indefinite because the claim recites an open range for the Abbe number of v1n.
Applicant should note that a value of 125 or 354 or 1,200 or … is a value which is inside the range claimed and the specification does not provide/support for a magnification-variable optical system having lenses with such large values for their Abbe numbers. Applicant is respectfully invited to review the specification in which it discloses only two values of v1n, i.e., 95.23 for each of the first, second, third, fourth, fifth and tenth embodiments and 82.57 for each of sixth, seventh, eighth and ninth embodiments. As a result, those claimed features make the claim indefinite because it is unclear about the mete and bound of the range governing the Abbe number of v1n as claimed. Applicant should note that claim must be analyzed to determine its mete and bound so that it is clear from claimed language what subject matter the claim encompass. The definiteness of the claim is important to allow others who wish to enter the market place to ascertain the boundaries of protection that are provided by the claims.
a2) the features thereof “a first lens group … and a positive lens” (lines 3-6); “N1n ≤ 3” (line 15) and “N1n: number of negative lenses…first lens group” (lines 20-21) make the claim indefinite because it is unclear about the number of the negative lens(es) of the first lens group.
Applicant should note that the range of “N1n ≤ 3” (lines 15 and 20-21) is understood as the number of negative lens(es) of the first lens group is 1 or 2 or 3; however, the number of negative lenses of the first lens group is 3 is already recited in the feature thereof a first lens group … and a positive lens” (lines 3-6). Thus, with all mentioned features recited in the claim, how many negative lens(es) does the first lens group have?
For the purpose of examination, the first lens group comprises three negative lenses and a positive lens arranged in the order as recited on lines 3-6 of the claim.
a3) the claim recites two “an object side” on lines 4 and 25. What is relationship between two?
For the purpose of examination, the so-called “an object side” recited on line 25 is understood as the object side recited on line 4 of the claim.
b) Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because it is unclear about the relationship between the so-called “a lens closest to the object side in the first lens group” (claim 30 on lines 7-8) and “a negative lens” (lines 4-5) recited in the feature thereof “a first lens group … and a positive lens” recited in its base claim 27 on lines 3-5.
Applicant should note that the base claim 27 on lines 3-5 recites that the first lens group comprises a negative lens, a negative lens, a negative lens and a positive lens arranged sequentially from an object side. With that structure then the examiner is of opinion that the terms “a lens” appeared in claim 30 on line 7 should be changed to --the negative lens--.
c) Claim 31 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element b) above.
d) Claim 40 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons as set forth in element a) above.
e) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Double Patenting
16. 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.
17. Claims 27-31 and 38-39, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-10, 16 and 22 of U.S. Patent No. 12,000,998, hereafter, Pat. ‘998. Although the claims at issue are not identical, they are not patentably distinct from each other because all features recited in present claims 27-31 and 38-39 are read from features recited in claims 1-2, 6-10, 16 and 22 of Pat. ‘998.
In particular, the features recited in present claim 27 are read from feature recited in claims 1-2 and 6 of Pat. ‘998; the features recited in present claim 28 are read from features recited in claim 7 of Pat. ‘998; the features recited in present claim 29 are read from features recited in claim 8 of Pat. ‘998; the features recited in present claim 30 are read from features recited in claim 9 of Pat. ‘998; the features recited in present claim 31 are read from features recited in claim 10 of Pat. ‘998; the features recited in present claim 38 are read from features recited in claim 16 of Pat. ‘998; and the features recited in present claim 39 are read from features recited in claim 22 of Pat. ‘998.
Claim Rejections - 35 USC § 102
18. 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.
19. 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.
20. Claims 27-29, 31 and 38-40, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shomura (US Publication No. 2019/0302409, submitted by applicant).
Shomura discloses a zoom lens for use in image pickup apparatus, see paragraph [0002].
a) Regarding present claims 27, 39 and 40, the zoom lens of the Example 1 as described in paragraphs [0289]-[0296] and [0398] and shown in fig. 1 comprises the following features:
a1) a first negative lens group (G1) and a rear lens group disposed after the first negative lens group wherein the rear lens group comprises a plurality of lens groups (G2-G4) wherein each lens groups is movable along an optical axis for varying the distance between two adjacent lens groups, see paragraphs [0289]-[0296] and fig. 1;
a2) the first negative lens group (G1) comprises sequentially from an object side a first negative lens (L1), a second negative lens (L2), a third negative lens (L3) and a positive lens (L4). Thus, the first negative lens group (G1) comprises only three negative lenses and a positive lens;
a3) the Abbe number of the third negative lens (L3) of the first negative lens group (G1) is 95.10 which is inside the range as claimed in each of claims 27 and 40;
a4) the total length, TLw, of the zoom lens in a wide-angle stage is 129 mm, and the distance, STLw, from the object-side lens surface (r1) of the first negative lens (L1) of the first lens group (G1) to the aperture stop (r10) of the zoom lens is 84.17 mm thus the value of the ratio of STLw/TLw is 0.65 which is inside the range of (0.40; 0.70) as claimed in each of claims 27 and 40, see paragraph [0398].
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).
a5) Regarding claim 40, the method steps/limitations are implicitly met by the structure limitations.
b) Regarding present claim 28, from paragraph [0398], the focal length, f1, of the first negative lens group (G1) is -16.27 mm and the focal length, fw, of the zoom lens at its wide-angle state is 8.16 mm then the value of the ratio of (-f1)/fw is 1.99 which is inside the range of (1.00; 2.00).
c) Regarding present claim 29, from paragraph [0398], the focal length, f1, of the first negative lens group (G1) is -16.27 mm and the focal length, ft, of the zoom lens at its telephoto end state is 24.50 mm then the value of the ratio of (-f1)/ft is 0.67 which is inside the range of (0.65; 1.20).
d) Regarding present claim 31, from paragraph [0398], the focal length, fL2, of the second negative lens (L2) of the negative lens group (G1) is around -33.50 mm and the focal length, f1, of the first negative lens group (G1) of the zoom lens is -16.27 mm then the value of the ratio of fL2/f1 is 1.98 which is inside the range of (1.00; 4.00) as claimed.
e) Regarding present claim 38, the lens groups (G2-G4) constituted the rear lens group comprises at least one aspheric lens surfaces, see paragraph [0398], lens surfaces numbered as #8, 9, 16, 20 and 21.
21. Claims 27, 29-30 and 38-40, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noda et al (US Publication No. 2016/0124181).
Noda et al discloses a zoom lens for use in image pickup apparatus, see paragraph [0115].
a) Regarding present claims 27, 39 and 40, the zoom lens of the second embodiment as described in paragraphs [0083]-[0089] and shown in fig. 3 comprises the following features:
a1) a first negative lens group (G21) and a rear lens group disposed after the first negative lens group wherein the rear lens group comprises a plurality of lens groups (G22-G23) wherein each of the first and second lens groups (G21, G22) is movable along an optical axis for varying the distance between two adjacent lens groups, see paragraphs [0087]-[0089];
a2) the first negative lens group (G21) comprises sequentially from an object side a first negative lens (L211), a second negative lens (L212), a third negative lens (L213) and a positive lens (L214). Thus, the first negative lens group (G21) comprises only three negative lenses and a positive lens;
a3) the Abbe number of the second negative lens (L212) of the first negative lens group (G21) is 95.10 which is inside the range as claimed in each of claims 27 and 40;
a4) the total length, TLw, of the zoom lens in a wide-angle stage is 86.995 mm, and the distance, STLw, from the object-side lens surface (r1) of the first negative lens (L211) of the first lens group (G21) to the aperture stop (STP) of the zoom lens is 53.074 mm thus the value of the ratio of STLw/TLw is 0.61 which is inside the range of (0.40; 0.70) as claimed in each of claims 27 and 40, see paragraph [0088].
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).
a5) Regarding claim 40, the method steps/limitations are implicitly met by the structure limitations.
b) Regarding present claim 29, from paragraph [0088], the focal length, f1, of the first negative lens group (G21) is -8.38 mm and the focal length, ft, of the zoom lens at its telephoto end state is 11.60 mm then the value of the ratio of (-f1)/ft is 0.72 which is inside the range of (0.65; 1.20).
d) Regarding present claim 30, from paragraph [0088], the focal length, fL1, of the first negative lens (L211) of the negative lens group (G21) is around -13.457 mm and the focal length, f1, of the first negative lens group (G21) of the zoom lens is -8.38 mm then the value of the ratio of fL1/f1 is 1.60 which is inside the range of (1.00; 4.00) as claimed.
e) Regarding present claim 38, the lens groups (G22-G23) constituted the rear lens group comprises at least one aspheric lens surfaces, see paragraph [0088], lens surfaces numbered as #10, 11, 20 and 21.
Claim Rejections - 35 USC § 103
22. 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.
23. Claim 30, as best as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Shomura.
Regarding the range governing the ratio of the focal length, fL1, of the first negative lens (l1) of the first negative lens group (G1) and the focal length, f1, of the first negative lens group (G1), it is noted that the value of the ratio of fL1/f1 of the Example 1 provided by Shomura is 2.06 which is closed to the upper value of the claimed range (1.00; 2.00).
However, the value of 2.06 for the ratio of FL1/f1 of the Example 1 provided by Shomura is so close to the upper value of 2.00 of the claimed range that there is not any unexpected result or difference in optical performance occurred between a zoom lens having a value of 2.06 for the ratio of fL1/f1 and a zoom lens having a value of 1.99 which is inside the range of (1.00; 2.00) for such ratio. In other words, it is expect that the zoom lens of the Example 1 as provided by Shomura is working fine with the range of (1.00; 2.00) for the ratio of fL1/f1. See In re Wertheim, supra; Titanium Metals Corporation of America V. Banner, supra.
Thus, the zoom lens with feature related to the ratio of fL1/f1 as recited in present claim 30 is read from the zoom lens of the Example 1 provided by Shomura or it would have obvious to one skilled in the art before the effective filing date of the invention to utilize the zoom lens of the Example 1 provided by Shomura and adjust the optical characteristics of the lens element(s) constituted the lens groups of the zoom lens so that the value of the ratio of fL1/f1 is inside the ranged claimed or any similar range(s) to meet a particular application. Applicant should further note that it has been held in the Courts that a discovery an optimum value or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233; In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
24. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
25. 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.
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, 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