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 .
Drawings
The drawings were received on 7/02/2026. These drawings are not acceptable.
Corrected drawing Fig. 1 contains new matter that was not previously evidenced as possessed by Applicant. In the original disclosure, Applicant defines “L” to be “a distance from an object-side surface of the reflective member to the imaging plane”. While it is understood that the depiction below associates the reference character “L” with a distance between a surface of “P” and the imaging plane “112”, there was insufficient specificity in the disclosure to correlate the surface of “P” in the corrected drawing with an object-side surface of a reflective member. As re-stated in the 35 U.S.C. 112 rejections below, a person having ordinary skill in the art would not have understood the disclosure to have evidenced possession of a particular embodiment of prism and would not have understood the figures to depict a simple mirror. Accordingly, a person having ordinary skill in the art would not understand there to be correspondence between any particular line in the depiction of “P” and an “object-side surface of the reflective member” as disclosed. The degree to which the disclosed optical system extends into object-space away from the most object-side surface of the first lens 101 cannot be determined in view of the originally-filed disclosure and there is no known depiction of the optical system and the distance “L” that would avoid a new matter situation.
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The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a first lens group, a second lens group, a third lens group, and a fourth lens group sequentially disposed … a reflective member disposed on an object side of the first lens group … and L is a distance on the optical axis from an object-side surface of the reflective member to the imaging plane” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Rejections - 35 USC § 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.
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.
Claims 1-24 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.
Claim 1 recites “0.45 ≤ fG1/L ≤ 0.8 is satisfied, where fG1 is a focal length of the first lens group, and L is a distance on the optical axis from an object-side surface of the reflective member to the imaging plane”, Claim 17 recites “0.4 ≤ LG3/L ≤ 0.7 is satisfied, where LG3 is a distance on the optical axis from an object-side surface of the reflective member to an object-side surface of the third lens group”, and Claim 21 recites “the first lens group has a positive refractive power, and 0.08 ≤ dG2/L ≤ 0.7 is satisfied, where dG2 is a distance along the optical axis that the second lens group moves between the wide-angle mode and the telephoto mode”. For Claims 17 and 21, the limitations on the claimed invention do not include an explicit definition of “L” within the claim. An explicit definition in Claim 1 does not define the term in all claims, though for the purposes of examination it will be understood that “L” carries the same meaning in Claims 17 and 21 albeit an indefinite meaning. The metes and bounds of the phrase “L is a distance on the optical axis from an object-side surface of the reflective member to the imaging plane” would not have been clear to a person having ordinary skill in the art in light of the Specifications. The disclosure does not specify a means for determining the object-side of the reflective member from which to measure the distance “L”. The specifications provides two exemplary embodiments in, for example, [0083]: “the reflective member may be a mirror or a prism”. Absent a specific embodiment provided in the disclosure, a person having ordinary skill in the art would not be able to understand that which is captured in the scope of the claims defined by a relationship with the claimed length. In the art, there is no one form factor of a reflective member nor of a prism nor of a mirror and the corresponding object-side surface would not be understood given the breadth of the invention. In US Pat. 7,123,425, there are embodiments of the reflective member that include a lens integrated with a reflective surface (Fig. 1A) and a distinct lens preceding a reflective surface (Fig. 3A). In light of the claimed invention and for an infringement test, a person having ordinary skill in the art would not understand a corresponding measure of the claimed “L” in light of multiple possible “object-side surface of the reflective member”. For the Fig. 1A embodiment, it would be unclear if the object-side surface is the entrance surface of L11 or the reflective surface of L11. For the Fig. 3A embodiment, it would be unclear if the object-side surface is the entrance surface to L31, the entrance surface to L32, or the reflective surface of L32. In US Pat. 7,253,834, lenses surround a mirror in the mirror group (reflective member) and it would be unclear which of the surfaces would correspond an object-side surface of the reflective member: an entrance surface of LN1 or the surface of VM. In Fig. 4 of US Pat. 7,253,834, there is a mirror preceding the lens group G1 and while an artisan would understand how to interpret a surface of this mirror VM, there would be no corresponding description as object-side because there is no “side” to a single plane. In CN 112612125, the leading prism is a standard optical wedge with three flat surfaces labeled Sa, Sb, Sc. The disclosure clearly presents data on the position of these surfaces in Table 1 ([0128]). Applicant provides no clear embodiment of the reflective member from which to clearly define L and the corresponding numerical ranges captured in respective claims.
Claim 17 defines LG3 analogously to the definition of L and is indefinite for analogous reasons.
Dependent claims 2-16, 18-20, and 22-24 do not remedy these deficiencies.
Examiner Amendment
The following a suggestion for language to clarify the claimed invention in view of the originally-filed disclosure:
Claim 1 An optical imaging system comprising:
a first lens group, a second lens group, a third lens group, and a fourth lens group sequentially disposed in ascending numerical order along an optical axis of the optical imaging system away from an object side of the optical imaging system toward an imaging plane of the optical imaging system, at least one lens group among the first to fourth lens groups being configured to be movable along the optical axis; and
a [[reflective member]] prism disposed on an object side of a most object-side surface of the first lens group and comprising a planar object-side surface, a reflective surface configured to change an optical path of the optical imaging system, and a planar image-side surface spaced apart from the planar object-side surface,
wherein the first lens group has a positive refractive power,
0.45 ≤ fG1/L ≤ 0.8 is satisfied, where fG1 is a focal length of the first lens group, and L is a distance along the optical axis from [[an incident]] the object-side surface of the [[reflective member]] prism to the imaging plane,
the second lens group is configured to move along the optical axis away from the object side of the first lens group toward the imaging plane to narrow a field of view of the optical imaging system, and the first lens group and the third lens group are fixedly disposed, and the fourth lens group is configured to move along the optical axis to correct a focal position of the optical imaging system as the second lens group is moved along the optical axis.
Claim Interpretation
Previously presented.
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 17-18 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PG Pub. 2004/0233302A1 to Kojima (hereinafter Kojima).
Regarding claim 17, Kojima discloses an optical imaging system (Fig. 2) comprising: a first lens group (lGr1, Fig. 2), a second lens group (Gr2, Fig. 2), a third lens group (Gr3, Fig. 2), and a fourth lens group (Gr4, Fig. 2) sequentially disposed in ascending numerical order along an optical axis of the optical imaging system away from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Abstract), at least one lens group among the first to fourth lens groups being configured to be movable along the optical axis (Fig. 2); and a reflective member (prism PR, Fig. 2 & 17) disposed on an object side of the first lens group and comprising a reflective surface (RL of PR, Figs. 2 & 17) configured to change an optical path of the optical imaging system, wherein the first lens group has a positive refractive power (lens L2, Table 2; [0107]), wherein the first lens group has a positive refractive power, 0.4 ≤ LG3/L ≤ 0.7 is satisfied (LG3/L = 41.38mm/57.16mm = 0.7, Table 2; [0107]), where LG3 is a distance on the optical axis from an object-side surface of the reflective member to an object-side surface of the third lens group, the second lens group (Gr2, Fig. 1, Table 1, [0128]) is configured to move along the optical axis away from the object side of the first lens group toward the imaging plane to narrow a field of view of the optical imaging system (i.e. to telephoto, Fig. 1, Table 1, [0128]), and the first lens group and the third lens group are fixedly disposed (m1 and m3 of Gr1 and Gr3, Fig. 1, Table 1, [0128]), and the fourth lens group is configured to move along the optical axis to correct a focal position of the optical imaging system as the second lens group is moved along the optical axis (Gr4, Fig. 1, Table 1, [0128]).
Regarding claims 18 and 22, Kojima discloses the first lens group comprises two lenses (lenses L1 and l2, Fig. 2), the second lens group has a negative refractive power (Gr2, Fig. 2, Table 2; [0107]) and comprises two or three lenses (lenses of Gr2, Fig. 2), the third lens group has a positive refractive power (Gr3, Fig. 2, Table 2; [0107]) and comprises a stop (stop ST, Fig. 2) and two lenses, and the fourth lens group has a positive refractive power and comprises one or two lenses (Fig. 2; [0107]).
Regarding claim 21, Kojima discloses an optical imaging system (Fig. 2) comprising: a first lens group (lGr1, Fig. 2), a second lens group (Gr2, Fig. 2), a third lens group (Gr3, Fig. 2), and a fourth lens group (Gr4, Fig. 2) sequentially disposed in ascending numerical order along an optical axis of the optical imaging system away from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Abstract), at least one lens group among the first to fourth lens groups being configured to be movable along the optical axis (Fig. 2); and a reflective member (prism PR, Fig. 2 & 17) disposed on an object side of the first lens group and comprising a reflective surface (RL of PR, Figs. 2 & 17) configured to change an optical path of the optical imaging system, wherein the first lens group has a positive refractive power (lens L2, Table 2; [0107]), wherein the first lens group has a positive refractive power, and 0.08 ≤ dG2/L ≤ 0.7 is satisfied (dG2/L = 8.215mm/57.16mm = 0.14), where dG2 is a distance along the optical axis that the second lens group moves between the wide-angle mode and the telephoto mode.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub. 2004/0233302A1 to Kojima (hereinafter Kojima).
Regarding claim 1, Kojima discloses an optical imaging system (Fig. 2) comprising: a first lens group (lGr1, Fig. 2), a second lens group (Gr2, Fig. 2), a third lens group (Gr3, Fig. 2), and a fourth lens group (Gr4, Fig. 2) sequentially disposed in ascending numerical order along an optical axis of the optical imaging system away from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Abstract), at least one lens group among the first to fourth lens groups being configured to be movable along the optical axis (Fig. 2); and a reflective member (prism PR, Fig. 2 & 17) disposed on an object side of the first lens group and comprising a reflective surface (RL of PR, Figs. 2 & 17) configured to change an optical path of the optical imaging system, wherein the first lens group has a positive refractive power (lens L2, Table 2; [0107]), wherein the first lens group has a positive refractive power, fG1/L 0.38 is satisfied (fG1/L = 21.724mm/57.16mm = 0.38, Table 2; [0107]), where LG3 is a distance on the optical axis from an object-side surface of the reflective member to an object-side surface of the third lens group, the second lens group (Gr2, Fig. 1, Table 1, [0128]) is configured to move along the optical axis away from the object side of the first lens group toward the imaging plane to narrow a field of view of the optical imaging system (i.e. to telephoto, Fig. 1, Table 1, [0128]), and the first lens group and the third lens group are fixedly disposed (m1 and m3 of Gr1 and Gr3, Fig. 1, Table 1, [0128]), and the fourth lens group is configured to move along the optical axis to correct a focal position of the optical imaging system as the second lens group is moved along the optical axis (Gr4, Fig. 1, Table 1, [0128]).
Kojima discloses the claimed invention as cited above though does not explicitly disclose: 0.45 ≤ fG1/L ≤ 0.8 is satisfied.
The claimed range is within that which an artisan would consider obvious by routine experimentation of optimum or workable ranges. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) There would be no unexpected result from repositioning the disclosed prism such that a distance between the surface “r3” and the imaging plane would satisfy the claimed expression. Providing folding via the prism in the direction of an imaging plane would permit a change of form factor of the overall optical system and before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to position a prism to satisfy the claimed condition.
Response to Arguments
Applicant's arguments filed 7/02/2026 have been fully considered but they are not persuasive.
Drawing Amendment
Drawing objections are maintained above and further objections are raised on account of new subject matter being introduced into the corrected drawings. The basis of the objection is stated above.
Allowable Subject Matter
Applicant states that the previously-presented section is not understood. Applicant states that the Office did not reject claims 3-4, 7-16, and 23-24 over prior art and “the means that the Office has determined that claims 3-4, 7-16, and 23-24 are patentable over prior art relied on in the Office Action of April 2, 2026, assuming that they are rewritten or amended to overcome the rejection under 35 USC 112(b)”. While this is conventionally true, such an indication would only be made in the office were it to be understood that the record provided a path forward via amendment to overcome the 35 USC 112(b) and comply with other statutory and rule-based requirements. In this instance, Examiner does not understand how claims could be amended to remedy the deficiency under 35 USC 112(b) as well as satisfy requirements for drawings under 37 CFR 1.83(a) all while maintaining that which has been considered in view of prior art. The only statement that could be made at the time of the previous Office Action, and here again, is that the claims may be amended to overcome the 35 USC 112(b) rejection and drawing objections. Examiner believes that limitations on the distance “L” could be canceled from the claims to overcome the 35 USC 112(b) rejection and drawing objection, though such cancellation substantively changes the scope of the claim in view of prior art teachings and considerations under 35 USC 102 and 103. Otherwise to overcome the pending 35 USC 112 rejections and drawing objections, Examiner believes the claimed reflective member could be claimed narrowly to be that which Table 1, for example, evidences – a prism including an object-side planar surface spaced apart from an image-side planar surface.
On Page 12 of the Remarks, Applicant argues “any such new ground of rejection will have been necessitated by the Office’s failure to consider the patentability of claim 9 in the Office Action of April 2, 2026”. Examiner respectfully disagrees. Patentability of Claim 9 was previously considered and there was a determination that prior art references neither taught nor rendered obvious the scope of invention captured in previously presented Claim 9. As stated by Applicant, the amended Claim 1 is not commensurate in scope with the previously presented Claim 9 and thus a new ground of rejection on the broader scope of invention is a new ground necessitated by amendment.
Drawing Objections
On page 13 of the Remarks, Applicant states that an artisan would understand “the object-side surface of the reflective member P is the surface of the reflective member P that is closest to the object, which is the leftmost surface in Figs. 1-30”. In the previous Office Action (repeated above), that which an artisan would understand of both depictions of reflective members and measurements therefrom are evidenced in cited prior art publications. Applicant’s conclusory statement that an artisan would understand the rectangular depiction of reflective member P as correlative to definite, measurable distances is unpersuasive. Applicant further states that “virtually every patent application for a lens system that has ever been filed uses the [disclosed] terms” to describe the surfaces of optical elements. Examiner respectfully disagrees in that the issue is not merely whether an artisan (or “virtually every patent application”) clearly correlates “object-side surface” with a surface that is closest to an object, but rather an artisan clearly corelates such nomenclature with an unspecified reflective member with no particular form factor or geometry. In the 35 U.S.C. 112(b) rejection, multiple references of prior art are relied upon to evidence the variability in geometry and that which artisans have considered object-side surfaces for reflective members. Applicant’s remarks neither address these references nor the absence of claim limitations regarding reflective member geometry.
Claim Rejection Under 35 USC 112(b)
Applicant states “the Office has apparently overlooked the fact that the present application discloses Embodiments 1-10 including Tables 1, 4, 7, 10, 13, 16, 19, 22, 25, and 28 that include a prism having surfaces S1, S2, and S3 as the reflective member P”. It is noted that the features upon which applicant relies (i.e., prisms with surfaces S1-S3 described in listed tables) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim is not limited to the disclosed prisms, but is generic to the full breadth of interpretation of “a reflective member” in light of the Specifications. The disclosure does provide exemplary embodiments, but also states that the reflective element may be embodied merely as “a prism or mirror” and thus is not limited to the embodiments relied upon by Applicant in this argument. To overcome the pending 35 USC 112 rejections and drawing objections, Examiner believes the claimed reflective member could be claimed narrowly to be that which Table 1, for example, evidences – a prism including an object-side planar surface spaced apart from an image-side planar surface.
Claim Interpretation
On page 21 of the Remarks, Applicant argues that there “[t]here is absolutely no basis whatsoever in the present application for the Office’s statement” regarding the broadest reasonable interpretation of the claimed distance L. Examiner respectfully disagrees as Applicant’s arguments rightly point to embodiments in the disclosure in which the distance L is not consistent with this interpretation of the claim but incorrectly neglects the breadth of the claim in light of the Specifications as a whole. The scope of the claim is not limited to the prism embodiments presented in Tables 1, 4, 7, etc. but rather also to a reflective member embodied according to any form factor within a reasonable interpretation by an artisan. The prior art of record demonstrates the breadth of understanding in the art for reflective members. Again, the remedy to this is to limit the claim to that which Applicant argues: a prism including an object-side planar surface spaced apart from an image-side planar surface.
Claim Rejections Under 35 USC 102
Applicant’s arguments with respect to claims 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.
While the Claims 1 and 17 contain limitations that were not previously rejected in view of prior art, these claims broaden the scope of invention relative to previously presented claims (e.g. original Claims 9, 19, and 20).
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 CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872
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