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 .
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.
Election/Restrictions
Applicant's election with traverse of Species A in the reply filed on April 26, 2026 is acknowledged. The traversal is on the ground(s) that the examiner has not set forth a proper restriction requirement. This is not found persuasive because in the requirement for restriction mailed on February 26, 2026, the examiner noted that the species were independent or distinct because the species have mutually exclusive characteristics and are not obvious variants based on the current record. Further, burden was established by noting that at least the species would require a separate field of search due to the differences in lens used in the device.
The requirement is still deemed proper and is therefore made FINAL.
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 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bito et al. (US 2007/0183058 A1) in view of Manssen et al. (US 2023/0185062 A1).
In regard to claim 1, Bito et al. discloses an optical imaging system (denoted “zoom lens system”, see e.g. paragraph [0134]), comprising (see e.g. Figure 11a):
a first lens group L1-L5 (see e.g. Figure 11 a and paragraphs [0134]- [0135]) comprising a first lens L1 (see e.g. Figure 11a and paragraph [0134]), a reflective member L3 (see e.g. paragraph [0135]), and a second lens L5 arranged in order from an object side to an imaging side (i.e. Left to Right in Figure 11a); and
a second lens group L6-L10 (see e.g. Figure 11a and paragraphs [0136]-[0137]), disposed behind the second lens L5 (see e.g. Figure 11a), and comprising a plurality of lenses (i.e. lenses L6-L10, see e.g. Figure 11a),
wherein the first lens L1 has positive refractive power (see e.g. paragraph [0134] for positive meniscus), and has a convex object-side surface and a concave image-side surface (see e.g. Figure 11a and paragraph [0134]) for positive meniscus lens), and
wherein the first lens L1 is spaced apart from the reflective member L3.
Bito et al. fails to disclose
the second lens is bonded to the reflective member.
However, Manssen et al. discloses
the second lens is bonded to the reflective member (see e.g. paragraph [0017] where it is noted that a lens may be cemented to the exit surface of a prism).
Given the teachings of Manssen et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al. with the second lens is bonded to the reflective member.
Providing the lens(es) cemented to the prism would provide unwanted movement of the lens off the optical axis.
In regard to claim 4, Bito et al. discloses the limitations as applied to claim 1 above, and
wherein the reflective member L3 comprises an incident surface, a reflection surface, and an exit surface (see e.g. paragraph [0135]), and wherein an effective diameter of the object-side surface of the first lens L1 is greater than a minor axis length of the incident surface of the reflective member L3 (see e.g. Figure 11a).
In regard to claim 5, Bito et al. discloses the limitations as applied to claim 1 above, and
wherein the reflective member L3 comprises an incident surface, a reflection surface, and an exit surface (see e.g. paragraph [0135]).
Bito et al., in view of Manssen et al., fails to disclose
wherein 0.9 < D11P/DP22 < 1.5 is satisfied, where D11P is a distance from the object-side surface of the first lens to the reflection surface of the reflective member, and DP22 is a distance from the reflection surface of the reflective member to an image-side surface of the second lens.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein 0.9 < D11P/DP22 < 1.5 is satisfied, where D11P is a distance from the object-side surface of the first lens to the reflection surface of the reflective member, and DP22 is a distance from the reflection surface of the reflective member to an image-side surface of the second lens, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al. with wherein 0.9 < D11P/DP22 < 1.5 is satisfied, where D11P is a distance from the object-side surface of the first lens to the reflection surface of the reflective member, and DP22 is a distance from the reflection surface of the reflective member to an image-side surface of the second lens.
Providing a relative distance between the lenses and the prism would allow the light to be efficiently used in the system and would have predictable results.
In regard to claim 6, Bito et al., in view of Manssen et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein 0.5 < |RG1_S1/RG1_S2| < 1.2 is satisfied, where RG1_S1 is a radius of curvature of the object-side surface of the first lens, and RG1_S2 is a radius of curvature of the image-side surface of the first lens.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein 0.5 < |RG1_S1/RG1_S2| < 1.2 is satisfied, where RG1_S1 is a radius of curvature of the object-side surface of the first lens, and RG1_S2 is a radius of curvature of the image-side surface of the first lens, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al., with wherein 0.5 < |RG1_S1/RG1_S2| < 1.2 is satisfied, where RG1_S1 is a radius of curvature of the object-side surface of the first lens, and RG1_S2 is a radius of curvature of the image-side surface of the first lens.
Selecting the relative radii of curvature would allow for all of the incident light to be collected toward the prism element so that it may be directed through the optical system and would have predictable results.
In regard to claim 7, Bito et al., in view of Manssen et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein 1.7 < n_p < 2.0 is satisfied, where n_p is a refractive index of the reflective member.
However, Bito et al. does disclose a refractive index of 1.58913 (see e.g. Table 1), which is close to applicant’s claimed range. One of ordinary skill in the art at the time of the invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al., with wherein 1.7 < n_p < 2.0 is satisfied, where n_p is a refractive index of the reflective member.
Providing a higher refractive index material allows for the device to made thinner and would have predictable results.
In regard to claim 8, Bito et al., in view of Manssen et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein -0.7 < fG1/fG2 < 0 is satisfied, where fG1 is a total focal length of the first lens group, and fG2 is a total focal length of the second lens group.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein -0.7 < fG1/fG2 < 0 is satisfied, where fG1 is a total focal length of the first lens group, and fG2 is a total focal length of the second lens group, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al. with wherein -0.7 < fG1/fG2 < 0 is satisfied, where fG1 is a total focal length of the first lens group, and fG2 is a total focal length of the second lens group.
Selecting the ratio of focal lengths of the first and second groups of lenses would allow for a desired image size in the system and would have predictable results.
In regard to claim 9, Bito et al., in view of Manssen et al. discloses the limitations as applied to claim 1 above, but fails to disclose
wherein 0.4 < f/f1 < 0.75 is satisfied, where f is a total focal length of the optical imaging system, and f1 is a focal length of the first lens.
However, Bito et al. does disclose an f/f1 value of ~0.36 (see e.g. table 2 for f=13.76 when lenses are in a middle position and note that f1, for L1, was calculated to be ~38.39, thus 13.76/38.39~0.35), which is close to applicant’s claimed range. One of ordinary skill in the art at the time of the invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al., with
wherein 0.4 < f/f1 < 0.75 is satisfied, where f is a total focal length of the optical imaging system, and f1 is a focal length of the first lens.
Selecting the ratio of focal lengths of the lenses would allow for a desired image size in the system and would have predictable results.
In regard to claim 10, Bito et al. discloses the limitations as applied to claim 1 above, but fails to disclose
wherein 0.1 < f/f2 < 1.1 is satisfied, where f is a total focal length of the optical imaging system, and f2 is a focal length of the second lens.
However, Bito et al. does disclose a ratio of f/f2 of ~0.83 (see e.g. table 2 for f=13.76 when lenses are in a middle position and note that f2, for L5 was calculated to be ~16.59, thus 13.76/16.59~0.83), which falls within applicant’s claimed rage. It is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al. with wherein 0.1 < f/f2 < 1.1 is satisfied, where f is a total focal length of the optical imaging system, and f2 is a focal length of the second lens.
Selecting the ratio of focal lengths of the lenses would allow for a desired image size in the system and would have predictable results.
In regard to claim 11, Bito et al., in view of Manssen et al. discloses the limitations as applied to claim 1 above, but fails to disclose
wherein -0.35 < (RG1_S1-RG1_S2)/(RG1_S1+RG1_S2) < 0 is satisfied, where RG1_S1 is a radius of curvature of the object-side surface of the first lens, and RG1_S2 is a radius of curvature of the image-side surface of the first lens.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein -0.35 < (RG1_S1-RG1_S2)/(RG1_S1+RG1_S2) < 0 is satisfied, where RG1_S1 is a radius of curvature of the object-side surface of the first lens, and RG1_S2 is a radius of curvature of the image-side surface of the first lens, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al., with
wherein -0.35 < (RG1_S1-RG1_S2)/(RG1_S1+RG1_S2) < 0 is satisfied, where RG1_S1 is a radius of curvature of the object-side surface of the first lens, and RG1_S2 is a radius of curvature of the image-side surface of the first lens.
Selecting the relative radii of curvature would allow for all of the incident light to be collected toward the prism element so that it may be directed through the optical system and would have predictable results.
In regard to claim 12, Bito et al. discloses the limitations as applied to claim 1, and
wherein the reflective member L3 comprises an incident surface, a reflection surface, and an exit surface (see e.g. paragraph [0135]).
Bito et al., in view of Manssen et al., fails to disclose
1 < D11P/DR < 1.3 is satisfied, where D11P is a distance from the object-side surface of the first lens to the reflection surface of the reflective member, and DR is the distance from the incident surface of the reflective member to the reflection surface of the reflective member.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using 1 < D11P/DR < 1.3 is satisfied, where D11P is a distance from the object-side surface of the first lens to the reflection surface of the reflective member, and DR is the distance from the incident surface of the reflective member to the reflection surface of the reflective member, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al., with 1 < D11P/DR < 1.3 is satisfied, where D11P is a distance from the object-side surface of the first lens to the reflection surface of the reflective member, and DR is the distance from the incident surface of the reflective member to the reflection surface of the reflective member.
Selecting the distances between the optical surfaces would allow for the light to be moved through the optical system efficiently. Further, the optical path length would depend on the refractive index and the thickness of the material and would have predictable results.
In regard to claim 13, Bito et al., in view of Manssen et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein 0.4 < D12P/DR < 0.6 is satisfied, where D12P is a distance from the image-side surface of the first lens to the incident surface of the reflective member, and DR is a distance from the incident surface of the reflective member to the reflection surface of the reflective member.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein 0.4 < D12P/DR < 0.6 is satisfied, where D12P is a distance from the image-side surface of the first lens to the incident surface of the reflective member, and DR is a distance from the incident surface of the reflective member to the reflection surface of the reflective member, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al., with wherein 0.4 < D12P/DR < 0.6 is satisfied, where D12P is a distance from the image-side surface of the first lens to the incident surface of the reflective member, and DR is a distance from the incident surface of the reflective member to the reflection surface of the reflective member.
Selecting the distances between the optical surfaces would allow for the light to be moved through the optical system efficiently. Further, the optical path length would depend on the refractive index and the thickness of the material and would have predictable results.
In regard to claim 14, Bito et al. discloses the limitations as applied to claim 1 above, and
wherein the second lens L5 has positive refractive power, and has a convex image-side surface (see e.g. Figure 11a and paragraph [0135]).
In regard to claim 15, Bito et al. discloses the limitations as applied to claim 1 above, and
wherein at least three lenses of the lenses of the second lens group L6-L10 have a refractive index greater than 1.6 (see e.g. Table 1).
Claims 2, 3, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bito et al. (US 2007/0183058 A1) in view of Manssen et al. (US 2023/0185062 A1) and further in view of Shabtay et al. (US 2019/0144002 A1).
In regard to claim 2, Bito et al., in view of Manssen et al., discloses the limitations as applied to claim 1 above, but fails to disclose
wherein the reflective member is configured to rotate based on two axes, perpendicular to each other.
However, Shabtay et al. discloses
wherein the reflective member is configured to rotate based on two axes, perpendicular to each other (see e.g. paragraph [0056]).
Given the teachings of Shabtay et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Manssen et al. with wherein the reflective member is configured to rotate based on two axes, perpendicular to each other.
Providing rotation to the prism would allow the position of the field of view to be moved (see e.g. paragraph [0056] of Shabtay et al.).
In regard to claim 3, Bito et al., in view of Manssen et al. and Shabtay et al., discloses the limitations to claim 2 above, but fails to explicitly disclose
wherein one of the two axes is one of an optical axis of the first lens or an axis, parallel to the optical axis of the first lens.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize using wherein one of the two axes is one of an optical axis of the first lens or an axis, parallel to the optical axis of the first lens, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art (see e.g. MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al. and Shabtay et al., with wherein one of the two axes is one of an optical axis of the first lens or an axis, parallel to the optical axis of the first lens.
Selecting the axis about which to rotate the reflecting element would provide a desired path of light through the system and would have predictable results.
In regard to claim 16, Bito et al. discloses an optical imaging system (denoted “zoom lens system”, see e.g. paragraph [0134]), comprising (see e.g. Figure 11a):
a reflective member L3 (see e.g. paragraph [0135]);
a first lens L1, having positive refractive power (see e.g. paragraph [0134] for positive meniscus), and disposed in front of an incident surface of the reflective member L3 (see e.g. Figure 11a); and
a second lens L5 (see e.g. paragraph [0135 and Figure 11a),
wherein the first lens L1 is spaced apart from the reflective member L3 (see e.g. Figure 11a).
Bito et al. fails to disclose
the second lens bonded to an exit surface of the reflective member, and configured to rotate with the reflective member.
However, Manssen et al. discloses
the second lens is bonded to the reflective member (see e.g. paragraph [0017] where it is noted that a lens may be cemented to the exit surface of a prism).
Given the teachings of Manssen et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al. with the second lens is bonded to the reflective member.
Providing the lens(es) cemented to the prism would provide unwanted movement of the lens off the optical axis.
Bito et al., in view of Manssen et al., fails to disclose
the second lens configured to rotate with the reflective member.
However, Shabtay et al. discloses
wherein the reflective member is configured to rotate based on two axes, perpendicular to each other (see e.g. paragraph [0056]). Therefore, one of ordinary skill in the art would recognize that any element bonded to the reflective member would move therewith.
Given the teachings of Shabtay et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Manssen et al. with the second lens configured to rotate with the reflective member.
Providing rotation to the prism would allow the position of the field of view to be moved (see e.g. paragraph [0056] of Shabtay et al.).
In regard to claim 17, Bito et al. discloses the limitations as applied to claim 16 above, and
wherein the optical imaging system comprises a total of seven lenses (see e.g. Figure 11a for at least 7 lenses and further note this satisfies the claim due to the open nature of the word “comprise”).
In regard to claim 18, Bito et al. discloses the limitations as applied to claim 16 above, but fails to disclose
wherein the first lens has a convex object-side surface and a concave image-side surface (see e.g. Figure 11a and paragraph [0134]) for positive meniscus lens).
In regard to claim 19, Bito et al., in view of Manssen et al. and Shabtay et al., discloses the limitations as applied to claim 16 above, but fails to disclose
wherein the second lens has a flat object-side surface.
However, Bito et al. does disclose L5 having a bi-convex surface. One of ordinary skill would recognize that such a lens may be replaced with a plano-convex lens of a same power and achieve the same result.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Bito et al., in view of Manssen et al. and Shabtay et al., with wherein the second lens has a flat object-side surface.
Replacing a bi-convex lens with a plano-convex lens would be considered an art recognized equivalent for achieving the same purpose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA M MERLIN whose telephone number is (571)270-3207. The examiner can normally be reached Monday-Thursday 7:00AM-5:00PM.
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/JESSICA M MERLIN/Primary Examiner, Art Unit 2871
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