CTNF 18/768,299 CTNF 67948 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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-amendment The present office action is made in response to the Pre-amendment filed by applicant on 07/10/2024. It is noted that in the Pre-amendment, applicant has made changes to the claims. There was not any change being made to the abstract, the drawings and the specification. Regarding the claims, applicant has canceled claims 1-18 and added a new set of claims, i.e., claims 19-29, into the application. There was not any claim being amended. Election/Restrictions In response to the Election/Restriction mailed to applicant on 03/25/2026, applicant’s made an election of Invention II in the reply filed on 05/18/2026. 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election, claims 19, 22-23 and 25-29 are examine di the present office action, and claims 20-21 and 24 have been withdrawn from further consideration as being directed to non-elected Inventions I and III. Applicant should note that the non-elected claims 20-21 and 24 will be rejoined if the linking claim 19 is alter found as an allowable claim. Drawings The drawings contain thirty seven sheets of figures 1, 2A-2B, 3, 4A-4B, 5A-5C, 6, 7A-7B, 8, 9A-9B, 10A-10C, 11, 12A-12B, 13, 14A-14B, 15A-15C, 16, 17A-17B, 18, 19A-19B, 20A-20C, 21, 22A-22B, 23, 24A-24B, 25A-25C, and 26-27 were received on 07/10/2024 These drawings are approved by the examiner. Specification 06-31 AIA The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Claim Objections 07-29-01 Claims 25-27 are objected to because of the following informalities. Appropriate correction is required. a) In claim 25: there is a typo appeared in the claim on line 6, Should “ focal lengt-h” (line 6) be changed to --focal length--? and b) In claims 26-27: Each claim is objected to because each claims does not have a period at the end of the claim. Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-02 AIA Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claim is rejected because the disclosure does not provide support for a zoom lens having a front positive lens group, a negative M1 lens group, a positive M2 lens group and a negative RN group arranged in that order from an object wherein the zoom lens satisfies the condition thereof “the following conditional expression … telephoto end state” as recited in the claim on lines 3-7. In particular, the disclosure does not support for the claimed conditional expression because the definition/explanation for parameter thereof “fTM1: a focal length of the front lens group in a telephoto end state” recited in the claim on lines 6-7. Applicant is respectfully invited to review the specification, in particular, pages 13, 18, … which discloses that the parameter of fTM1 is a focal length of the negative MT1 lens group, not a focal length of the front lens group . 07-30-02 AIA 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 22 and 25-27 are 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. a) Claim 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite by the feature thereof “the following conditional expression … telephoto end state” (lines 3-7). Applicant should note that because both f1 and fTM1 each is defined as a focal length of the front lens group then how can a ratio of (-fTM1 / f1) is different from 1? b) Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite because the feature thereof “the image side” (lines 7-8) lacks a proper antecedent basis. c) Claim 26 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite by the feature thereof “the following conditional expression …. 3.70 < f1 / (-fTM1) < 5.00” (lines 3-4). The mentioned feature makes the claim indefinite because it is unclear what “fTM1” means? Applicant should note that the claim and its base claim 19 fail to provide a definition/explanation of the parameter of “fTM1”. d) Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite by the feature thereof “the following conditional expression …. 3.20 < f1 / (-fTM2) < 5.00” (lines 3-4). The mentioned feature makes the claim indefinite because it is unclear what “fTM2” means? Applicant should note that the claim and its base claim 19 fail to provide a definition/explanation of the parameter of “fTM2”. Double Patenting 08-33 AIA 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. 08-36 AIA Claim s 19, 22-23, and 25-28, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 7-8, and 11-14 of U.S. Patent No. 11,333,868, hereafter, Pat ‘868 , in view of Tokumaru et al (US Patent No. 5,105,311) . a) Regarding present claim 19, all features recited in the claim are read from features recited in claims 1 and 12 of Pat ‘868 except the feature that an aperture stop is disclosed inside the third lens group. However, a zoom lens having a first positive lens group, a second negative lens group, a third positive lens group and a fourth negative lens group wherein an aperture stop is disclosed inside the third lens group is known to one skill in the art as can be seen in the zoom lens provided by Tokumaru et al, see columns 2-5 and fig. 1, for example. Thus, it would have been obvious to one skill in the art to modify the zoom lens as recited in claims 1 and 12 of Pat ‘868 by using an aperture stop inside the third lens group as suggested by Tokumaru et al for the purpose of adjusting/controlling the light from an object pass through the zoom lens to meet a particular application. b) Regarding present claim 22, the features recited in claim 22 are read from features recited in claim 7 . of Pat ‘868. c) Regarding present claims 23 and 27, the features recited in claims 23 and 27 are read from features recited in claim 8 of Pat ‘868. d) Regarding present claim 25, the features recited in claim 25 are read from features recited in claim 11 of Pat ‘868. e) Regarding present claim 26, the features recited in claim 26 are read from features recited in claim 13 of Pat ‘868. f) Regarding present claim 28, the features recited in claim 28 are read from features recited in claim 14 of Pat ‘868 . 08-36 AIA Claim s 19, 22-23, 25-27 and 28-29, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 6, 8-9 and 14 of U.S. Patent No. 11,740,442, hereafter Pat ‘442 , in view of Tokumaru et al (US Patent No. 5,105,311) . a) Regarding present claims 19, 23 and 27, all features recited in the claims are read from features recited in claim 1 of Pat ‘442 except the feature that an aperture stop is disclosed inside the third lens group. However, a zoom lens having a first positive lens group, a second negative lens group, a third positive lens group and a fourth negative lens group wherein an aperture stop is disclosed inside the third lens group is known to one skill in the art as can be seen in the zoom lens provided by Tokumaru et al, see columns 2-5 and fig. 1, for example. Thus, it would have been obvious to one skill in the art to modify the zoom lens as recited in claim 1 of Pat ‘442 by using an aperture stop inside the third lens group as suggested by Tokumaru et al for the purpose of adjusting/controlling the light from an object pass through the zoom lens to meet a particular application. b) Regarding present claims 22 and 26, the features recited in claims 22 and 26 are read from features recited in claim 6 of Pat ‘442. c) Regarding present claim 25, the features recited in claim 25 are read from features recited in claim 8 of Pat ‘442.. d) Regarding present claim 28, the features recited in claim 28 are read from features recited in claim 9 of Pat ‘442. e) Regarding present claim 29, the features recited in claim 29 are read from features recited in claim 14 of Pat ‘442 . 08-36 AIA Claim s 19, 22-23, 25-27 and 28-29, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 6-9 of U.S. Patent No. 12,066,607, hereafter Pat ‘607 , in view of Tokumaru et al (US Patent No. 5,105,311) . a) Regarding present claims 19, 22-23, 26 and 27, all features recited in the claims are read from features recited in claim 1 of Pat ‘607 except the feature that an aperture stop is disclosed inside the third lens group. However, a zoom lens having a first positive lens group, a second negative lens group, a third positive lens group and a fourth negative lens group wherein an aperture stop is disclosed inside the third lens group is known to one skill in the art as can be seen in the zoom lens provided by Tokumaru et al, see columns 2-5 and fig. 1, for example. Thus, it would have been obvious to one skill in the art to modify the zoom lens as recited in claim 1 of Pat ‘607 by using an aperture stop inside the third lens group as suggested by Tokumaru et al for the purpose of adjusting/controlling the light from an object pass through the zoom lens to meet a particular application. b) Regarding present claim 25, the features recited in claim 25 are read from features recited in claims 6-7 of Pat ‘607. c) Regarding present claim 28, the features recited in claim 28 are read from features recited in claim 8 of Pat ‘607. d) Regarding present claim 29, the features recited in claim 29 are read from features recited in claim 9 of Pat ‘607 . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 19, 22-23, 25 and 27-29, as best as understood, are rejected under 35 U.S.C. 102( a)(a ) as being anticipated by Hagiwara (US Publication No. 2014/0268364) . Hagiwara discloses a zoom lens for use in an optical apparatus, see paragraphs [0002], [0064] and [0130] and fig. 21. a) Regarding present claims 19 and 28, the zoom lens of the Numerical Example 9 as described in paragraphs [0105]-[0117] and [0141] and shown in fig. 17 comprises the following features: a1) five lens groups arranged in an order from an object as follow: a first positive lens group (B1), a second negative lens group (B2), a third positive lens group (B3), a fourth negative lens group (B4) and a fifth positive lens group (B5); a2) during a zooming process, the distance between two adjacent lens groups is variable; a3) during a focusing process, the fourth lens group (B4) is moved; a4) an aperture stop (SP) is located inside the third lens group (B3), i.e., the aperture stop is located between a lens closest in the third lens group to the object and a lens closest in the third lens group to an image; and a5) because the focal length, f1, of the first positive lens group (B1) is 116.75 mm and the focal length, fw, of the zoom lens at its wide-angle lens state is 55.00 mm then the value of the ratio of f1/fw is 2.12 which is inside the range of (1.90; 3.50) as claimed. 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). b) Regarding present claim 22, because the focal length, f1, of the first positive lens group (B1) is 116.75 mm and the focal length, f2, of the second negative lens group (B2) is -22.64 mm then the value of the ratio of (-f2)/f1 is 0.19 which is inside the range of (0.15; 0.35) as claimed. c) Regarding present claim 23, because the focal length, f1, of the first positive lens group (B1) is 116.75 mm and the focal length, f3, of the third positive lens group (B3) is 32.14 mm then the value of the ratio of f3/f1 is 0.28 which is inside the range of (0.20; 0.40) as claimed. d) Regarding present claim 25, because the focal length, fP, of the lens having a strongest positive lens in the fifth lens group (B5) which lens group is disposed on the image side of the fourth lens group (B4) is around 29.56 mm, see paragraph [0141], the lens surfaces numbered as (27,28) and the focal length, fN, of the lens having a strongest negative lens in the fifth lens group (B5) which lens group is disposed on the image side of the fourth lens group (B4) is around -29.84 mm, see paragraph [0141], the lens surfaces numbered as (28,29) then the value of the ratio of (-fN)/FP is around 1.00 which is inside the range of (0.70; 2.00) as claimed. e) Regarding present claim 27, because the focal length, f1, of the first positive lens group (B1) is 116.75 mm and the focal length, f3, of the third positive lens group (B3) is 32.14 mm then the value of the ratio of f1/f3 is 3.63 which is inside the range of (3.20; 5.00) as claimed. f) Regarding to the method limitations as recited in claim 29, the method limitations are implicitly met by the structural limitations . Claim Rejections - 35 USC § 103 07-20-aia AIA 20. 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. 07-21-aia AIA 21. Claim 26, as best as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara . It is noted that in the zoom lens of the Numerical Example 9 as described in paragraphs [0105]-[0117] and [0141] and shown in fig. 17 by Hagiwara, the value of the ratio of f1/(-f2) is around 5.16 which is not inside the range of (3.70; 5.00) as claimed. However, the value of 5.16 of the zoom lens of the Numerical Example 9 provided by Hagiwara is so closed to the upper value of 5.00 of the claimed range (3.70; 5.00) that it is expected that there is not any unexpected result or any difference in optical performance occurred between a zoom lens having a value of 5.16 for the ratio of (f1/(-f2) and a zoom lens having a range of (3.70; 5.00) governing the mentioned ratio. Thus it is expect that the zoom lens of the Numerical Example 9 provided by Hagiwara is working fine with the range of (3.70; 5.00). See In re Wertheim, supra; Titanium Metals Corporation of America V. Banner, supra. Thus, the zoom lens with feature related to the ratio of f1/(-f2) as recited in present claim 26 is read from the zoom lens of the Numerical Example 9 provided by Hagiwara or it would have obvious to one skill in the art before the effective filing date of the invention to utilize the zoom lens of the Numerical Example 9 provided by Hagiwara 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 f1/(-f2) 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 07-96 AIA 22. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 23. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /THONG Q NGUYEN/Primary Examiner, Art Unit 2872 Application/Control Number: 18/768,299 Page 2 Art Unit: 2872 Application/Control Number: 18/768,299 Page 3 Art Unit: 2872 Application/Control Number: 18/768,299 Page 4 Art Unit: 2872 Application/Control Number: 18/768,299 Page 5 Art Unit: 2872 Application/Control Number: 18/768,299 Page 6 Art Unit: 2872 Application/Control Number: 18/768,299 Page 7 Art Unit: 2872 Application/Control Number: 18/768,299 Page 8 Art Unit: 2872 Application/Control Number: 18/768,299 Page 9 Art Unit: 2872 Application/Control Number: 18/768,299 Page 10 Art Unit: 2872 Application/Control Number: 18/768,299 Page 11 Art Unit: 2872 Application/Control Number: 18/768,299 Page 12 Art Unit: 2872 Application/Control Number: 18/768,299 Page 13 Art Unit: 2872 Application/Control Number: 18/768,299 Page 14 Art Unit: 2872 Application/Control Number: 18/768,299 Page 15 Art Unit: 2872
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