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 Amendment and Terminal Disclaimer
The present office action is made in response to the amendment and the Terminal Disclaimer filed by applicant on 09/03/2026. It is noted that in the 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 amended claims 19 and 25-26, canceled claims 22, 27 and 19, and added a new set of claims, i.e., claims 30-31, into the application.
Response to Arguments
The amendments to the claims as provided in the amendment of 09/03/2026, applicant’s arguments provided in the mentioned amendment, page 7-10, and the submission of the Terminal Disclaimer on 09/03/2026 have been fully considered and resulted in the following conclusions.
A) Regarding the claims, the following conclusions are made:
A1) because applicant canceled claims 22, 27 and 19, and added a new set of claims, i.e., claims 30-31, into the application, thus the pending claims are now claims 19-21, 23-26, 28 and 30-31 (Note that claims 1-18 were canceled in the pre-amendment of 07/10/2024); and
A2( a review of the newly-added claims 30-31 has resulted that the scope of new claims is similar to that recited in the elected claims 19, 22-23 and 25-29, thus the newly-added claims are examined with the elected claims 19, 23, 25-26 and 28 (Note that claims 22, 27 and 29 were canceled in the amendment of 09/03/2026).
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.
B) Regarding the objections of claims 25-27 set forth in the office action of 06/04/2026, the amendments to the claims as provided in the amendment of 09/03/2026 are sufficient to overcome the objections of claims 25-27 set forth in the mentioned office action.
C) Regarding the rejection of claim 22 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 22 and 25-27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 06/04/2026, the amendments to the claims as provided in the amendment of 09/03/2026 are sufficient to overcome the rejection of claim 22 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 22 and 25-27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
D) Regarding the rejection of claims 19, 22-23, and 25-28 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-8, and 11-14 of U.S. Patent No. 11,333,868 in view of Tokumaru et al (US Patent No. 5,105,311), the rejection of claims 19, 22-23, 25-27 and 28-29 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-9 and 14 of U.S. Patent No. 11,740,442 in view of Tokumaru et al (US Patent No. 5,105,311), and the rejection of claims 19, 22-23, 25-27 and 28-29 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-9 of U.S. Patent No. 12,066,607 in view of Tokumaru et al (US Patent No. 5,105,311) set forth in the office action of 06/04/2026, the amendments to the claims as provided in the amendment of 09/03/2026, applicant’s arguments provided in the mentioned amendment, and the submission of the Terminal Disclaimer by applicant on 09/03/2026 which Terminal Disclaimer has been approved by the Office, are sufficient to overcome the rejections of the mentioned claims on the ground of nonstatutory double patenting as being unpatentable over claims of Patent Nos. 11,333,868; 11,740,442 and 12,066,607, set forth in the mentioned office action.
E) Regarding the rejection of claims 19, 22-23, 25 and 27-29 under 35 U.S.C. 102(a)(a) as being anticipated by Hagiwara (US Publication No. 2014/0268364) set forth in the office action of 06/04/2026, the amendments to the claims as provided in the amendment of 09/03/2026 and applicant’s arguments provided in the mentioned amendment, pages 7-10, have been fully considered but are moot because the new ground of rejection while still based on the same art but is modified due to the amendments to the claims as provided in the amendment of 09/03/2026.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19, 23, 25, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara (US Publication No. 2014/0268364, of record).
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, the focal length, fw, of the zoom lens at its wide-angle lens state is 55.00 mm, and the focal length, f2, of the second negative lens group (B2) is -22.64 then
the value of the ratio of f1/fw is 2.12 which is inside the range of (1.90; 3.50) as claimed in claim 19; and
the value of the ratio of (-f2)/f1 is 0.19, which is close to the lower limit of 0.203 of the range of (0.203; 0.35) as claimed in claim 19.
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).
The only feature missing from the zoom lens of the Numerical Example 9 as described in paragraphs [0105]-[0117] and [0141] and shown in fig. 17 provided by Hagiwara is that the zoom lens of the Numerical Example 9 does not disclose that the value of ratio of (-f2)/f1 is inside the range of (0.203; 0.35) as recited in claim 19. However, the lower limit 0.203 of the range as claimed is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the present specification, for example, in paragraphs [0031]-[0034] in which applicant has clearly disclosed that the range governs the ratio of (-f2/f1) is (0.15; 0.35) which in this range the value of 0.19 for the ratio of (-f2/f1) of the Numerical Example 9 provided by Hagiwara is inside such range. Furthermore, there is not any unexpected result or optical performance occurred between a zoom lens having a range of (0.203; 0.35) governing the ratio of (-f2/f1) and a zoom lens having a range of (0.15; 0.35) governing the ratio of (-f2/f1) and the value of the mentioned ratio of the zoom lens of the Numerical Example 9 provided by Hagiwara is inside the range of (0.15; 0.35) thus it is expect that the zoom lens of the Numerical Example 9 provided by Hagiwara is working fine with the range of (0.203; 0.35). See In re Wertheim, supra; Titanium Metals Corporation of America V. Banner, supra.
Thus, the zoom lens with feature related to the ratio of (-f2/f1) as recited in claim 19 is read from the zoom lens of the Numerical Example 9 provided by Hagiwara 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 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 (-f2/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).
b) Regarding present 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.
c) 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.
8. Claim 26 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 expected 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).
9. Claims 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara (US Publication No. 2014/0268364, of record).
Hagiwara discloses a zoom lens for use in an optical apparatus, see paragraphs [0002], [0064] and [0130] and fig. 21.
a) Regarding present claims 30-31, 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, the focal length, fw, of the zoom lens at its wide-angle lens state is 55.00 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/fw is 2.12 which is inside the range of (1.90; 3.50) as claimed in claim 30; and
the value of the ratio of f1/f3 is 3.63, which is close to the lower limit of 3.786 of the range of (3.786; 5.00) as claimed in claim 30.
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).
The only feature missing from the zoom lens of the Numerical Example 9 as described in paragraphs [0105]-[0117] and [0141] and shown in fig. 17 provided by Hagiwara is that the zoom lens of the Numerical Example 9 does not disclose that the value of ratio of f1/f3 is inside the range of (3.786; 5.00) as recited in claim 30. However, the lower limit 3.786 of the range as claimed is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the present specification, for example, in paragraphs [0053]-[0056]] in which applicant has clearly disclosed that the range governs the ratio of (f1/f3) is (3.20; 5.00) which in this range the value of 3.63 for the ratio of (f1/f3) of the Numerical Example 9 provided by Hagiwara is inside such range. Furthermore, there is not any unexpected result or optical performance occurred between a zoom lens having a range of (3.20; 5.00) governing the ratio of (f1/f3) and a zoom lens having a range of (3.786; 5.00) governing the ratio of (f1/f3) and the value of the mentioned ratio of the zoom lens of the Numerical Example 9 provided by Hagiwara is inside the range of (3.20; 5.00) thus it is expect that the zoom lens of the Numerical Example 9 provided by Hagiwara is working fine with the range of (0.203; 0.35). See In re Wertheim, supra; Titanium Metals Corporation of America V. Banner, supra.
Thus, the zoom lens with feature related to the ratio of (-f2/f1) as recited in claim 30 is read from the zoom lens of the Numerical Example 9 provided by Hagiwara 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 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/f3) 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
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
11. 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.
12. 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
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