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 .
Election/Restrictions
Applicant’s election without traverse of Species A2, B2 and C1 in the reply filed on August 12, 2026 is acknowledged. No claims are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
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 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.
Claims 1-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1 lines 11 and 23 each recite “an in-focus state on an infinite-distance object” raising antecedent issues. It is unclear if the in-focus states in line 23 is referring the one introduced in line 11 (assumed) or if it is a new/different in-focus state. The examiner suggests and for purposes of examination will use “[[an]] the in-focus state on an infinite-distance object” in line 23.
Claims 2-14 and 16-18 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claim 15 lines 15, 27 and 30 each recite “an in-focus state on an infinite-distance object” raising antecedent issues. It is unclear if the in-focus states in lines 27 and 30 are referring to the one introduced in line 15 (assumed) or if they are new/different in-focus state(s). The examiner suggests and for purposes of examination will use “[[an]] the in-focus state on an infinite-distance object” in lines 27 and 30.
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 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hara US Patent Application Publication 2013/0188091.
Regarding claim 1 Hara discloses an optical system (title e.g. examples 5 & 8-9, see figures 5 & 8-9) in which an interval between adjacent lens units is configured to change during focusing from an infinite-distance object to a close-distance object (axiomatic, e.g. see figures 5 & 8-9), and in which in an in-focus state b = -1.0 is satisfied (e.g. see Tables in paragraphs [0162 & 0069-70] second close distance magnification “-1.0”), where b is a lateral magnification of the optical system, the optical system comprising: a plurality of focus lens units configured to move during focusing from an infinite-distance object to a close-distance object (abstract), wherein the plurality of focus lens units includes a first focus lens unit, LA (e.g. second lens unit G2), and a second focus lens unit, LB (e.g. third lens unit G3), disposed on an image side of the first focus lens unit, LA (see figures 1-8), the first focus lens unit, LA, being one of a focus lens unit having a largest absolute value of a focus sensitivity or a focus lens unit having a second largest absolute value of a focus sensitivity among the plurality of focus lens units in an in-focus state on an infinite-distance object (inherent given similar structure and function), the second focus lens unit, LB, being the other lens unit having the largest absolute value of a focus sensitivity or the focus lens unit having the second largest absolute value of a focus sensitivity among the plurality of focus lens unit in the in-focus state on the infinite-distance object (inherent given similar structure and function), wherein a partial optical system, LC (e.g. fourth & fifth lens units G4 & G5) including all lenses disposed on the image side of the second focus lens unit, LB (e.g. see figures 5 & 8-9) has negative refractive power (e.g. using the values in paragraphs [0162 & 0069-70] fLCY=-71.33, -65.79 & -71.17, respectively), and wherein the following inequalities are satisfied: -1.20 < fLCY/f < -0.20 (e.g. using the values in paragraphs [0162 & 0069-70] fLCY/f=-0.70, -0.95 & -0.85, respectively), -1.00 < sk/fLCY < -0.10 (e.g. using the values in paragraphs [0162 & 0069-70] sk/fLCY=-0.35, -0.25 & -0.18, respectively), 0.10 < fL1/f < 2.50 (e.g. using the values in paragraphs [0162 & 0069-70] fL1/f=0.33, 0.52 & 0.48, respectively).
Regarding claim 2 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: 0.10 < |fLA/f| < 0.50 (e.g. using the values in paragraphs [0162 & 0069] |fLA/f|=0.29 & 0.38, respectively).
Regarding claim 3 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: 0.10 < |ESB| < 6.00, where ESB is a focus sensitivity of the second focus lens unit (LB) in the in-focus state on the infinite-distance object (inherent given structure and function).
Regarding claim 4 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: 0.05 < (|MA| + |MB|)/f < 0.60 (e.g. using the values in paragraphs [0069-70] (|MA| + |MB|)/f =0.21 & 0.08, respectively).
Regarding claim 5 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses further comprising an aperture stop (e.g. aperture stop S), wherein the following inequality is satisfied: 0.50 < Di/f < 1.50 (e.g. using the values in paragraphs [0162 & 0069-70] Di/f=0.77, 0.80 & 0.69, respectively).
Regarding claim 6 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein a first lens unit, L1 (e.g. first lens unit G1) disposed closest to the object side in the optical system has positive refractive power (e.g. the values in paragraphs [0162 & 0069-70] disclose f1=33.75, 35.86 & 40.52, respectively).
Regarding claim 7 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the first focus lens unit, LA (e.g. G2) has negative refractive power (e.g. the values in paragraphs [0162 & 0069-70] disclose f2=-29.49, -26.58 & -43.28, respectively).
Regarding claim 8 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein a lens disposed closest to an image side in the optical system has positive refractive power (e.g. using the values in paragraphs [0162 & 0069-70] fI=36.80, 28.28 & 19.50).
Regarding claim 9 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: 0.25 < fI/f < 2.20 (e.g. using the values in paragraphs [0162 & 0069] fI/f=0.36 & 0.41).
Regarding claim 10 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses further comprising an aperture stop (e.g. S), wherein the first focus lens unit LA (e.g. G2) is disposed on a light incident side of the aperture stop (e.g. see figures 5 & 8-9), and wherein the second focus lens unit LB (e.g. G3) is disposed on a light emission side of the aperture stop (e.g. see figures 5 & 8-9).
Regarding claim 11 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the first focus lens unit, LA (e.g. G2) includes three or more lenses (e.g. see figures 5 & 8-9) including a negative lens (e.g. either of the two most object side lenses) and a positive lens (e.g. the lens closest to the image plane).
Regarding claim 12 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the second focus lens unit, LB (e.g. G3) includes two or more lenses (e.g. see figures 5 & 8-9) including a negative lens (e.g. the lens closest to the image plane) and a positive lens (e.g. either of the two most object side lenses).
Regarding claim 13 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein a first lens unit, L1 (e.g. G1) disposed closest to the object side in the optical system is immovable during focusing (e.g. see figures 5 & 8-9).
Regarding claim 14 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: 2.50 < |ESA| < 7.5, where ESA is a focus sensitivity of the first focus lens unit (LA) in the in-focus state on the infinite-distance object (inherent given structure and function).
Regarding claim 15 Hara discloses an imaging apparatus (title e.g. figures 29-31 digital camera 40) comprising: an optical system (e.g. optical system 41); and an image sensor configured to photoelectrically convert an optical image formed by the optical system (e.g. CCD 49), wherein, in the optical system is according to claim 1 (as set forth above).
Regarding claim 16 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: -1.00 ≤ fLCY/f ≤ -0.31 (e.g. using the values in paragraphs [0162 & 0069-70] fLCY/f=-0.70, -0.95 & -0.85, respectively).
Regarding claim 17 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: -0.82 ≤ sk/fLCY ≤ -0.24 (e.g. using the values in paragraphs [0162 & 0069] sk/fLCY=-0.35 & -0.25, respectively).
Regarding claim 18 Hara discloses the optical system according to claim 1, as set forth above. Hara further discloses wherein the following inequality is satisfied: 0.38 ≤ fL1/f ≤ 2.01 (e.g. using the values in paragraphs [0069-70] fL1/f=0.52 & 0.48, respectively).
Double Patenting
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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,467,385. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims can be used to claim property rights to the same devices.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,072,478. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims can be used to claim property rights to the same devices.
Claim 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 19/338,488 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims can be used to claim property rights to the same devices. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding 11,467,385, 12,072,478 and 19/338,488 – these are in the same family as the instant application, i.e. they share the same specification. The devices claimed by 11,467,385, 12,072,478, 19/338,488 and the instant application all read on the examples in the shared specification. Thus, the examples in said specification could be covered by any of these claim sets, so as to prevent possible harassment by multiple assignees either the clams need to mutually exclude each other or a terminal disclaimer may be filed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mori US Patent Application Publication 2020/0174225; in regards to a similar optical system (e.g. see figure 1) including from object to image side a first focus lens unit, LA (e.g. Lp2) and a second focus lens unit, LB (e.g. Ln1) and a partial optical system, LC (e.g. Ln2) capable of having an in-focus state b = -1.0 (see paragraph [0062]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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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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/George G. King/Primary Examiner, Art Unit 2872 August 25, 2026
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