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 .
DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 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 without traverse of Species A (figure 1), including claims 17-31, in the reply filed on 06/11/2026 is acknowledged.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 102
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, 19-23, 26-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imaoka et al. (US 2012/0050603).
Regarding claim 17, Imaoka et al. (figure 17) discloses a zoom optical system comprising, in order from an object:
a first lens group having positive refractive power (G1);
a second lens group having negative refractive power (G2);
a third lens group having positive refractive power (G3); and
a subsequent lens group (see G4-G5), wherein
upon zooming, a distance between the first lens group and the second lens group changes, a distance between the second lens group and the third lens group changes, and a distance between the third lens group and the subsequent lens group changes (see G4-G5),
the subsequent lens group comprises a focusing lens group that moves upon focusing (G4), and the following conditional expressions are satisfied,
3.70 < f1/(-f2) < 5.00 (54/12.2=4.43; tables 17-20)
3.20 < f1/f3 < 5.00 (54/15.3=3.53; tables 17-20)
0.18 < (-fF)/fl <0.30 (14.8/54=0.27; tables 17-20)
where f1: a focal length of the first lens group, f2: a focal length of the second lens group, f3: a focal length of the third lens group, and fF: a focal length of the focusing lens group.
Regarding claim 19, Imaoka et al. (figure 17) discloses wherein the following conditional expression is satisfied,0.84 < (-f2)/f3 < 1.20 (18.2/19.6=0.93; tables 17-20).
Regarding claim 20, Imaoka et al. (figure 17) discloses wherein the first lens group comprises a positive lens and a cemented lens consisting of a negative lens and a positive lens (L1-L3; see at least paragraph 0150).
Regarding claim 21, Imaoka et al. (figure 17) discloses wherein the focusing lens group comprises at least one positive lens and at least one negative lens (L12 and L13; see at least paragraphs 0153-0154).
Regarding claim 22, Imaoka et al. (figure 17) discloses wherein a positive single lens is provided at a position closest to an image in the subsequent lens group (L13; see at least paragraphs 0153-0154).
Regarding claim 23, Imaoka et al. (figure 17) discloses wherein the second lens group comprises a partial group that satisfies the following conditional expression,1.40 < fvr/f2 < 2.30 (fvr/f2=f of lens 5/f2=27.4/12.2=2.25; where fvr: a focal length of the partial group; tables 17-20).
Regarding claim 26, Imaoka et al. (figure 17) discloses wherein the following conditional expression is satisfied,1.20 < vN/vP < 2.40 where vN: an Abbe number of the lens having negative refractive power in the partial group, and vP: an Abbe number of the lens having positive refractive power in the partial group (55.5/29.5=1.81; tables 17-20).
Regarding claim 27, Imaoka et al. (figure 17) discloses wherein the partial group is a vibration-proof lens group movable so as to have a displacement component in a direction perpendicular to an optical axis in order to correct an image blur (When image point movement caused by vibration of the entire system is to be compensated, the image blur compensating lens unit moves in the direction perpendicular to the optical axis, so that image blur is compensated in a state that size increase in the entire zoom lens system is suppressed to realize a compact construction and that excellent imaging characteristics such as small decentering coma aberration and small decentering astigmatism are satisfied; see at least paragraphs 0008 and 0238-0240).
The limitations “wherein the partial group is a vibration-proof lens group movable so as to have a displacement component in a direction perpendicular to an optical axis in order to correct an image blur” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 28, Imaoka et al. (figure 17) discloses wherein the subsequent lens group comprises:a lens having negative refractive power that is disposed to an image side of the focusing lens group; and a lens having positive refractive power that is disposed to the image side of the lens having negative refractive power (L12 and L13; see at least paragraphs 0153-0154).
Regarding claim 29, Imaoka et al. (figure 17) discloses wherein the following conditional expression is satisfied,0.70 < (-fN)/fP < 2.00 ((-f of lens 12/f of lens 13=14.95/46.17=0.32; tables 17-20) where fN: a focal length of the lens that is disposed to the image side of the focusing lens group and has the negative refractive power, and fP: a focal length of the lens that is disposed to the image side of the lens having the negative refractive power, and has the positive refractive power.
Regarding claim 30, Imaoka et al. (figure 17) discloses optical apparatus comprising the zoom optical system according to claim 17.
Regarding claim 31, Imaoka et al. (figure 17) discloses a method of manufacturing a zoom optical system, comprising,
providing, in order from an object, a first lens group having positive refractive power, a second lens group having negative refractive power, a third lens group having positive refractive power, and a subsequent lens group (G1, G2, G3, and G4-G5),
arranging the first lens group, the second lens group, the third lens group, and the subsequent lens group in a lens barrel such that (see G4-G5);
upon zooming, a distance between the first lens group and the second lens group changes, a distance between the second lens group and the third lens group changes, and a distance between the third lens group and the subsequent lens group changes,
the subsequent lens group comprises a focusing lens group that moves upon focusing (see G4-G5), and
the following conditional expressions are satisfied,
3.70 < f1/(-f2) < 5.00 (54/12.2=4.43; tables 17-20)
3.20 < f1/f3 < 5.00 (54/15.3=3.53; tables 17-20)
0.18 < (-fF)/fl <0.30 (14.8/54=0.27; tables 17-20)
where f1: a focal length of the first lens group, f2: a focal length of the second lens group, f3: a focal length of the third lens group, and fF: a focal length of the focusing lens group.
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 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 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.
Claim 18 rejected under 35 U.S.C. 103 as being unpatentable over Imaoka et al. (US 2012/0050603).
Regarding claim 30, Imaoka et al. discloses the limitations as shown in the rejection of claim 17 above. However, Imaoka et al. is silent regarding 1.80 < fl/fw < 3.50. Imaoka et al. (figure 17) discloses wherein the following conditional expression is satisfied,1.80 < fl/fw < 3.50 (54/14.4=3.75) where fw: a focal length of the zoom optical system in a wide-angle end state. One of ordinary skill in the art before the effective filing date of the claimed 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).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but 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) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 26, Imaoka et al. discloses the limitations as shown in the rejection of claim 23 above. However, Imaoka et al. is silent regarding 1.20 < vN/vP < 2.40. Imaoka et al. (figure 17) discloses wherein the following conditional expression is satisfied,1.80 < fl/fw < 3.50 (54/14.4=3.75) where fw: a focal length of the zoom optical system in a wide-angle end state. One of ordinary skill in the art before the effective filing date of the claimed 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).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but 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) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The specific limitations of " wherein the partial group consists of, in order from the object: a lens having negative refractive power; and a lens having positive refractive power " in the combination as claimed in claim 8 are not provided nor made obvious by the prior art of record. Claim 24 would therefore be allowable if rewritten in independent form. Being depending on claim 24, claim 25 would also be allowable.
25. (New) The zoom optical system according to Claim 24, wherein the following conditional expression is satisfied,0.80 < nN/nP < 1.00 where nN: a refractive index of the lens having negative refractive power in the partial group, and nP: a refractive index of the lens having positive refractive power in the partial group.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
Prosecution Insights