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
The instant application having Application No. 18948076 filed on 11/14/2024 is presented for examination by the examiner.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Priority
As required acknowledgement is made of applicant’s claim for priority based on Continuation of 18045747, filed 10/11/2022, which is a continuation of application 16838932 , filed 04/02/2020 that claims foreign priority to application JP 2019-076160, filed 04/12/2019 (Japan).
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
However, to overcome a prior art rejection, applicant(s) must submit a translation of the foreign priority papers in order to perfect the claimed foreign priority because said papers has not been made of record in accordance with 37 CFR 1.55.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-12, 14 and 16 and 14 of U.S. Patent No. 11500175. Although the claims at issue are not identical, they are not patentably distinct from each other as presented in the claims correspondence table below:
Instant application 18948076
U.S. Patent No. 11500175
Notes
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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 1-5, 7-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu et al. (hereafter Shimizu) US 20110286116 A1.
In regard to independent claim 1, Shimizu teaches (see Figs. 1-11) an optical system (i.e. e.g. focusing macro lens, Abstract, Figs. 5-11, paragraphs [13-22,46-48]) comprising:
in order from an object side to an image side (i.e. in order from object side to image side i.e. image plane IP, see e.g. Figs. 1,5,8, paragraphs [13-22,46-48]),
a first lens unit having a positive refractive power (positive first/leading lens group L1 e.g. Figs. 1,5,8, paragraphs [13-22,46-48]), a second lens unit having a negative refractive power (negative second lens group L2, e.g. Figs. 1-11, paragraphs [13-22, 46-48]), an intermediate unit including one or more lens units (third lens group, L3, L3A or 3A with subgroups L3A, L3B, e.g. Figs. 1-11, paragraphs [13-22, 46-48]), and a final lens unit having a negative refractive power (trailing lens group L4 having a negative refractive power, see e.g. Figs. 1,5,8, paragraphs [13-22, 46-48]),
wherein a distance between adjacent lens units changes in focusing (i.e. as due to movement of L2 and L3, L3A and L3A, L3B, during focusing, as depicted in e.g. Figs. 1,5,8, paragraphs [13, 46-48]),
wherein the second lens unit moves (L2) toward an image side (as depicted by arrows for such movement of L2, Figs. 5, 8, paragraphs [13-22, 46-48]) and a lens unit closest to the image plane in the one or more lens units included in the intermediated lens unit moves toward the object side (i.e. as L3 or L3A as well as L3B) move(s) towards object side in such movement depicted by arrow, Figs. 5, 8, paragraphs [13-22, 46-48]) from a state of focusing on an infinity to a state in which the object is focused at the imaging magnification of -0.5 (as L2 moves towards image side IP, and L3 moves towards object side for focusing during photographing throughout the entire object distance from infinity to proximity up to an equi-magnification image focusing range, see e.g. Figs. 1,5,8, paragraphs [13-15. 46-48]),
wherein the first lens unit includes two or more positive lenses (as L1 includes two or more positive lenses, e.g. Figs. 1,5,8, paragraphs [13-22,46-48]).
Regarding claim 2, Shimizu teaches (see Figs. 1-11) that the first lens unit is fixed in focusing (i.e. as L1 is static lens group, see Abstract, paragraphs [13, 18, 46-49], as depicted in Figs. 1, 5, 8).
Regarding claim 3, Shimizu teaches (see Figs. 1-11) that the first lens unit includes a positive lens GP1 closest to an object and a positive lens GP2 adjacent to the image side of the positive lens GP1 (i.e. as first positive lens closest to an object in L1 and second positive lens next to it in L1, paragraphs [13, 18, 46-49], as depicted in Figs. 1, 5, 8).
Regarding claim 4, Shimizu teaches (see Figs. 1-11) that the first lens unit includes a positive lens GP3 adjacent to an image side of the positive lens GP2 (i.e. as third positive lens L1 adjacent to image side of second positive lens in L1, paragraphs [13, 18, 46-49], as depicted in Figs. 1, 5, 8).
Regarding claim 5, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied:
-0.7 < fF1/f1 < -0.4 (i.e. as given lens data for a focal length of L2, L1 and whole macro lens f from Tables paragraphs [46-49], e.g. value -0.538, -0.40057),
where fF1 is a focal length of the second lens unit and f1 is a focal length of the first lens unit (i.e. as a focal length of L2 lens group and focal length of whole macro lens with focus at infinity, see Tables paragraphs [46-49], Figs. 1, 5, 8).
Regarding claim 7, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied: -1.6 < f/fR < -0.3 (i.e. as given lens data for a focal length of L4 and whole macro lens f from Tables paragraphs [46-49], e.g. value -1.033, -1.32),
where fR is a focal length of the final lens unit (i.e. as a focal length of L4 lens group and focal length of whole macro lens with focus at infinity, see Tables paragraphs [46-49], Figs. 1, 5, 8).
Regarding claim 8, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied: -0.6 < MF2/fF2 < 0 (i.e. as given lens data for movement of L3 from focus at infinity to close distance at 5:1 magnification and focal length of L3 from Tables paragraphs [46-49], e.g. value -0.102),
where MF2 is an amount of movement of the intermediate unit, the movement being accompanied by focusing from a state in which an object is in focus at infinity to a state in which the object is in focus with an imaging magnification of -0.2 (i.e. as given lens data for movement of L3 from focus at infinity to close distance at 5:1 magnification and focal length of L3 from Tables paragraphs [46-49]).
Regarding claim 10, Shimizu teaches (see Figs. 1-11) further comprising an aperture stop (as ST, paragraphs [46-49, 55]), and wherein the following inequality is satisfied:
0.5 < STIP/TD < 0.8 (as due to distance of ST to IP and total length of macro lens from first lens object side to IP at infinity focusing, see paragraphs [46-49], as depicted in Figs. 1A, 5A, 8A, e.g. 0.58, 0.61), where STIP is a distance on an optical axis from the aperture stop to the image plane when an object is in focus at infinity, and TD is a distance on the optical axis from an object side lens surface of a lens closest to the object to the image plane when an object is in focus at infinity (as distance of ST to IP and total length of macro lens from first lens object side to IP at infinity focusing, see paragraphs [46-49], as depicted in Figs. 1A, 5A, 8A).
Regarding claim 11, Shimizu teaches (see Figs. 1-11) that the final lens unit is fixed in focusing (i.e. as fourth lens group L4 is static, fixed for focusing, see paragraphs [28, 46-49], as depicted in Figs. 5, 8).
Regarding claim 12, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied:
-0.37 < fF1/f < 0 (i.e. as due to focal length of L2 and of the macro lens, from lens data tables, paragraphs [29, 46-49], e.g. value -0.35),
where fF1 is a focal length of the second lens unit (i.e. as focal length of L2, see lens data tables, paragraphs [29, 46-49]).
Regarding claim 13, Shimizu teaches (see Figs. 1-11) an image capturing apparatus comprising the optical system according to claim 1 (i.e. as photographing camera having macro lens of claim 1, see paragraphs [01, 03-04]), and an image pickup element configured to receive an optical image formed by the optical system (i.e. as macro lens is used in electronic still or video photographing camera for photographing at varied object distances capturing image with such image pickup element in the image plane IP, paragraphs [01, 03-04, 13,18 46-49]).
Regarding claim 14, Shimizu teaches (see Figs. 1-11) that the first lens unit is fixed in focusing (i.e. as L1 is static lens group, see Abstract, paragraphs [13, 18, 46-49], as depicted in Figs. 1, 5, 8).
Regarding claim 15, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied:
-0.37 < fF1/f < 0 (i.e. as due to focal length of L2 and of the macro lens, from lens data tables, paragraphs [29, 46-49], e.g. value -0.35),
where fF1 is a focal length of the second lens unit (i.e. as focal length of L2, see lens data tables, paragraphs [29, 46-49]).
Regarding claim 16, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied: -1.6 < f/fR < -0.3 (i.e. as given lens data for a focal length of L4 and whole macro lens f from Tables paragraphs [46-49], e.g. value -1.033, -1.32),
where fR is a focal length of the final lens unit (i.e. as a focal length of L4 lens group and focal length of whole macro lens with focus at infinity, see Tables paragraphs [46-49], Figs. 1, 5, 8).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (hereafter Shimizu) US 20110286116 A1
Regarding claim 9, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied:
0 < sk/TD < 0.34 (i.e. as given lens data for back focal length and total lens track length, from Tables paragraphs [46-49], and depicted in Figs. 1A, 5A and 8A e.g. value 0.33),
where sk is a distance on an optical axis from an image side lens surface of a lens closest to the image plane to the image plane when an object is in focus at infinity (i.e. as back focal length when focusing at infinity i.e. distance from last lens image surface to IP while focused at infinity, paragraphs [46-49]), and TD is a distance from an object side lens surface of a lens closest to the object to the image plane when an object is in focus at infinity (i.e. as total track length of focusing macro lens from object side of first lens at object to image plane IP, see paragraphs [46-49], as depicted in Figs. 1A, 5A and 8A).
Shimizu thus discloses the claimed invention except for sk/TD < 0.3 (i.e. as given lens data for back focal length and total lens track length, from Tables paragraphs [46-49], and depicted in Figs. 1A, 5A and 8A, gives a value of about 0.33). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust and modify the macro lens size(s) so that the above lengths ratio is satisfied in order for downsizing the focusing macro lens and appropriately compensating for the spherical, comatic, and astigmatism aberrations during focusing from infinite distance to proximity (see e.g. Shimizu paragraphs [23-24), and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Potentially Allowable Subject Matter
Claim 6 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.
Regarding claim 6, Shimizu teaches (see Figs. 1-11) that the following inequality is satisfied:
MF1/MF2 < 0 (i.e. as given the variable distances and positions of L2 and L3 at focusing points at infinity and at magnification 5:1, see lens data tables paragraphs [46-49])
where MF1 is an amount of movement of the second lens unit, and MF2 is an amount of movement of the lens unit closest to the image plane in the one or more lens units included in the intermediate unit, an amount of movement is a difference between a position of a lens unit when an object is in focus at infinity and a position of the lens unit when an object is focused at the imaging magnification of -0.2 (given the variable distances and positions of L2 and L3 at focusing points at infinity and at magnification 5:1, see lens data tables paragraphs [46-49]). However, regarding claim 6, the prior art of Shimizu taken either singly or in combination fails to anticipate or fairly suggest such optical system including the specific arrangement where the lower limit of the range for the ratio MF1/MF2 is satisfied i.e. -0.4 < MF1/MF2, and in combination with all other claimed limitations of base claim 1 and claim 6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Taki US 20100157445 A1 (see Examples 1-3, conditional expression (3) and related descriptions), and Tomioka et al. US 20180246292 A1 (see Examples 1-8, conditional expression (6) and related descriptions), also disclose features if instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIN PICHLER whose telephone number is (571)272-4015. The examiner can normally be reached Monday-Friday 8:30am -5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas K Pham can be reached on (571)272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIN PICHLER/ Primary Examiner, Art Unit 2872
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