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 .
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.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/256738, filed on September 6, 2016.
Information Disclosure Statement
The information disclosure statement(s) filed on November 19, 2024 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Specification
The abstract of the disclosure is objected to because too many words, too many paragraphs. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 recites “an optical apparatus comprising the zoom optical system according to claim 9” however the zoom optical system of claim 9 is already an optical apparatus. Claim 16 fails to further limit claim 9.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-11, 13-14, 16-17 are rejected under 35 U.S.C. 102(a1) as being anticipated by Iwama (US 2009/0040622; cited by Applicant).
As to claims 9, 17, Iwama teaches a zoom optical system/method comprising, in order from an object (Iwama Fig. 1)
a first lens group having positive refractive power (Iwama Fig. 1 - L1);
a second lens group having negative refractive power (Iwama Fig. 1 - L2);
a third lens group having positive refractive power (Iwama Fig. 1 - L3);
wherein the first lens group moves toward the object (Iwama Fig. 1 - movement arrow) and air distances between the first to third lens groups are varied upon zooming from a wide angle end state to a telephoto end state (Iwama Fig. 1 - movement arrows);
the third lens group comprises a positive lens disposed closest to the object (Iwama Fig. 1 - lens of R9, R10);
and satisfying:
4.40 < f1/(-f2) < 8.00 (Iwama para. [0180]; Table 1 - as calculated f1 ≈ 43.6; f2 ≈ -9.6);
2.00 < ft/fw < 10.00 (Iwama para. [0180] - fw = 6.58; ft = 31.89);
3.60 < f1/f3 < 8.00 (Iwama para. [0180], Table 1 - as calculated f1 ≈ 43.6; f3 ≈ 10.6);
0.73 < (-f2)/f3 < 2.00 (Iwama Table 1 - (-f2)/f3 = 0.91).
As to claim 10, Iwama teaches all the limitations as detailed above with respect to claim 9, and Iwama further teaches satisfying 0.77 < fw/f3 < 1.05 (Iwama para. [0147] - teaching 1.0 < f3/fw < 2.5 which is 0.4 < fw/f3 < 1.0 which is an overlapping range of sufficient specificity (MPEP 2131.03)).
As to claim 11, Iwama teaches all the limitations as detailed above with respect to claim 9, and Iwama further teaches satisfying 0.14 < fw/f1 < 0.26 (Iwama para. [0180] - fw = 6.58; as calculated f1 ≈ 43.6).
As to claim 13, Iwama teaches all the limitations as detailed above with respect to claim 9, and Iwama further teaches a lens group disposed closest to an image has positive refractive power (Iwama Fig. 1 - L4).
As to claim 14, Iwama teaches all the limitations as detailed above with respect to claim 9, and Iwama further teaches the first lens group comprises a cemented lens consisting of a negative lens and a positive lens in order from the object (Iwama Fig. 1 - lenses of R1, R2, R3).
As to claim 16, Iwama teaches all the limitations as detailed above with respect to claim 9, and Iwama further teaches an optical apparatus (Iwama Fig. 1; Fig. 9)
Claims 9, 12-14, 16-17 are rejected under 35 U.S.C. 102(a1) as being anticipated by Nanba (US 2009/0231726; cited by Applicant).
As to claims 9, 17, Nanba teaches a zoom optical system/method comprising, in order from an object (Nanba Fig. 13A)
a first lens group having positive refractive power (Nanba Fig. 13A - L1);
a second lens group having negative refractive power (Nanba Fig. 13A - L2);
a third lens group having positive refractive power (Nanba Fig. 13A - L3);
wherein the first lens group moves toward the object (Nanba Fig. 13A-C - movement arrow) and air distances between the first to third lens groups are varied upon zooming from a wide angle end state to a telephoto end state (Iwama Fig. 13A-C - movement arrows);
the third lens group comprises a positive lens disposed closest to the object (Nanba Fig. 13A; para. [0134] - lens of r13, r14);
and satisfying:
4.40 < f1/(-f2) < 8.00 (Nanba para. [0134] - f1 = 63.81; f2 = -8.77);
2.00 < ft/fw < 10.00 (Nanba para. [0134] - fw = 6.36; ft = 29.87);
3.60 < f1/f3 < 8.00 (Nanba para. [0134] - f1 = 63.81; f3 = 12.98);
0.73 < (-f2)/f3 < 2.00 (Nanba para. [0061], [0071] - teaching 1.0 < |f2|/fw < 1.7; 1.5 < f3/fw < 2.7, and corresponds to 0.37 < |f2|/f3 < 1.13 which is an overlapping range of sufficient specificity (MPEP 2131.03)).
As to claim 12, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches the second lens group comprises, in order from an object, a negative lens, a negative lens, a positive lens, a negative lens (Nanba Fig. 13A; para. [0134] - lenses of r4-r11).
As to claim 13, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches a lens group closest to an image has positive refractive power (Nanba Fig. 13A - L4).
As to claim 14, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches the first lens group comprises a cemented lens consisting of a negative lens and a positive lens in order from the object (Nanba Fig. 13A - L1; para. [134] - lenses of r1-r3).
As to claim 16, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches an optical apparatus (Nanba Fig. 13A; Fig. 17).
Claims 9, 12-17 are rejected under 35 U.S.C. 102(a1) as being anticipated by Take (US 2009/0147376; cited by Applicant).
As to claims 9, 17, Take teaches a zoom optical system/method comprising, in order from an object (Take Fig. 2)
a first lens group having positive refractive power (Take Fig. 2 - G1);
a second lens group having negative refractive power (Take Fig. 2 - G2);
a third lens group having positive refractive power (Take Fig. 2 - G3);
wherein the first lens group moves toward the object (Take Fig. 1 - G1) and air distances between the first to third lens groups are varied upon zooming from a wide angle end state to a telephoto end state (Take Fig. 1 - G2, G3);
the third lens group comprises a positive lens disposed closest to the object (Take Fig. 2 - L31);
and satisfying:
4.40 < f1/(-f2) < 8.00 (Take Table 3 - f1/(-f2) = 4.7904);
2.00 < ft/fw < 10.00 (Take Table 2 - fw = 30.0001; ft = 107.0904);
3.60 < f1/f3 < 8.00 (Take Table 3 - f1/f3 = 4.1004);
0.73 < (-f2)/f3 < 2.00 (Take Table 3 - f2 = -12.6602; f3 = 14.7906).
As to claim 12, Take teaches all the limitations as detailed above with respect to claim 9, and Take further teaches the second lens group comprises, in order from an object, a negative lens, a negative lens, a positive lens, a negative lens (Take Fig. 2 - L21, L22, L23, L24).
As to claim 13, Take teaches all the limitations as detailed above with respect to claim 9, and Take further teaches a lens group disposed closest to an image has positive refractive power (Take Fig. 2 - G3).
As to claim 14, Take teaches all the limitations as detailed above with respect to claim 9, and Take further teaches the first lens group comprises a cemented lens consisting of a negative lens and a positive lens in order from the object (Take Fig. 2 - L11, L12).
As to claim 15, Take teaches all the limitations as detailed above with respect to claim 9, and Take further teaches and Take further teaches a lens disposed closest to an image is a meniscus lens having a convex lens surface facing the image (Take Fig. 2 - L37).
As to claim 16, Take teaches all the limitations as detailed above with respect to claim 9, and Take further teaches an optical apparatus (Take Fig. 2; Fig. 15).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Iwama (cited above).
As to claim 10, Iwama teaches all the limitations as detailed above with respect to claim 9, and Iwama further teaches satisfying 0.77 < fw/f3 < 1.05 (Iwama para. [0147] - teaching 1.0 < f3/fw < 2.5 which is 0.4 < fw/f3 < 1.0 which is an overlapping range and thus prima facie obvious (MPEP 2144.05)). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to satisfy 0.77 < fw/f3 < 1.05, since, as taught by Iwama, satisfying such features allows for maintaining the required zooming aberration variation and spherical power correction (Iwama para. [0154], [0155]).
Claims 9, 12-14, 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nanba (cited above).
As to claims 9, 17, Nanba teaches a zoom optical system/method comprising, in order from an object (Nanba Fig. 13A)
a first lens group having positive refractive power (Nanba Fig. 13A - L1);
a second lens group having negative refractive power (Nanba Fig. 13A - L2);
a third lens group having positive refractive power (Nanba Fig. 13A - L3);
wherein the first lens group moves toward the object (Nanba Fig. 13A-C - movement arrow) and air distances between the first to third lens groups are varied upon zooming from a wide angle end state to a telephoto end state (Iwama Fig. 13A-C - movement arrows);
the third lens group comprises a positive lens disposed closest to the object (Nanba Fig. 13A; para. [0134] - lens of r13, r14);
and satisfying:
4.40 < f1/(-f2) < 8.00 (Nanba para. [0134] - f1 = 63.81; f2 = -8.77);
2.00 < ft/fw < 10.00 (Nanba para. [0134] - fw = 6.36; ft = 29.87);
3.60 < f1/f3 < 8.00 (Nanba para. [0134] - f1 = 63.81; f3 = 12.98);
0.73 < (-f2)/f3 < 2.00 (Nanba para. [0061], [0071] - teaching 1.0 < |f2|/fw < 1.7; 1.5 < f3/fw < 2.7, and corresponds to 0.37 < |f2|/f3 < 1.13 which is an overlapping range and thus prima facie obvious (MPEP 2144.05)). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to satisfy 0.73 < (-f2)/f3 < 2.00 since, as taught by Nanba, such values allow for controlling image taking angle (Nanba para. [0064]) and the total length (Nanba para. [0072]).
As to claim 12, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches the second lens group comprises, in order from an object, a negative lens, a negative lens, a positive lens, a negative lens (Nanba Fig. 13A; para. [0134] - lenses of r4-r11).
As to claim 13, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches a lens group closest to an image has positive refractive power (Nanba Fig. 13A - L4).
As to claim 14, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches the first lens group comprises a cemented lens consisting of a negative lens and a positive lens in order from the object (Nanba Fig. 13A - L1; para. [134] - lenses of r1-r3).
As to claim 16, Nanba teaches all the limitations as detailed above with respect to claim 9, and Nanba further teaches an optical apparatus (Nanba Fig. 13A; Fig. 17).
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 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-29 of U.S. Patent No. 10,466,454 (herein US 454). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent application (claims 9-17) and the claims of US 454 each cover in scope the specific zoom lenses of embodiments 2-6.
The scope and content of the claims of US 454 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Claims 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,428,911 (herein US 911). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent application (claims 9-17) and the claims of US 911 each cover in scope the specific zoom lenses of embodiments 2, 6, 7.
The scope and content of the claims of US 911 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Claims 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,174,355 (herein US 355). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent application (claims 9-17) and the claims of US 355 each cover in scope the specific zoom lenses of embodiments 1, 2.
The scope and content of the claims of US 355 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 July 10, 2026
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