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 Pre-amendments
The present office action is made in response to the Pre-amendments filed on 01/02/2025 and 01/03/2025.
A) In the Pre-amendment of 01/02/2025, applicant has made changes to claims. There was not any change being made to the abstract, the drawings and the specification.
Regarding to the claims, applicant has canceled claim 1-14 and added a new set of claims, i.e., claims 15-25, into the application.
B) In the pre-amendment of 01/03/2025, applicant has made changes to the specification. There was not any change being made to the abstract, the drawings and the claims.
Regarding the specification, applicant has made changes to paragraphs [0003], [0086] and [0093].
Both Pre-amendments filed on 01/02/2025 and 01/03/2025 have been entered. As a result of the changes to the claims, the application now contains claims 15-25.
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 08/05/2026, applicant’s made an election of Invention I in the reply filed on 09/30/2026. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
As a result of applicant’s election, claims 15-18 and 20-25 are examined in the present office action and claim 19 has been withdrawn from further examination as being directed to a non-elected Invention.
Applicant should note that the non-elected claim 19 will be rejoined if the linking claim 15 is later fund as an allowable claim.
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. 15/781,136, filed on 10/31/2028.
Drawings
7. The drawings contain eighteen sheets of figures 1, 2A-2C, 3, 4A-4C, 5, 6A-6C, 7, 8A-8C and 9-10 were received on 01/02/2025. These drawings are approved by the examiner.
Specification
8. The lengthy specification which was amended by the pre-amendment of 01/03/2025 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.
9. The disclosure is objected to because of the following informalities:
a) Paragraph [0009]: on each of lines 4, 11, 18 and 25, the term thereof “show” should be changed to --shows or showing--. Applicant should note that applicant has used the term “each” to refer to each of figures. See also the use of similar term on each of lines 1, 8, 15, and 22 of the paragraph;
b) Paragraph [0029]: the inequality thereof “29.0 < ωw < 65.0” is incorrect because it does not have a unit of measurement for each lower and upper values governing the angle ωw. The mentioned inequality should be changed to --29.00 < ωw < 65.00--; It is noted that in case applicant changes/adds the unit of measurement for each value, applicant should need to change/add a unit of measurement for all angles provided in the specification, for example, in paragraphs [0031], [0032], [0035], [0056], [0057], …;
c) Paragraph [0086]: on line 2, “biconcave positive lens” should be changed to --biconvex positive lens --, see Table 1, the lens surfaces numbered as (11 and 12).
There are still some grammatic and idiomatic errors in the specification. Applicant should carefully proofread the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112
10. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
11. Claims 15-18 and 20-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
a) Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a1) the feature thereof “upon zooming … end state, distances between each of lens groups change” (lines 8-9)make the claim indefinite. What does applicant mean by “distances between each of lens groups change”? Should “distances between each of lens groups change” be changed to -- distances between two adjacent lens groups change-- or other technical description to make clear the feature claimed?
a2) The claim is rejected by the features thereof “TLt denotes a total length of the zoom lens … telephoto end state” (lines 18-19).
The mentioned features make the claim indefinite because it is unclear about the so-called “total length of the zoom lens” recited in the claim because applicant has failed to provide a definition/explanation for the terms “total length”. The applicant is respectfully invited to review the claim on lines 1-7 which recites a zoom lens having five lens groups. Thus, does applicant intend to mean that the total length of the zoom lens is/denotes “a distance from an object-side lens surface of the first lens group to an image-side lens surface of the fifth lens group”?
For the purpose of examination, the “total length of the zoom lens”, as understood, is directed to “a distance from an object-side of the first lens group to an image surface of the zoom lens”
b) Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the inequality thereof “29.0 < ωw < 65.0” is incorrect for the reason that it does not have a unit of measurement for each lower and upper values governing the angle ωw. The examiner is of opinion that the mentioned inequality should be changed to --29.00 < ωw < 65.00--.
c) Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element b) above.
d) Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons as set forth in element a) above.
e) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Double Patenting
12. 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.
13. Claims 15-18 and 20-24, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-10 of U.S. Patent No. 11,099,366, hereafter, Pat ‘366.
Claims 1-3 and 5-10 of the Pat ‘366 discloses all features of present claims 15-18 and 20-24 of the present application.
In particular, the features recited in present claims 15 and 16 are read from features recited in claims 1 and 5 of Pat ‘366; the features recited in present claim 17 are read from features recited in claim 2 of the Pat ‘366; the features recited in present claim 18 are read from features recited in claim 3 of the Pat ‘366; the features recited in present claim 20-24 are read from features recited in claims 6-10, respectively, of the Pat ‘366.
Claim Rejections - 35 USC § 102
14 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.
15. 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.
16. Claims 15, 18, 20-21 and 24-25, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yanai et al (US Publication No. 2013/0169846, submitted by applicant).
Yanai et al discloses a zoom lens for use in an optical apparatus, see paragraphs [0337]-[0348] and figs. 15-18.
a) Regarding present claims 15, 24 and 25, the zoom lens of the Example 5 as described in paragraphs [0290]-[00297] and [0323] and Table and shown in figs. 5 comprises the following features:
a1) five lens groups and an aperture stop arranged in order from an object to an image side of the zoom lens as follow: a first positive lens group (G1), a second negative lens group (G2), an aperture stop (S), a third positive lens group(G3), a fourth negative lens group (G4) and a fifth positive lens group (G5);
a2) during a zooming process from a wide-angle end state to a telephoto end state, distances between two adjacent lens groups change, and
a3) because the ratio of β3(t)/ β3(w) is 2.74 and the ratio of β2(t)/ β2(w)/ β3(t)/ β3(w) is 0.62, see Table 1, the total length, TLt, of the zoom lens is 57.38 mm and the focal length, ft, of the zoom lens at its telephoto end is 24.29 mm then the following conditional expressions are satisfied:
* β2(t)/ β2(w) is around 1.70 which is inside the range of (1.20; 2.50) as claimed; and
* TLt / ft is around 2.36 which is inside the range of (1.50; 5.00) as claimed.
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).
Regarding to the method limitations as recited in claim 25 the method limitations are implicitly met by the structural limitations.
b) Regarding the present claim 18, in the zooming process from a wide-angle end state to a telephoto end state, the fifth lens moves towards the image side of the zoom lens, see paragraph [0323], table having “Zoom data”.
c) Regarding present claims 20-21, the zoom lens of the Example 5 has a half angle of view of the zoom lens as a whole in the wide-angle end state of 38.180 which is inside the range of (28.00; 65.00) as claimed in present claim 20, and a half angle of view of the zoom lens as a whole in the telephoto end state of 8.810, which is inside the range of (5.00; 25.00) as claimed in present claim 20, paragraph [0323], table having “Zoom data”.
Claim Rejections - 35 USC § 103
17. 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.
18. Claims 22-23, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Yanai et al in view of Hagiwara (US Publication No. 2009/0290232).
It is noted that in the zoom lens of the Example 5, Yani et l does not disclose that a part of the fourth lens group is moved for focusing as recited in present claim 22 and a part of the third lens group is moved for compensating image shake as recited in the present claim 23.
However, a zoom lens having five lens group with the same power distribution, i.e., positive, negative, positive, negative and positive refractive power, wherein a part of the fourth lens group is moved for focusing as recited in present claim 22 and a part of the third lens group is moved for compensating image shake is known to one skilled in the art as can be seen in the zoom lens provided by Hagiwara. In particular, Hagiwara discloses a zoom lens having five lens group with the same power distribution, i.e., positive, negative, positive, negative and positive refractive power, wherein a part of the fourth lens group is moved for focusing and a part of the third lens group is moved for compensating image shake, see First Numerical Example 1, paragraphs [0094] and [0064]-[0065].
Thus, it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the zoom lens provided by Yanai et al by moving a part of the fourth lens group for focusing and a part of the third lens group for compensating image shake as suggested by Hagiwara for the purpose of focusing and compensating image blurs.
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20. The US Publication Nos. 2013/0250435 and 2014/0347545are cited as of interest in that each discloses a zoom lens having five lens with similar power distribution. The movement of the third lens group for compensating image blurs and movement of the fourth lens group for focusing are disclosed in the Publication No. 2014/0347,545. However, each of the mentioned Publications does not disclose all features recited in the present independent claim 15.
21. 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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