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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) filed on January 9, 2025 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 12,228,707 (herein US 707). Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to claim 1, US 707 claims
Instant Application Claim 1 Limitation
Corresponding US 707 Claim
an optical system comprising a first lens having positive refractive power and a convex object side surface in a paraxial region
Claim 1
a second lens having negative refractive power, a concave object side surface in a paraxial region and a concave image-side surface in a paraxial region
Claim 1, Claim 3
a third lens having positive refractive power and a convex object side surface in a paraxial region
Claim 1
a fourth lens having refractive power and a concave object-side surface in a paraxial region
Claim 1
a fifth lens having a refractive power and a concave object side surface in a paraxial region
Claim 1, Claim 4
the first to fifth lenses are sequentially disposed from an object side; the optical system has a total of five lenses
Claim 1
satisfying 0.7 < TTL/F < 1.0
Claim 1
satisfying 20o < FOV < 35o
Claim 1
As to claims 2-11, US 707 claims 2-10 recite substantially similar subject matter.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 11,796,773 (herein US 773). Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to claim 1, US 773 claims
Instant Application Claim 1 Limitation
Corresponding US 773 Claim
an optical system comprising a first lens having positive refractive power and a convex object side surface in a paraxial region
Claim 1
a second lens having negative refractive power, a concave object side surface in a paraxial region and a concave image-side surface in a paraxial region
Claim 1, Claim 4
a third lens having positive refractive power and a convex object side surface in a paraxial region
Claim 1, Claim 5
a fourth lens having refractive power and a concave object-side surface in a paraxial region
Claim 1, Claim 6
a fifth lens having a refractive power and a concave object side surface in a paraxial region
Claim 1, Claim 9
the first to fifth lenses are sequentially disposed from an object side; the optical system has a total of five lenses
Claim 1
satisfying 0.7 < TTL/F < 1.0
Claim 1
satisfying 20o < FOV < 35o
Claim 1
As to claims 2-11, US 773 claims 2-14 recite substantially similar subject matter.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,099,362 (herein US 362). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application (claims 1-11) and the claims of US 362 each cover in scope the specific optical systems of embodiments 1 and 2. The scope and content of the claims of US 362 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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,473,895 (herein US 895). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application (claims 1-11) and the claims of US 895 each cover in scope the specific optical system of embodiments 1 and 2. The scope and content of the claims of US 895 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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,310,224 (herein US 224). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application (claims 1-11) and the claims of US 224 each cover in scope the specific optical system of embodiments 1 and 2. The scope and content of the claims of US 224 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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10,191,249 (herein US 249). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application (claims 1-11) and the claims of US 249 each cover in scope the specific optical system of embodiments 1 and 2. The scope and content of the claims of US 249 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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,846,296 (herein US 296). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application (claims 1-11) and the claims of US 296 each cover in scope the specific optical system of embodiments 1 and 2. The scope and content of the claims of US 296 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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9,405,099 (herein US 099). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application (claims 1-11) and the claims of US 099 each cover in scope the specific optical system of embodiments 1 and 2. The scope and content of the claims of US 099 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).
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 1, 6-7 are rejected under 35 U.S.C. 102(a1) as being anticipated by Ueda (US 5,134,522).
As to claim 1, Ueda teaches an optical system (Ueda Fig. 1) comprising
a first lens having positive refractive power (Ueda Fig. 1 - lens of r1, r2) and a convex object side surface in a paraxial region (Ueda Fig. 1 - r1);
a second lens having negative refractive power (Ueda Fig. 1 - lens of r3, r4), a concave object side surface in a paraxial region (Ueda Fig. 1 - r3) and a concave image-side surface in a paraxial region (Ueda Fig. 1 - r4);
a third lens having positive refractive power (Ueda Fig. 1 - lens of r5, r6) and a convex object side surface in a paraxial region (Ueda Fig. 1 - r5);
a fourth lens having refractive power (Ueda Fig. 1 - lens of r7, r8) and a concave object-side surface in a paraxial region (Ueda Fig. 1 - r7);
a fifth lens having a refractive power (Ueda Fig. 1 - lens of r9, r10) and a concave object side surface in a paraxial region (Ueda Fig. 1 - r9);
the first to fifth lenses are sequentially disposed from an object side (Ueda Fig. 1)
the optical system has a total of five lenses (Ueda Fig. 1)
satisfying 0.7 < TTL/F < 1.0 (Ueda Table 1 - F = 42.9; TTL = εd = 37.035);
satisfying 20o < FOV < 35o (Ueda Table 5 - FOV = 29.6o).
As to claim 6, Ueda teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Ueda further teaches the fifth lens has a convex image side surface in a paraxial region (Ueda Fig. 1 - r10).
As to claim 7, Ueda teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Ueda further teaches the fifth lens has negative refractive power (Ueda Table 1 - as calculated f5 < 0).
Claims 1-3, 6, 9 are rejected under 35 U.S.C. 102(a1) as being anticipated by Iwasaki (JP 63-063012; cited by Applicant; text references made to the associated human translation provided with this Action).
As to claim 1, Iwasaki teaches an optical system (Iwasaki Fig. 1) comprising
a first lens having positive refractive power (Iwasaki Fig. 1 - I) and a convex object side surface in a paraxial region (Iwasaki Table 1 - r2);
a second lens having negative refractive power (Iwasaki Fig. 1 - II), a concave object side surface in a paraxial region (Iwasaki Table 1 - r4) and a concave image-side surface in a paraxial region (Iwasaki Table - r5);
a third lens having positive refractive power (Iwasaki Fig. 1 - III) and a convex object side surface in a paraxial region (Iwasaki Table 1 - r6);
a fourth lens having refractive power (Iwasaki Fig. 1 - IV) and a concave object-side surface in a paraxial region (Iwasaki Table 1 - r8);
a fifth lens having a refractive power (Iwasaki Fig. 1 - IV) and a concave object side surface in a paraxial region (Iwasaki Table 1 - r10);
the first to fifth lenses are sequentially disposed from an object side (Iwasaki Fig. 1)
the optical system has a total of five lenses (Iwasaki Fig. 1)
satisfying 0.7 < TTL/F < 1.0 (Iwasaki Table 1 - TL/f = 0.927);
satisfying 20o < FOV < 35o (Iwasaki Fig. 1B - FOV = 2*11.5 = 23o).
As to claim 2, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Iwasaki further teaches satisfying 0.16 < rdys1/F < 2 (Iwasaki Table 1 - rdys1 = 0.235; F = 1.0; Examiner’s note: as discussed by Iwasaki the table values have been normalized for a focal length of 1.0).
As to claim 3, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Iwasaki further teaches the first lens has a concave image side surface in a paraxial region (Iwasaki Table 1 - r3).
As to claim 6, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Iwasaki further teaches the fifth lens has a convex image side surface in a paraxial region (Iwasaki Table 1 - r11).
As to claim 9, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Iwasaki further teaches a distance on an optical axis between an image side surface of the third lens and the object side surface of the fourth lens is a greatest distance on the optical axis between the lenses (Iwasaki Table 1 - d34 = 0.137 > 0.030, 0.068, 0.013).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ueda (cited above).
As to claim 2, Ueda teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Ueda further teaches rdys1 = 6.43, F = 42.9 (Ueda Table 1) for a ratio of 6.43/42.9 ≈ 0.15 which is just outside the range of 0.16 < s1/F < 2. Ueda additionally teaches the overall focal length having a range of values (Ueda col. 3:15-30) to satisfy various design requirements.
It would have been obvious to one of ordinary skill in the art to satisfy 0.16 < s1/F < 2 since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close that one of ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner 227 USPQ 773 (Fed. Cir. 1985); MPEP 2144.05. As discussed by Ueda, adjusting the focal lengths within the requirements of equations 1), 2) and 3) allow for controlling the compactness of the lens system and correcting for aberrations (Ueda col. 3:48-62).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ueda as applied to claim 1 above, and further in view of Otomo (US 2010/0328730).
As to claim 8, Ueda teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Ueda further teaches the fifth lens has an aspheric surface (Ueda col. 2:30-35), but doesn’t specify the first, second, third, fourth lenses having aspheric surfaces.
In the same field of endeavor Otomo teaches a 5-lens optical system with first, second, third, fourth, fifth lenses having aspheric surfaces (Otomo Fig. 1; para. [0049]). It would have been obvious since such aspheric surfaces are well known in the art for the purpose of controlling aberration correction (Otomo para. [0049]).
Claims 10, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda as applied to claim 1 above, and further in view of Tsai et al. (US 2012/0327520 - Tsai).
As to claim 10, Ueda teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the first, second, third, fourth, fifth lenses are plastic.
In the same field of endeavor Tsai teaches 5-lens systems with the lenses made of plastic (Tsai para. [0048]). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide plastic lenses since, as taught by Tsai, plastic allows for reducing cost and easing surface shape manufacturing (Tsai para. [0048]).
As to claim 11, Ueda teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the fifth lens has at least one inflection point formed in a location thereof other than a location corresponding to an optical axis.
In the same field of endeavor Tsai teaches 5-lens systems with a fifth lens having an off-optical axis inflection point (Tsai Fig. 1; para. [0029]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such inflection point since, as taught by Tsai, this allows control of the off-axis field light and reduces aberrations (Tsai para. [0029]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki (cited above).
As to claim 4, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Iwasaki teaches the third lens has a concave image side surface in a paraxial region (Iwasaki Fig. 12 - III; Table 12 - r7), however the combination of convexity/concavities of the claimed invention of claims 1 and 4 is not taught in a single embodiment of Iwasaki. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide the third lens concave on the image side since, as taught by Iwasaki, providing a third positive lens with convex object side and concave/convex image side is well known in the art for the purpose of an imaging objective to provide a compact size and bright imaging and aberration correction (Iwasaki page 4 - page 5; see below)
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Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki as applied to claim 1 above, and further in view of Otomo (cited above).
As to claim 8, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the first, second, third, fourth, fifth lenses having aspheric surfaces.
In the same field of endeavor Otomo teaches a 5-lens optical system with first, second, third, fourth, fifth lenses having aspheric surfaces (Otomo Fig. 1; para. [0049]). It would have been obvious since such aspheric surfaces are well known in the art for the purpose of controlling aberration correction (Otomo para. [0049]).
Claims 10, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki as applied to claim 1 above, and further in view of Tsai (cited above).
As to claim 10, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the first, second, third, fourth, fifth lenses are plastic.
In the same field of endeavor Tsai teaches 5-lens systems with the lenses made of plastic (Tsai para. [0048]). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide plastic lenses since, as taught by Tsai, plastic allows for reducing cost and easing surface shape manufacturing (Tsai para. [0048]).
As to claim 11, Iwasaki teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the fifth lens has at least one inflection point formed in a location thereof other than a location corresponding to an optical axis.
In the same field of endeavor Tsai teaches 5-lens systems with a fifth lens having an off-optical axis inflection point (Tsai Fig. 1; para. [0029]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such inflection point since, as taught by Tsai, this allows control of the off-axis field light and reduces aberrations (Tsai para. [0029]).
Allowable Subject Matter
Claim 5 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, and overcoming the Double Patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 5, although the prior art of Iwasaki, Ueda teaches the optical systems of the claims as detailed above, such references require the fourth lens to be convex in the paraxial region in combination with all the numerical and structural limitations recited together in combination with the totality of particular features/limitations recited therein.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Documents - the following patent documents are cited for showing similar structure and/or numerical conditions to the claimed and disclosed invention:
Sato (JP H05-93857); Kudou (JP S59-44016).
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).
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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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 September 4, 2026
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