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 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.
Disposition of the Claims
Claims 1-15 are pending.
Claim Rejections - 35 USC § 112
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.
Claim 7 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the in ventor or a joint in ventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 7 recites the ration of the focal length of a positive power lens to a negative powered lens. The ratio would be a negative value. However, the claimed range consists of positive values. Thus claim 7 is unclear and indefinite.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-6, 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ikegaya (US 20160223800 A1).
Regarding claim 1 and 15, directed to optical system and corresponding method, Ikegaya discloses a variable magnification optical system comprising, in order from an object side, a first lens group having negative refractive power (B1), a first intermediate lens group having positive refractive power (B2 or B2, B3), a second intermediate lens group (B3, or B3, B4) and a rear lens group (B4, B5, B6 or B5, B6);
upon varying a magnification from a wide angle end state to a telephoto end state, the first lens group being moved along the optical axis, a distance between the first lens group and the first intermediate lens group being varied, a distance between the first intermediate lens group and the second intermediate lens group being varied, and a distance between the second intermediate lens group and the rear lens group being varied (¶117);
the rear lens group comprising at least one focusing lens group (B6/BR) which is moved upon carrying out focusing from an infinite distance object to a close distance object; and the following conditional expressions being satisfied:
0.80 <IfF|/ft < 1.402 (~1.1)
where fl denotes a focal length of the first lens group, flRw denotes a composite focal length of all lens groups behind the first lens group in the wide angle end state, fF denotes a focal length of a focusing lens group having a strongest refractive power of the at least one focusing lens group, and ft denotes a focal length of the variable magnification optical system in the telephoto end state.
Ikegaya does not explicitly show 0.50 < (-f1)/f1Rw < 0.994 (the value ~0.999 is slightly outside of the range).
Nevertheless, it has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Moreover, 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). In this case, the disclosed value of (-f1)/f2Rw being only 0.5% from the claimed apparatus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the device of Ikegaya would operate with approximately the same performance as that of the instant claim, e.g. a toward a low aberration, in-focus image, and that only minor variation of Ikegawa would be required during optimized experimentation to achieve the claimed value toward the same effect.
Regarding claim 2, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein the following conditional expression is satisfied: 0.60 < f1N/f1 < 2.00 (~1.94) where flN denotes a focal length of a lens having a strongest negative refractive power in the first lens group.
Regarding claim 3, the modified Ikegaya teaches a variable magnification optical system according to claim 1, but does not explicitly show wherein the following conditional expression is satisfied:38.00 degrees < ow < 85.00 degrees (¶98, ¶133, angle is greater than 30 degrees) where ow denotes a half angle of view of the variable magnification optical system in the wide angleend state.
However, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, particularly when no demonstrated criticality of the claimed range exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941).
In this case, Ikegaya has disclosed the general conditions of the claim as detailed above including a half angle of view that encompasses the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Benefit of experimentation with Ikegaya to improve the half angle of view includes greater viewing area and improved light collection. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that only routine experimentation with Ikegaya would be required to obtain the claimed range toward achieving these benefits. See MPEP 2144.05 I. and II.
Regarding claim 4, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein the following conditional expression is satisfied: 0.10 < BFw/fw < 1.00 (~0.84) where BFw denotes a back focus of the variable magnification optical system in the wide angle end state, and fw denotes a focal length of the variable magnification optical system in the wide angle end state.
Regarding claim 5, the modified Ikegaya teaches a variable magnification optical system according to claim 1, but does not explicitly show wherein the following conditional expression is satisfied: 2.00 <D1Mw/fw < 4.00 (~2) where D1Mw denotes a distance along the optical axis between the first lens group and the first intermediate lens group in the wide angle end state, and fw denotes a focal length of the variable magnification optical system in the wide angle end state.
However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Ikegaya has demonstrated an optical system operating very close to the claimed system, including the general conditions of the claim as detailed above including a half angle of view that encompasses the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Lens distances are exceptionally well known to be results effective for focal length, e.g. from Gauss. Benefit of experimentation with Ikegaya’s system includes improved zoom vs. focal length while minimizing aberration. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that only routine experimentation with Ikegaya would be required to obtain the claimed range toward achieving these benefits. See MPEP 2144.05 I. and II.
Regarding claim 6, the modified Ikegaya teaches a variable magnification optical system according to claim 1, but does not explicitly show wherein the following conditional expression is satisfied: 2.00 < vM1P / vM1N < 3.00 (~2) where vM1P denotes an Abbe's number of a lens having a strongest positive refractive power in the first intermediate lens group, and vM1N denotes an Abbe's number of a lens having a strongest negative refractive power in the first intermediate lens group.
However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Ikegaya has demonstrated an optical system operating very close to the claimed system, including the general conditions of the claim as detailed above including a half angle of view that encompasses the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Lens material dispersion relationships exceptionally well known to be results effective for chromatic aberration (e.g. achromatic doublets and the like which exhibit a similar relationship to that claimed). Benefit of experimentation with Ikegaya’s system includes minimizing chromatic aberration. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that only routine experimentation with Ikegaya would be required to obtain the claimed range toward achieving these benefits. See MPEP 2144.05 I. and II.
Regarding claim 8, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein upon varying the magnification from the wide angle end state to the telephoto end state, the first intermediate lens group is moved along the optical axis (¶117).
Regarding claim 9, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein upon varying the magnification from the wide angle end state to the telephoto end state, the second intermediate lens group is moved along the optical axis (¶117).
Regarding claim 10, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein upon varying the magnification from the wide angle end state to the telephoto end state, at least one focusing lens group is moved along the optical axis (¶117).
Regarding claim 11, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein the first intermediate lens group comprises at least two cemented lenses (see B2 and B3).
Regarding claim 12, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein the first intermediate lens group consists of one lens group (Fig. 10, B2).
Regarding claim 13, the modified Ikegaya teaches a variable magnification optical system according to claim 1, and further discloses wherein the second intermediate lens group consists of one lens group (Fig. 10, B3).
Regarding claim 14, the modified Ikegaya further discloses an optical apparatus comprising a variable magnification optical system according to claim 1 (¶65).
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 2, 3, 5-7, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 11-12 of U.S. Patent No. 11,796,776. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations in application claims 1,3,5-7 and 14-15 substantially correspond to the US Patent claims 2, 1, 3, 4, 5, 11 and 12 respectively.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-7 and 15-17 of U.S. Patent No. 11,143, 851 in view of Ikegaya (US20160223800). Applicant claims 1-7 and 14-15 are substantially equivalent the claims 2-7 and 15-17 of US Patent 11, 143, 851. Patent claims 3-7 and 11-15 fail to include the recitation of ff/ft. However, as discussed above, Ikegaya teaches a variable magnification optical system comprising, in order from an object side, a first lens group (B1) having negative refractive power, a first intermediate lens group (B2) having positive refractive power, a second intermediate lens group (B3) and a rear lens group (B4, B5, B6); upon varying a magnification from a wide-angle end state to a telephoto end state, the first lens group being moved along the optical axis, a distance between the first lens group and the first intermediate lens group being varied, a distance between the first intermediate lens group and the second intermediate lens group being varied, and a distance between the second intermediate lens group and the rear lens group being varied (¶117); the rear lens group comprising at least one focusing lens group (B6/BR) which is moved upon carrying out focusing from an infinite distance object to a close distance object; and the following conditional expressions being satisfied: 0.50 < (-f1)/f1Rw < 0.994 (value is approximately 0.999) 0.80 < |fF|/ft < 1.402 (value is approximately 1.1) where f1 denotes a focal length of the first lens group, flRw denotes a composite focal length of all lens groups behind the first lens group in the wide- angle end state, fF denotes a focal length of a focusing lens group having a strongest refractive power of the at least one focusing lens group, and ft denotes a focal length of the variable magnification optical system in the telephoto end state.
Thus, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to include this feature, since providing a ration to balance the focal power of the focus group to the focal length at the telephoto end is taught by the zoom lens of Ikegaya; and it has been held that where the general conditions of the claim are disclosed in the prior art, discovering an optimum workable in volves only routine skill in the art. In re Aller, 105 USPQ 233; and In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception in volving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an in vention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.") MPEP 2144.05 II A. Ikegaya further teaches application claims 8-13 as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20180348481 A1 discloses a front, intermediate, and rear group zoom lens having analogous lens surface curvature sign structure
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/COLLIN X BEATTY/Primary Examiner, Art Unit 2872
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