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 Amendment
The amendments filed 08/12/2026 has been entered.
The 112(b) rejection of claim 21, of record, has been withdrawn. The 112(b) rejection of claim 36, of record, is maintained. Additionally the entered amendments has created new additional ambiguity in the scope of the claim language.
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.
(new) Claims 21 and 36 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.
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
In the instant application claims 21 and 26 recite a “rear group” having a positive refractive power as a whole including at least one lens unit, but subsequently recite that “the rear unit includes a subunit configured to move for image stabilization”. The claims do not previously introduce a “rear unit”, and is therefor unclear whether “the rear unit” is intended to refer to the previously recited rear group, to one of the lens units included within the rear group, or to some other structure. The specification does not resolve this ambiguity. Rather the specification distinguishes between the rear group as a whole and the individual lens forming the rear group and does not define “rear unit” as synonymous with the “rear group” or otherwise identified a particular lens unit as “the rear unit”. Accordingly, a person of ordinary skill in the art would be required to speculate as to which claimed structure is required to include the image stabilization subunit, and the metes and bounds of the claims cannot be determined with reasonable certainty.
Claims 22-35 are dependent on claim 21 and therefore rejected for at least the same reasons.
(maintained) Claim 36 is 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. The independent claim recited “wherein the rear unit includes a subunit that is moved in a direction having a component of a direction orthogonal to an optical axis”.
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
In the instant application, it is unclear whether the subunit is moved in a direction orthogonal to the optical axis or in a direction having a component orthogonal to the optical axis. A movement vector can have a component orthogonal to an optical axis, but a direction does not clearly “have a component in a direction”.
Claims 21 and 26 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.
Claims 21 and 26 recites the limitation "surface of the lens A". There is insufficient antecedent basis for this limitation in the claim.
Although the claimed subject matter has been searched to the extent reasonably possible, no prior art rejection is made at this time because the scope of the claims is unclear due to the indefiniteness rejection(s) identified above. A further determination for/against patentability would require speculation as to the meaning and scope of at least “the rear unit”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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John Sipes
Examiner
Art Unit 2872
/J.C.S./Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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