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 .
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 30-49 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14, 24 and 29 of US Patent 10,254,634 B2 (hereafter “Patent A” in this section), claims 1, 2, 5, 8, 11, 14, and 15 of US Patent 11,681,206 B2 (hereafter “Patent B” in this section) and claims 7 and 20 of US Patent 12,248,234 B2 (hereafter “Patent C” in this section) Although the claims at issue are not identical, they are not patentably distinct from each other because the claims either anticipate the claimed invention (being drawn to a more specific embodiment than the claimed configuration) or the claimed invention is obvious over the patent claims (for example, by noting the inclusion of indicators on an optical filter in Patent C, the patent claims render obvious the claimed positioning of the indicators on the side frame of an optical element as photographic filter elements typically take the form of a flat glass element with a surrounding frame upon which the identifying marks are provided, and because a person having ordinary skill in the art before the effective filing date of the claimed invention would recognize that positioning a tactile/visual indicator on the flat surface even out of the normally optically active region would be less than optimal due to the undesirability of having a user place their finders upon the flat glass region, potentially leaving fingerprints).
The claims correspond as indicated in the following table:
Instant Claim
Patent A
Patent B
Patent C
30
14
1
7
31
14
1
7
32
14
1
7
33
14
1
7
34
14
5
7
35
14
1
n/a
36
14
5
7
37
14
2
7
38
29
14
20
39
29
14
20
40
29
15
n/a
41
29
15
n/a
42
29
14
20
43
29
14
20
44
29
14
20
45
24
8
n/a
46
24
8
n/a
47
24
8
n/a
48
24
11
n/a
49
24
8
n/a
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.
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.
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.
Claim 39 recites the limitation "the one or more surface features" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 30 does not recite the presence of any surface features. Claim 35 does, and for the purpose of examination with regard to the prior art the claim is being interpreted as though it depended upon claim 35.
Claim Rejections - 35 USC § 102
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.
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.
Claims 30-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanada (US Patent 3,904,279).
With regard to claim 30: Sanada discloses an apparatus which comprises an optical body configured to pass an optical image to a camera (a camera lens) which comprises an indicator configured to covey a fixed property of the element to a user by touch and/or sight (combination of 6a and 6b formed in cover ring 6, which indicates a property of the camera optical element, specifically focal length, see column 2 lines 32-53). The examiner notes that the limitation “touch and/or sight” is being interpreted in light of the specification as requiring that the indicator must be able to be used either by touch or sight, although not necessarily simultaneously. For example, embossed braille dots with a contrasting color allowing it to be “read” visually by someone who knows the dot patterns while also being able to be interpreted by touch.
With regard to claims 31-34: The camera element of Sanada has a front surface (the left end as shown in Figure 1), a rear surface (the camera mounting end 1 on the right of Figure 1) and a plurality of side surfaces (rings 2, 3, 5, and 6 and indicia area 4a) arranged perpendicularly between the front and rear surface. The surface feature of the tactile indicator is formed on one of the side surfaces (specifically cover ring 6) as surface features 6a and 6b on a side edge (the circumference of the lens as shown in Figures 1 and 3) of the outer surface of the optical body.
With regard to claim 35-36: The indicator of Sanada is configured to have surface features which are configured have a shape associated with the camera optical element for indicating a property of the camera optical element (the shape of the digits incorporated in the indicator).
Claim Rejections - 35 USC § 103
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.
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.
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 38-43 and 45-48 are rejected under 35 U.S.C. 103 as being unpatentable over Sanada.
With regard to claims 38 and 40-42: Sanada discloses a method which comprises: feeling or viewing a tactile indicator (combination of 6a and 6b, possibly with 8 as well) associated with a camera optical element (an interchangeable camera lens) and then selecting the camera optical element based on the fixed optical properties as conveyed to a user during the step of viewing or feeling, the indicator being configured to convey an identity of a fixed optical feature by touch vua the number and/or shape of the surface feature. This is disclosed by Sanada making multiple references to a user being able to identifying the lens by “sight or feel” (see e.g. column 2 line 36) and disclosure relating to the problem solved by the invention (see column 1 lines 29-34) and summary of the invention (see column 1 lines 47-50) making it clear to the reader that the intended use of the lenses of Sanada is to allow a photographer to be able to select a desired lens amount a plurality of lenses based on either sight or touch (such when as reaching into a camera bag with a plurality of lenses within).
Even if Sanada is considered to not disclose such a method to a person having ordinary skill in the art at the time of filing, such method would have been obvious to said person having ordinary skill in the art at the time of filing in view of Sanada since the obvious use of a system allowing a user to uniquely identify components is to use that system to allow a user of the system (in the case of Sanada, a photographer) to select and make use of the component (via attachment of the component to a camera) that they desire to use from a selection of various components.
With regard to claim 39 The camera element of Sanada has a front surface (the left end as shown in Figure 1), a rear surface (the camera mounting end 1 on the right of Figure 1) and a plurality of side surfaces (rings 2, 3, 5, and 6 and indicia area 4a) arranged perpendicularly between the front and rear surface. The surface feature of the tactile indicator is formed on one of the side surfaces (specifically cover ring 6) as surface features 6a and 6b on a side edge (the circumference of the lens as shown in Figures 1 and 3) of the outer surface of the optical body.
With regard to claim 43: Sanada teaches that the camera optical elements are interchangeable lenses which incorporate a mount 1 for coupling the lens to a camera body, indicating that after selection of the desired camera optical element the camera optical element is to be coupled to the camera. Even if Sanada is considered to not disclose such a method to a person having ordinary skill in the art at the time of filing, such method would have been obvious to said person having ordinary skill in the art at the time of filing in view of Sanada since camera lenses are used by coupling to a camera body.
With regard to claim 45: Sanada discloses a system of camera optical elements (camera lenses each having a particular focal length, in Figures 1, 4, and 5 100mm, 85mm, and 50mm lenses are shown, and in whole the disclosure indicates towards a system of such lenses as the markings discussed in Sanada are only useful if there exist plural lenses to distinguish between) with each optical element having a fixed optical property (focal length), and wherein each optical element comprises a tactile and visual indicator (combination of 6a, 6b, and 8) configured to indicate the optical property of the respective optical element. See column 1 lines 47-49 and column 2 lines 35-58 describing how the indicia enables the focal length or aperture of the lens (the fixed property) to be determined either by touch or visually.
Even if Sanada is considered to not disclose such a system (that is, if Figures 1, 4, and 5 are not considered to be a disclosure of separate lenses of the same system each with different focal lengths) to a person having ordinary skill in the art at the time of filing, such a system would have been obvious to said person having ordinary skill in the art at the time of filing in view of Sanada since the obvious use of the identification scheme of Sanada is to allow a photographer to select and make use of the component that they desire to use from a selection of various components. Simply put, a photographer has no need to be able to uniquely identify a lens by sight or feel when the photographer only has a single lens available, so it would have been obvious to have a plurality of lenses with the identification scheme.
With regard to claims 47-48: The camera element of Sanada has a front surface (the left end as shown in Figure 1), a rear surface (the camera mounting end 1 on the right of Figure 1) and a plurality of side surfaces (rings 2, 3, 5, and 6 and indicia area 4a) arranged perpendicularly between the front and rear surface forming a frame in which the optical elements (lenses) are retained. The surface feature of the tactile indicator is formed on one of the side surfaces (specifically cover ring 6) as surface features 6a and 6b on a side edge (the circumference of the lens as shown in Figures 1 and 3) of the outer surface of the optical body frame and includes surface features that a configured to identify the fixed optical property of the optical element.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: With regard to claims 37, 44, and 49: The prior art does not teach the use of a tactile identification scheme for a filter element. If there Double Patenting rejection were to be rendered moot or otherwise overcome, the claims would be objected to as being allowable but dependent upon a rejected base claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Leon W Rhodes Jr whose telephone number is (571)270-5774. The examiner can normally be reached M-F 9:00AM - 6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Walter Lindsay can be reached at (571) 272-1674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEON W RHODES, JR/Examiner, Art Unit 2852
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