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 1-2, 4-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,405,454 (herein, “’454”). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1 of instant application
Claim 1 of instant application
Claim 1 of ‘454
A zoom lens comprising, in order from an object side to an image side:
a first lens unit having negative refractive power; and
a plurality of subsequent lens units,
wherein the zoom lens further comprises an aperture stop,
wherein for zooming, the first lens unit is fixed, and the plurality of subsequent lens units move to change a distance between adjacent lens units
A zoom lens comprising, in order from an object side to an image side:
a first lens unit having negative refractive power; and
a plurality of subsequent lens units, wherein the zoom lens further comprises an aperture stop,
wherein for zooming, the first lens unit is fixed, and the plurality of subsequent lens units move to change a distance between adjacent lens units, and
wherein for focusing, the first lens unit is fixed, and a whole or part of one of the plurality of subsequent lens units moves, and
wherein the following inequalities is satisfied:
5.5 < Tsw/fw < 9.5
where Tsw is a distance on an optical axis from a lens surface closest to an object of the zoom lens to the aperture stop at a wide-angle end, and fw is a focal length of the zoom lens at the wide-angle end
wherein the following inequalities are satisfied:
5.5≤Tsw/fw≤9.5
2.5≤Skw/fw≤7.0
where Tsw is a distance on an optical axis from a lens surface closest to an object of the zoom lens to the aperture stop at a wide-angle end, fw is a focal length of the zoom lens at the wide-angle end, and Skw is a back focus of the zoom lens at the wide-angle end.
It should be noted that the table above distinguishes the equivalent limitations between the instant application and that of ‘454. In conclusion, claim 1 of the instant application is anticipated by claim 1 of ‘454 in that claim 1 of ‘454 contains all the limitations of claim 1 of the instant application. The instant application claim is broader or equivalent in every aspect than claim 1 of ‘454 and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patently distinct from each other because claim 1 is generic to all that is recited in claim 1 of ‘454. That is, claim 1 of instant application is anticipated by claim 1 of ‘454.
Claim 2 of the instant application corresponds to claim 2 of ‘454 Patent.
Claim 4 of the instant application corresponds to claim 4 of ‘454 Patent.
Claim 5 of the instant application corresponds to claim 5 of ‘454 Patent.
Claim 6 of the instant application corresponds to claim 6 of ‘454 Patent.
Claim 7 of the instant application corresponds to claim 7 of ‘454 Patent.
Claim 8 of the instant application corresponds to claim 8 of ‘454 Patent.
Claim 9 of the instant application corresponds to claim 9 of ‘454 Patent.
Claim 10 of the instant application corresponds to claim 10 of ‘454 Patent.
Claim 11 of the instant application corresponds to claim 11 of ‘454 Patent.
Claim 12 of the instant application corresponds to claim 12 of ‘454 Patent.
Regarding claim 13 of instant application
Claim 13 of instant application
Claim 13 of ‘454
An image pickup apparatus comprising:
a zoom lens; and
an image sensor configured to image an object through the zoom lens,
wherein the zoom lens includes, in order from an object side to an image side:
a first lens unit having negative refractive power; and
a plurality of subsequent lens units,
wherein the zoom lens further comprises an aperture stop,
wherein for zooming, the first lens unit is fixed, and the plurality of subsequent lens units move to change a distance between adjacent lens units
An image pickup apparatus comprising:
a zoom lens; and
an image sensor configured to image an object through the zoom lens,
wherein the zoom lens includes, in order from an object side to an image side:
a first lens unit having negative refractive power; and
a plurality of subsequent lens units, wherein the zoom lens further comprises an aperture stop,
wherein for zooming, the first lens unit is fixed, and the plurality of subsequent lens units move to change a distance between adjacent lens units, and
wherein for focusing, the first lens unit is fixed, and a whole or part of one of the plurality of subsequent lens units moves, and wherein the following inequalities is satisfied:
5.5 < Tsw/fw < 9.5
where Tsw is a distance on an optical axis from a lens surface closest to an object of the zoom lens to the aperture stop at a wide-angle end, and fw is a focal length of the zoom lens at the wide-angle end
wherein the following inequalities are satisfied:
5.5≤Tsw/fw≤9.5
2.5≤Skw/fw≤7.0
where Tsw is a distance on an optical axis from a lens surface closest to an object of the zoom lens to the aperture stop at a wide-angle end, fw is a focal length of the zoom lens at the wide-angle end, and Skw is a back focus of the zoom lens at the wide-angle end.
It should be noted that the table above distinguishes the equivalent limitations between the instant application and that of ‘454. In conclusion, claim 13 of the instant application is anticipated by claim 13 of ‘454 in that claim 13 of ‘454 contains all the limitations of claim 13 of the instant application. The instant application claim is broader or equivalent in every aspect than claim 13 of ‘454 and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patently distinct from each other because claim 13 is generic to all that is recited in claim 13 of ‘454. That is, claim 13 of instant application is anticipated by claim 13 of ‘454.
Conclusion
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/NIGAR CHOWDHURY/Primary Examiner, Art Unit 2484
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