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
Claims 1-20 are pending. Claims 10, 12, 13, and 16 are amended. Pursuant to amendments made, rejection(s) under 35 USC § 112(b) is hereby withdrawn for claims 10, 12, 13, 16. However, objections raised for claim 8, and 17 in the previous OA, appears not addressed by applicant. Thus, those objections are maintained herein in this Office Action.
Response to Arguments
Applicant’s arguments, see pages 5-8, filed 6/25/2026, with respect to the rejection(s) of claim(s) 1-20 under 35 USC § 103 and Double Patenting have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made Mercado in view of Shabtay and Janson et al. (US 20080218613 A1).
This Office Action is made a non-Final by the Examiner
Claim Objections
Claims 8, and 17 are objected to because of the following informalities:
Claims 8 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 3. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 17 recites “the the two last” within claims scope. One instance of “the” should be removed.
Appropriate correction is required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Against Patent # 10,288,840
Claims 1, 4, 6, 9-17, 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20, 20+11, 20, 20+10, 20, 20, 20+19, 20+8, 20, 20, 20+8, 20, 20, 20 respectively of U.S. Patent No. 10,288,840 in view of Janson (US 20080218613 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because, the claims of the instant application are obvious variant of the corresponding ones of the US Patent No. 10,288,840. Furthermore, the scopes of the claims on the instant application are also met and encompassed by the corresponding ones of the Patent No. 10,288,840.
The apparent difference between the conflicting claims mainly arises from the style of limitation recitation and relative placement of conflicting elements within the claims’ body.
Patent 10,288,840 falls short of disclosing the limitation of first and second actuators operational to focus first and second camera. However, Janson discloses camera using multiple lenses (title, abstract, figs. 1, 12-16), one wide angle and another telephoto (¶0001, ¶0025, ¶0122). Each lens has separate actuators 5a, 5b, actuated individually to attain focused image (figs. 1, 12-13, ¶0084, 0087, 0091, 0100, 0101; steps 108 & 128, fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to use separate actuators to drive the focusing lens of the first and second cameras of patent 10,288,840 to obtain, first and second actuators are operational to focus first and second camera, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Furthermore, giving capability of controlling actuating focusing the wide angle and telephoto lenses separately allows a user to easily perceive the imaging advantages of various stages of imaging a subject in making a choice of specific imaging goal (Janson, ¶0036). Thus, the combination provides a user having versatility of attaining focused image according to wide variety of ways.
Against Patent # 11,125,975
Claims 1, 3, 4, 8, 11-17, 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 14, 1, 10, 1, 18, 18, 19, 1, 1, 1, 1, 1 respectively of U.S. Patent No. 11,125,975 in view of Janson (US 20080218613 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because, the claims of the instant application are obvious variant of the corresponding ones of the US Patent No. 11,125,975. Furthermore, the scopes of the claims on the instant application are also met and encompassed by the corresponding ones of the Patent No. 11,125,975.
The apparent difference between the conflicting claims mainly arises from the style of limitation recitation and relative placement of conflicting elements within the claims’ body.
Patent 11,125,975 falls short of disclosing the limitation of first and second actuators operational to focus first and second camera. However, Janson discloses camera using multiple lenses (title, abstract, figs. 1, 12-16), one wide angle and another telephoto (¶0001, ¶0025, ¶0122). Each lens has separate actuators 5a, 5b, actuated individually to attain focused image (figs. 1, 12-13, ¶0084, 0087, 0091, 0100, 0101; steps 108 & 128, fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to use separate actuators to drive the focusing lens of the first and second cameras of patent 11,125,975 to obtain, first and second actuators are operational to focus first and second camera, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Furthermore, giving capability of controlling actuating focusing the wide angle and telephoto lenses separately allows a user to easily perceive the imaging advantages of various stages of imaging a subject in making a choice of specific imaging goal (Janson, ¶0036). Thus, the combination provides a user having versatility of attaining focused image according to wide variety of ways.
Against Patent # 12,216,246
Claims 1, 3-6, 8-9, 11-17, 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 1, 1, 2, 1, 5-8, 1, 7, 1, 12, 13 respectively of U.S. Patent No. 12,216,246 in view of Janson (US 20080218613 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because, the claims of the instant application are obvious variant of the corresponding ones of the US Patent No. 12,216,246. Furthermore, the scopes of the claims on the instant application are also met and encompassed by the corresponding ones of the Patent No. 12,216,246.
The apparent difference between the conflicting claims mainly arises from the style of limitation recitation and relative placement of conflicting elements within the claims’ body.
Patent 12,216,246 falls short of disclosing the limitation of first and second actuators operational to focus first and second camera. However, Janson discloses camera using multiple lenses (title, abstract, figs. 1, 12-16), one wide angle and another telephoto (¶0001, ¶0025, ¶0122). Each lens has separate actuators 5a, 5b, actuated individually to attain focused image (figs. 1, 12-13, ¶0084, 0087, 0091, 0100, 0101; steps 108 & 128, fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to use separate actuators to drive the focusing lens of the first and second cameras of patent 12,216,246 to obtain, first and second actuators are operational to focus first and second camera, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Furthermore, giving capability of controlling actuating focusing the wide angle and telephoto lenses separately allows a user to easily perceive the imaging advantages of various stages of imaging a subject in making a choice of specific imaging goal (Janson, ¶0036). Thus, the combination provides a user having versatility of attaining focused image according to wide variety of ways.
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 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 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.
Claims 1-4, 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mercado (US 20150116569 A1) in view of SHABTAY et al. (WO 2014199338 A2, hereinafter SHABTAY) and further in view of Janson (US 20080218613 A1).
Regarding claim 1, Mercado discloses a dual-aperture camera (In some embodiments, a telephoto camera as described herein may be included in a device along with a conventional, wider-field small format camera, which would for example allow the user to select between the different camera formats (telephoto or wide-field) when capturing images with the device. – ¶0005), comprising:
a first camera including 1, a total track length TTL1 and an effective focal length EFL1 (Tables 5A-5C provide example values for various optical and physical parameters of an alternative example embodiment of a camera 400 and lens system 410 as illustrated in FIG. 7 –
¶0122. See table 5A, EFL 7.0 and TTL 5.85, page 15), and a second camera including
wherein a ratio TTL1/EFL-1 is smaller than 1 (TTL/EFL = 0.83, table 5A, page 15),
wherein the first camera has an F number F# ≤ 2.86 (F# is 2.8, table 5A, page 15),
Although likely implicit, an explicit mention of actuators to attain focus on objects is not found within Mercado. Thus, Mercado is not found disclosing expressly the limitation of, a first actuator, wherein the first actuator is operational to focus the first camera, and
a second actuator, wherein the second actuator is operational to focus the second camera.
SHABTAY discloses a dual aperture camera (see title, abstract) wherein wide and tele cameras are able to focus on object individually or in tandem (page 5, lines 4-16; page 16, lines 5-7; page 17, lines 7-10; claims 15, 17), to attain focus on intended object.
However, Janson discloses camera using multiple lenses (title, abstract, figs. 1, 12-16), one wide angle and another telephoto (¶0001, ¶0025, ¶0122). Each lens has separate actuators 5a, 5b, actuated individually to attain focused image (figs. 1, 12-13, ¶0084, 0087, 0091, 0100, 0101; steps 108 & 128, fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to use teaching of Shabtay in attaining a form factor of a hand held camera having separate optical lenses for wide and telephoto imagers and actuating each focusing lenses with separate motors to attain focusing state and/or to enhance depth of focus using teaching of Janson to obtain, a first actuator, wherein the first actuator is operational to focus the first camera, and a second actuator, wherein the second actuator is operational to focus the second camera, because, combining prior art elements ready to be improved according to known method to yield predictable results is obvious. Furthermore, giving capability of controlling actuating focusing the wide angle and telephoto lenses separately allows a user to easily perceive the imaging advantages of various stages of imaging a subject in making a choice of specific imaging goal (Janson, ¶0036). Thus, the combination provides a user having versatility of attaining focused image according to wide variety of ways.
Regarding claim 2, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the lens has an optical axis, and wherein a height H of the dual-aperture camera measured along the optical axis is in the range of 4mm - 12mm (Shabtay: page 8, lines 20-24, specifically external dimensions).
Regarding claim 3, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein EFL is in the range EFL1 = 5-12mm (Mercado: EFL is 7 mm, table 5a).
Regarding claim 4, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein TTL1/EFL1 is smaller than 0.9 (Mercado: TTL1/EFL1 = 5.85/7 = 0.83, table 5a, page 15).
Regarding claim 6, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the second camera has a total track length TTL2 and an effective focal length EFL2, and wherein the TTL2/EFL2> 1 (SHABTAY: wide TTL/EFL = 4.2/3.5 = 12. See page 8, lines 19-25).
Regarding claim 7, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 6, wherein EFL2 is in the range of 2.5-6 mm (SHABTAY: EFL wide = 3.5 mm, ibid).
Regarding claim 8, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein EFL1 is in the range of 5-12 mm (Mercado: EFL1 = 7.0 mm, table 5a, page 15).
Regarding claim 9, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the lens has an optical diameter smaller than 5 mm (Mercado: The lens system 310 focal ratio or f-number f# is defined as the lens system 310 effective focal length f divided by the entrance pupil diameter. – ¶0106. Based on this disclosure, optical diameter or pupil diameter = F#/EFL = 7/2.8 = 2.5, which is less than 5 mm).
Regarding claim 10, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the lens includes a first group of at least three lens elements and second group of at least two lens elements, and wherein a gap between the first group and the second group is equal to or larger than 1/5 of TTL2 (Mercado: Second group understood includes L1-L2, and first group includes L3-L4 and IR, table 5B, page 15. Separation between L2 and L3 is mm which is 2.23 mm, which is larger than 1/5 of TTL1 = 1/5 of 585 = 1.17 mm).
Regarding claim 11, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the lens includes a positive first lens element and a pair of lens elements formed by a second lens element and a third lens element, and wherein the pair of lens elements has a combined negative optical power (Mercado: a first lens element L1 (101, 201, 501, or 601) with positive refractive power having a convex object side surface; [0045] a second lens element L2 (102, 202, 502, or 602) with negative refractive power having either a convex or concave object side surface; [0046] a third lens element L3 (103, 203, 503, or 603) with negative refractive power having a concave object side surface – ¶0044-0047).
Regarding claim 12, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein a first lens element of the lens has a focal length fl smaller than TTLT/2 (Mercado: According to ¶0050, 0.35f < f1 < 0.45f. With f=7.0, we get, 2.45 < f1 < 3.15. Now TTL/2 = 5.85/2 = 2.92. Thus f1, meets the above inequality).
Regarding claim 13, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 12, wherein two last lens elements of the lens are spaced apart from one another by an effective air gap smaller than TTLT/50 (Mercado: TTL/50 = 5.85/50 = 0.117. Now surface 3, between L1 and L2 has air gap separation of 0.05, thus meeting the limitation; Table 5B, page 15).
Regarding claim 14, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein a first, second and third lens element of the lens have respective focal lengths f1, f2 and f3, and wherein the respective focal lengths satisfy the condition 1.2|f3|>|f2|>1.5f1 (Mercado:…lens elements in terms of the focal lengths are f1=2.697 mm, f2=-4.446 mm, f3=-12.466 mm – ¶0103. Thus, 1.2x f3 = 1.2 x 12.466 = 14.6 mm. |f2| = 4.446 mm, and 1.5xf1 = 1.5 x 2.697 = 4.05 mm, thus meeting the limitation).
Regarding claim 15, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein two last lens elements of the lens are made of the different polymer materials having different Abbe numbers (Mercado: Table 5B for L4 and IR having plastic and glass are materials and abbe #s are different 23.3 and 64.1).
Regarding claim 16, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the lens has two last lens elements, and wherein one of the two last lens elements are separated by a gap smaller than TTL/50 (Mercado: TTL/50 = 5.85/50 = 0.117. Now surface 3, between L1 and L2 has air gap separation of 0.05, thus meeting the limitation; Table 5B, page 15).
Regarding claim 17, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the lens has two last lens elements, and wherein a gap between the the two last lens elements has an Abbe number > 50, and the other of the two last lens elements has an Abbe number < 30 (Mercado: True according to table 5B).
Regarding claim 18, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein the dual-camera is operational to perform optical image stabilization (Mercado: The monochromatic and chromatic variations of optical aberrations may be reduced by adjusting the radii of curvature and aspheric coefficients or geometrical shapes of the lens elements and axial separations as illustrated in Table 1C to produce well corrected and balanced minimal residual aberrations. – ¶0094).
Regarding claim 19, Mercado in view of SHABTAY and Janson discloses the dual-aperture of claim 1, included in a mobile electronic device (Mercado: ¶0004).
Regarding claim 20, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 19, wherein the mobile device is a smartphone (Mercado: ¶0004).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mercado in view of SHABTAY and Janson and further in view of Engelhardt et al. (US 20110115965 A1, hereinafter Engelhardt).
Regarding claim 5, Mercado in view of SHABTAY and Janson discloses the dual-aperture camera of claim 1, wherein TTL1 includes a glass window.
SHABTAY is not found disclosing explicitly, wherein the TTL1 includes a glass window.
However, Engelhardt discloses a glass window 2006 over optical sensor 2004 (fig. 20, ¶0082).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to modify the invention of Mercado in view of SHABTAY with the teaching of Engelhardt in modifying the to make TTL1 includes a glass window, because, combining prior art elements ready to me improved according to known method to yield predictable results is obvious. Furthermore, such combination would enhance the versatility of the overall system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHBAZ NAZRUL whose telephone number is (571)270-1467. The examiner can normally be reached M-Th: 9.30 am-3 pm, 6.30 pm-9 pm, F: 9.30 am-1.30 pm, 4 pm-8 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lin Ye can be reached on 571-272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHAHBAZ NAZRUL/Primary Examiner, Art Unit 2638
Prosecution Insights