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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 7-8, 13-16 and 20 of U.S. Patent No. 12443099. Although the claims at issue are not identical, they are not patentably distinct from each other because they include all of the same limitations of an image sensor, two lens groups and EFLMAX/EFLMIN expression.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 8-12, 14-15 and 17 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Bachar et al. (WO2020141466, of record).
Regarding claim 1, Bachar discloses a camera, comprising:
a lens including a plurality of active optical surfaces, each active optical surface providing an optical power (103’), and an optical path folding element (OPFE); and
an image sensor (118),
wherein the active optical surfaces are divided into two lens groups marked G1 and G2 (at least G1, G2 and/or G3),
wherein active optical surfaces within a lens group do not move relative to each other (at least pages 13-14),
wherein a single active optical surface is located at an object side of the OPFE and has an associated first optical axis (object side surface of the OPFE),
wherein all other active optical surfaces are located at an image side of the OPFE and have an associated second optical axis (at least Fig. 2a),
wherein the lens has an effective focal length (EFL) <50 mm (see at least page 19 third paragraph),
wherein the EFL can be varied continuously between a minimal EFL (EFLMIN) and a maximal EFL (EFLMAX) by independent movement of G1 and G2 along the second optical lens axis, and wherein EFLMAX/EFLMIN is equal to or larger than 1.5 (at least page 19 where 30/15 = 2).
Regarding claim 2, Bachar discloses wherein EFLMAX/EFLMIN is equal to or smaller than 2 (Page 20).
Regarding claim 8, Bachar discloses wherein the camera has a f number f/#Min. at EFLMIN and a f number f/#MAX at EFLMAX, and wherein a ratio f/#MAX/f/#M<EFLMX/EFLMIN (Page 19).
Regarding claim 9, Bachar discloses wherein the camera has a f number f/#M' at EFLMIN is and a f number f/#MAx at EFLMAx, wherein f/#MI< 3 and f/#MAX<5 (Page 19).
Regarding claim 10, Bachar discloses wherein the lens is a cut lens (Page 4).
Regarding claim 11, Bachar discloses wherein a distance between the OPFE and a first active optical surface located at the image side of the OPFE is marked dM-L, and wherein dM-L doesnot change for the continuous variation of EFL (Page 13 where L1 does not change position).
Regarding claims 12 and 13, Bachar discloses wherein the OPFE is a prism (Page 10 prism or mirror).
Regarding claim 14, Bachar discloses wherein 10mm<EFLMIN<30mm (Page 19).
Regarding claim 15, Bachar discloses wherein the image sensor has a sensor diagonal (SD) and wherein SD is in the range 3mm < SD <10mm (at least Page 13 Table 1).
Regarding claim 17, Bachar discloses wherein the camera is included in a smartphone (Page 1).
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, 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 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.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bachar in view of Dhanda et al. (USPAT 11202007, of record).
Regarding claim 4, Bachar does not disclose wherein the image sensor is operative to be moved with respect to both G1 and G2 for optical image stabilization (OIS) and for focusing.
However, Dhanda teaches an optical imaging system wherein the image sensor is configured to move for focusing and image stabilization (Col. 11 lines 25-43).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Bachar and Dhanda such that the imaging sensor were movable motivated by improving image quality.
Regarding claim 5, modified Bachar discloses wherein the movement of the image sensor for OIS is performed in two directions, and wherein the two directions are perpendicular to a normal on the image sensor and perpendicular to each other (Col. 11 lines 25-43 of Dhanda).
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive.
Regarding applicant’s comments with respect to the double patenting rejection, the applicant states they have filed an eTerminal Disclaimer. The examiner does not see a filing or the office’s response to such a filing in the file wrapper at this time (2/23/2026). Therefore, the double patenting rejection remains in this final office action. It may be that filing has not yet been processed by the office. Please review and ensure that the eTerminal Disclaimer was properly filed and contact the Patent Electronic Business Center at 866-217-9197 if you have any issues with the process (https://www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer).
With respect to applicant’s remarks on page 6, the applicant claims Bachar does not include an active optical surface located at an object side of the OPFE. The office respectfully disagrees. Bachar states on page 10 that the OPFE may be made of glass or plastic, may be a mirror, have a varying refractive index or an OIS mechanism. In the case that the refractive index is varying, different from air or there is an OIS mechanism, the object side surface of the OPFE is an “active” surface. The surface is considered active when it makes any change to the optical path of the light passing through the system.
Further, applicant’s use of “at an object side” implies that the location of an active element would include the object side surface of the OPFE and any optically active element still closer to the object. Applicant may wish to amend the claim such that it is clear that there is a separate optically active element located on the object side of the OPFE. Such an amendment would overcome the rejection of record but require additional search and consideration to determine allowability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
PGPUBs 20160202455, 20180059365, 20100214664 and 20110157430 – Similar optical systems with additional optical elements located on the object side of the OPFE.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVIS S FISSEL whose telephone number is (313)446-6573. The examiner can normally be reached 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVIS S FISSEL/Primary Examiner, Art Unit 2872