fix AND
`”W
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`13/000,500
`
`12/21/2010
`
`Tomoko Iiyama
`
`PAVC3—47541
`
`3908
`
`05’1““ —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`LE1, HE
`SUITE 1200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2872
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/17/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`jcholley @pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/000,500 IIYAMA ET AL.
`
`
`AIA (First Inventorto File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JIE LEI first“ 2872
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136(a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 03/08/2016.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`a)IXl This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)|XI Claim(s) 6 8 35 and 36 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`
`7)IZ| Claim(s) 6 8 35 and 36 is/are rejected.
`8)I:I Claim(s)_ is/are objected to.
`
`9)|:l Claim(s
`are subject to restriction and/or election requirement.
`()
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`://www.usoto. ov/ atents/init events"
`h/index.‘s orsend an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`htt
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)|:l All
`1.|:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D InformatIon DIscIosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160503
`
`

`

`Application/Control Number: 13/000,500
`
`Page 2
`
`Art Unit: 2872
`
`DETAILED ACTION
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions. This office action is in response to the amendment filed 03/08/2016.
`
`Applicant's arguments have been considered but they are not persuasive.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`3.
`
`Claims 6, 8, 35 and 36 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Hagimori et al (US 7042650) in the view of ltoh (US 20050036211).
`
`Regarding Claim 6, Hagimori teaches a zoom lens system (abstract; fig. 3), in
`
`order from an object side to an image side, comprising a first lens unit having negative
`
`optical power, a second lens unit having positive optical power; a third lens unit having
`
`positive optical power, and a fourth lens unit having positive optical power (fig. 3, Gr1,
`
`Gr2, Gr3, Gr4; col. 6, line 5-8, this zoom lens system is a four-unit zoom lens system of
`
`negative, positive, positive, positive configuration comprising from the object side),
`
`wherein
`
`

`

`Application/Control Number: 13/000,500
`
`Page 3
`
`Art Unit: 2872
`
`in zooming, the intervals between the respective lens units vary; wherein, in
`
`zooming, all the first lens unit, the second lens unit, the third lens unit, and the fourth
`
`lens unit move in a direction along an optical axis such that the intervals between the
`
`respective lens units vary (col. 6, line 17-27, In zooming from the shortest focal length
`
`condition to the longest focal length condition, the first lens unit Gr1 moves so as to
`
`draw a locus of a U-turn convex to the image side, the second lens unit Gr2 and the
`
`third lens unit Gr3 monotonously move toward the object side while slightly varying the
`
`distance therebetween, and the fourth lens unit Gr4 moves so as to draw a locus of a U-
`
`turn convex to the object side);
`
`and wherein the following condition (ll-1) is satisfied:
`
`5.2 < lfG2/fwl < 20.0 ..... (ll-1)
`
`(here, fT/fW > 2.0)
`
`(col. 14, line 1-20, example 3, the focal length of the entire system at a wide-angle limit,
`
`fw= 6.0 and telephoto limit fT =17.3, fT/fW = 2.88, satisfying the condition of fT/fW > 2.0;
`
`the optical power of second lens group Gr2 can be estimated (under thin lens
`
`approximation) from the values of r3, r4, r6, r7, n2, ns and d3, d4, d5, d6, as fag = 26.04, if fW
`
`= 6.0, then lfG2/fwl =4.34; further in col. 21, line 10-15, given 2.3 S fT/fW S 5.5, that is,
`
`0.182 S fW/fT S 0.435; for this example, if consider fT =17.3, then fw is in a range of 3.15
`
`S fW S 7.52;
`
`if take fw = 4, then lfG2/fwl =6.51; and, fT/fW = 4.33, satisfying the condition of
`
`5.2 < IfG2/fwl < 20.0 and fT/fW > 2.0);
`
`

`

`Application/Control Number: 13/000,500
`
`Page 4
`
`Art Unit: 2872
`
`(if considering the lens thickness, for example 3, the optical power of second lens group
`
`Gr2 can be estimated as fez = 15.05, which is very close to applicant’s estimated value
`
`of fez = 15.17; same for example 4, the optical power of second lens group Gr2 can be
`
`estimated as fez = 21.8, as 2.3 S fT/fW S 5.5 (col. 21, line 10-15), for example 4, if
`
`consider fT =17.3, then fw is in a range of 3.15 S fW S 7.52; take the low limit fw = 3.15,
`
`then lfG2/fwl =6.92; and, fT/fW = 5.49, satisfying the condition of 5.2 < lfG2/fwl < 20.0 and
`
`where,
`
`fez is a focal length of the second lens unit, wherein fG2 is a composite focal
`
`length of all lens elements comprising the second lens unit starting from a lens element
`
`closest to the object side and ending at a lens element closest to the image side,
`
`fT is a focal length of the entire zoom lens system at a telephoto limit, and
`
`fW is a focal length of the entire zoom lens system at a wide-angle limit.
`
`But Hagimori does not specifically disclose that the second lens unit includes a
`
`cemented lens element composed of two lens elements which are cemented with each
`
`other;
`
`However, ltoh teaches a zoom lens system (abstract; fig. 1; 1i[0035], line 1-12, L1
`
`denotes a first lens unit having negative refracting power, L2 denotes a second lens unit
`
`having positive refracting power, L3 denotes a third lens unit having positive refracting
`
`

`

`Application/Control Number: 13/000,500
`
`Page 5
`
`Art Unit: 2872
`
`power, and L4 denotes a fourth lens unit having positive refracting power. SP denotes
`
`an aperture stop, which is located on the object side of the second lens unit L2),
`
`wherein the second lens unit includes a cemented lens element composed of two lens
`
`elements which are cemented with each other (fig. 1, L2- second lens unit, which
`
`includes a cemented lens, the one on the image side; 1i[0046], line 1-3, The second lens
`
`unit L2 includes a fourth lens and a cemented lens, which are disposed in the stated
`
`order from the object side to the image side).
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`at the time the invention to modify the zoom tens system of Hagimori by the lens system
`
`of ltoh for the purpose of providing of a zoom lens system having a novel structure,
`
`which provides a desirable zoom ratio, and which has a high optical performance
`
`capable of being sufficiently applying to even the case where, for example, a solid-state
`
`image pickup element having a large number of pixels is used (1i[0016], line 1-6).
`
`

`

`Application/Control Number: 13/000,500
`
`Page 6
`
`Art Unit: 2872
`
`.
`
`.x\\\\m“\~\\\n\v.\\\\\\n\\\\w\\~\\\\\\\'\'\\\uxxx-\xxxxxxxxxx
`
`'
`
`,
`
`\.
`».\\
`
`
`f
`
`
`
`
`\
`
`‘
`
`J y
`t, mtg
`firfig g
`
`WEE
`r
`
`first
`
`Fig» 3 fmm Hagfmflfi 912 ai {US 7042653)
`
`Regarding Claim 8, Hagimori-ltoh combination teaches the zoom lens system
`
`as claimed in claim 6, wherein the first lens unit comprises two lens elements including,
`
`in order from the object side to the image side, a first lens element having negative
`
`optical power and a second lens element having positive optical power (fig. 1, L1, the
`
`first lens in L1- lens having negative optical power, the third lens in L1 - lens having
`
`positive optical power, as disclosed in ltoh).
`
`Regarding Claim 35, Hagimori- ltoh combination teaches the zoom lens system
`
`as claimed in claim 6, wherein the zoom lens system is provided with an aperture
`
`

`

`Application/Control Number: 13/000,500
`
`Page 7
`
`Art Unit: 2872
`
`diaphragm, and wherein the aperture diaphragm is located between a most image side
`
`lens surface of the first lens unit and a most object side lens surface of the second lens
`
`unit, or the aperture diaphragm is located between a most image side lens surface of
`
`the second lens unit and a most object side lens surface of the third lens unit, and
`
`moves in a direction along an optical axis integrally with the third lens unit in zooming
`
`(fig. 1, SP- aperture diaphragm, which is between first and second lens unit; 1i[0035],
`
`line 1-12, L1 denotes a first lens unit having negative refracting power, L2 denotes a
`
`second lens unit having positive refracting power, L3 denotes a third lens unit having
`
`positive refracting power, and L4 denotes a fourth lens unit having positive refracting
`
`power. SP denotes an aperture stop, which is located on the object side of the second
`
`lens unit L2, as disclosed in ltoh).
`
`Regarding Claim 36, Hagimori- ltoh combination teaches the zoom lens system
`
`as claimed in claim 6, wherein the third lens unit comprises two or more lens elements
`
`(fig. 1, L3; 1l[0047], line 1-4, the third lens unit L3 includes a cemented lens which is
`
`composed of a lens having negative refracting power and a lens having positive
`
`refracting power, as disclosed in ltoh).
`
`4.
`
`Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over Hagimori
`
`et al (US 7042650) in the view of ltoh (US 20050036211, hereinafter ltoh ’211), and
`
`further in the view of ltoh (US 6191896, hereinafter ltoh ’896).
`
`

`

`Application/Control Number: 13/000,500
`
`Page 8
`
`Art Unit: 2872
`
`Regarding Claim 8, Hagimori-ltoh ’211 combination disclose as set forth above
`
`but do not specifically disclose that the zoom lens system as claimed in claim 6, wherein
`
`the first lens unit comprises two lens elements including, in order from the object side to
`
`the image side, a first lens element having negative optical power and a second lens
`
`element having positive optical power;
`
`However, ltoh ’896 teaches a zoom lens system (fig. 29, L1, L2, L3, L4, the third
`
`embodiment), wherein the zoom lens system as claimed in claim 6, wherein the first
`
`lens unit comprises two lens elements including, in order from the object side to the
`
`image side, a first lens element having negative optical power and a second lens
`
`element having positive optical power (fig. 29A, L1, col. 17, line 48-51, the first lens unit
`
`L1 is constructed from a negative lens having a concave surface facing the image side
`
`and a positive lens having a convex surface facing the object side);
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`at the time the invention to modify the zoom tens system of Hagimori-ltoh ’211
`
`combination by the lens system of ltoh ’896 for the purpose of providing of lens system
`
`to improve the compact form of the entire lens system, to widen the maximum field
`
`angle, and to increase the zoom ratio, while still maintaining good stability of high optical
`
`performance throughout the entire zooming range (col. 2, line 49-54).
`
`Response to Arguments
`
`

`

`Application/Control Number: 13/000,500
`
`Page 9
`
`Art Unit: 2872
`
`5.
`
`Applicant's arguments on pages 2-3, filed on 03/08/2016, have been fully
`
`considered and are not persuasive.
`
`In the remarks, applicant argues that:
`
`(A) the fez value "26.04" calculated by the Office action is not correct. As shown
`
`in the spreadsheet attached as Appendix ""A, the correct value of fG2 is "15.17". When
`
`the fez takes a value of"15.17", the ratio lfG2/fwl takes a value of 4.82 even when the fw
`
`value is 3.15. Therefore, the zoom lens system of the example 3 in Hagimori does not
`
`satisfy the condition (ll-1) recited in claim 6.
`
`(B)
`
`the fez value of "26.04" is a value obtained when the fw takes a value of "6.0"
`
`(Hagimori, example 3). On the other hand, the fw value of "4" used by the Office action
`
`is a value within a range of "2.3: fT/fW =5.5" (Hagimori, col. 21, lines 10-15). However,
`
`the fw value of "4" has no relation to the zoom lens system of the example 3 in which fW
`
`takes the value of "6.0".
`
`If the fW value of the zoom lens system in the example 3 was
`
`changed from "6.0" to "",4 the values of "ri" and "di" would also change. Thus, the fez
`
`value would become a value different from "26.04".
`
`In response to applicant's argument(s):
`
`(A) ) the fez value "26.04" calculated by the Office action was calculated under
`
`thin lens approximation. lf considering the lens thickness, for example 3, the optical
`
`power of second lens group Gr2 can be estimated as fez = 15.05, which is very close to
`
`

`

`Application/Control Number: 13/000,500
`
`Page 10
`
`Art Unit: 2872
`
`applicant’s estimated value of fag = 15.17 in Appendix “A”; same for example 4, the
`
`optical power of second lens group Gr2 can be estimated as fez = 21.8, as 2.3 S fT/fW s
`
`5.5 (col. 21, line 10-15), for example 4, if consider fT =17.3, then fw is in a range of 3.15
`
`s fW S 7.52; take the low limit fw = 3.15, then lfG2/fwl =6.92; and, fT/fW = 5.49, satisfying
`
`the condition of 5.2 < lfG2/fwl < 20.0 and fT/fW > 2.0. Therefore, the zoom lens system of
`
`the example 4 in Hagimori does satisfy the condition (ll-1) recited in claim 6.
`
`(B) Disclosed examples and preferred embodiments do not constitute a teaching
`
`away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442,
`
`169 USPQ 423 (CCPA 1971 ). Furthermore, “[t]he prior art’s mere disclosure of more
`
`than one alternative does not constitute a teaching away from any of these alternatives
`
`because such disclosure does not criticize, discredit, or otherwise discourage the
`
`solution claimed...” In re Fulton, 391 F.3d 1195, 1201, 73 USPQZd 1141, 1146 (Fed.
`
`Cir. 2004). In the Remarks, applicant is cherry picking examples (example 3) to support
`
`his position but ignoring other examples (example 4) that meet the claimed limitations.
`
`Applicant uses the data in examples as the scope limits of Hagimori’s invention, which
`
`is not correct. Hagimori discloses the lens systems in the specification (see Summary of
`
`the invention) and claims the invention scope in claims 1-16. The numerical examples
`
`1-9 in Hagimori’s disclosure only present a few embodiments in the scope of Hagimori’s
`
`invention, and do not cover all the scope of Hagimori’s invention.
`
`

`

`Application/Control Number: 13/000,500
`
`Page 11
`
`Art Unit: 2872
`
`Hagimori teaches a zoom lens system comprising a first lens unit having
`
`negative optical power, a second lens unit having positive optical power (abstract). It is
`
`true that if the fW value of the zoom lens system in the example 3 (or example 4) is
`
`changed from "6.0" to "4.0" or 3.15, the fez value will change, and change to other
`
`positive values. But no indication in the Hagimori disclosure that the positive values (fez)
`
`are all limited smaller than a value (e.g. 16.4), so that 5.2 < lfG2/fwl < 20.0 cannot be
`
`satisfied. In the invention scope claimed by Hagimori (claim 1, claim 6 and claim 7), the
`
`four unit zoom lens system has a negative- positive- positive- positive configuration. A
`
`lens unit having any positive values of optical power will satisfy the requirement for the
`
`second lens unit, that is, it can be a value larger than 16.4 in the case of fT =17.3.
`
`Conclusion
`
`6.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR1.136(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
`
`extension fee 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.
`
`

`

`Application/Control Number: 13/000,500
`
`Page 12
`
`Art Unit: 2872
`
`7.
`
`Any inquiry concerning this communication or earlier communication from the
`
`examiner should be directed to die Lei whose telephone number is (571) 272 7231. The
`
`examiner can normally be reached on Mon-Thurs. 8:00 am to 5:30 pm.
`
`8.
`
`If attempts to reach the examiner by the telephone are unsuccessful, the
`
`examiner's supervisor, Thomas Pham can be reached on (571) 272 3689.The Fax
`
`number for the organization where this application is assigned is (571) 273 8300.
`
`9.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for published
`
`application may be obtained from either Private PAIR or Public PAIR. Status information
`
`for unpublished applications is available through Private PAIR only. For more
`
`information about the PAIR system, see http://pair-direct.uspto.gov. Should you have
`
`questions on access to the Private PAIR system, contact the Electronic Business
`
`Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO
`
`Customer Services Representative or access to the automated information system, call
`
`800-786-9199(In USA or Canada) or 571 -272-1 000.
`
`/JIE LEI/
`
`Examiner, Art Unit 2872
`
`/THOMAS K PHAM/
`
`Supervisory Patent Examiner, Art Unit 2872
`
`