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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/345,297
`
`03/17/2014
`
`Takumi Iba
`
`MAT—10622US
`
`4810
`
`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
`
`NGUYEN, THONG Q
`
`ART UNIT
`
`2872
`
`PAPER NUIVIBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/ 1 1/2015
`
`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):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/345,297 IBA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`StatusNo THONG NGUYEN 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) 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)IZI Responsive to communication(s) filed on 3/17/14.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|:l 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)|:| 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-11 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)I:I Claim(s)
`7)|:| Claim(s)
`8)|:I Claim(s)
`
`is/are allowed.
`is/are rejected.
`is/are objected to.
`
`
`9)IXI Claim(s 1-11 are subject to restriction and/or election requirement.
`I
`* 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
`:i/wwwusnto. ov/ atentS/init events/
`
`
`
`
`hit
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l 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:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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 (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] Information Disclosure 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 20150506
`
`

`

`Application/Control Number: 14/345,297
`
`Page 2
`
`Art Unit: 2872
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Response to Pre-amendment
`
`2.
`
`The present Office action is made in response to the pre-amendment filed on
`
`3/17/14. It is noted that in the pre-amendment, applicant has made changes to the
`
`specification and the claims.
`
`Regarding to the specification, applicant has submitted a substitute specification
`
`with its marked-up copy showing the changes to the specification, and a statement that
`
`the substitute specification does not contain any new matter.
`
`Regarding to the claims, applicant has amended claims 3-6 and added a new set
`
`of claims, i.e., claims 8-11, into the application. As amended, the pending claims are
`
`claims 1-11 which claims are subjected to the following restriction.
`
`Election/Restrictions
`
`3.
`
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`l.
`
`Claims 3-5 and 8-10, drawn to an imaging lens with features related to a
`
`diaphragm and conditions governing the distances among the diaphragm
`
`with other components of the imaging lens, classified in GOZB9/56;
`
`ll.
`
`Claims 6 and 11, drawn to an imaging lens with conditions governing the
`
`focal lengths of the lens elements constituted the imaging lens, classified
`
`in GOZB13/OO4.
`
`

`

`Application/Control Number: 14/345,297
`
`Page 3
`
`Art Unit: 2872
`
`4.
`
`Claims 1-2 link inventions l-ll. See Note below. The restriction requirement
`
`between the linked inventions is subject to the nonallowance of the linking claims 12
`
`Upon the indication of allowability of the linking claims, the restriction requirement as to
`
`the linked inventions shall be withdrawn and any claim(s) depending from or otherwise
`
`requiring all the limitations of the allowable linking claim(s) will be rejoined and fully
`
`examined for patentability in accordance with 37 CFR 1.104 Claims that require all the
`
`limitations of an allowable linking claim will be entered as a matter of right if the
`
`amendment is presented prior to final rejection or allowance, whichever is earlier.
`
`Amendments submitted after final rejection is governed by 37 CFR 1.116; amendments
`
`submitted after allowance are governed by 37 CFR 1.312.
`
`Applicant(s) are advised that if any claim presented in a continuation or divisional
`
`application is anticipated by, or includes all the limitations of, the allowable linking claim,
`
`such claim may be subject to provisional statutory and/or nonstatutory double patenting
`
`rejections over the claims of the instant application. Where a restriction requirement is
`
`withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443
`
`F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
`
`M1 Claim 7 does not recite any features which are used to group the claims as
`
`mentioned above, thus the claim will be examined with the linking claims 1-2 and the
`
`claims of the elected invention.
`
`5.
`
`The groups of inventions listed above do not relate to a single general inventive
`
`concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
`
`corresponding special technical features for the following reasons: the conditions
`
`

`

`Application/Control Number: 14/345,297
`
`Page 4
`
`Art Unit: 2872
`
`governing the distances among the diaphragm with other components of the imaging
`
`lens do not have the same or corresponding special technical features with the
`
`conditions governing the focal lengths of the lens elements constituted the imaging lens.
`
`6.
`
`A telephone call was made to Lawrence E. Ashery on 5/4/15 to request an oral
`
`election to the above restriction requirement, but did not result in an election being
`
`made.
`
`7.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected
`
`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
`
`or more of the currently named inventors is no longer an inventor of at least one claim
`
`remaining in the application. Any amendment of inventorship must be accompanied by
`
`a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
`
`Conclusion
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to THONG NGUYEN whose telephone number is
`
`(571 )272—231 6. The examiner can normally be reached on M-F.
`
`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Stephone B. Allen can be reached on (571) 272-2434. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
`

`

`Application/Control Number: 14/345,297
`
`Page 5
`
`Art Unit: 2872
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications 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 Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/Thong Nguyen/
`
`Primary Examiner, Art Unit 2872
`
`

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