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 Arguments
Applicant's arguments filed 08/20/2025 have been fully considered but they are not persuasive.
A. On pages 3-4 of the remarks filed on 08/20/2025 applicant argues as following: “Applicant disagrees with the characterization of the "non-linear targeted resolution" feature as functional or a goal. But in any event, it is first important to understand that it is rare in the lens design process to ever start from scratch. See Second Declaration of Jocelyn Parent Under 37 C.F.R. 1.132 (“Second Parent Decl.”) at ¶ 5. Instead, the common practice in optical design is to select a previous lens design as a starting point. Id.
Starting lens designs can be selected from any source, including software catalogs, books, manuals, patents, etc. Id. Once a starting point is established, modifications to obtain a new optical design having desired properties are a straightforward process, using common optical optimization software such as Zemax Optic Studio or CodeV. Id. This is a routine practice by optical designers and is well understood after years of experience designing similar optical systems. Id.
One of the properties that can be obtained through this process is a desired resolution profile. Id. The resolution of an optical system, which can be measured in pixels per degree or an equivalent length unit (e.g., micrometers) per degree, is a well understood lens property by someone skilled in the art of optical design. Id. With knowledge of the specific resolution profile recited in the present application, it would not require undue experimentation for one skilled in the art to modify a lens starting point (selection of which can be aided by other lens properties recited in the application, such as the field of view, number of lens elements, etc.) to obtain the desired resolution. Applicant therefore respectfully requests reconsideration and withdrawal of the enablement rejection of claims 1-3 and 5-6.”
Response: Applicant’s argument has been fully considered but are not persuasive. Applicant contends that achieving a “non-linear targeted resolution” profile is within routine skill using optical design software such as Zemax or CodeV. However, the issue is not whether a skilled artisan could eventually arrive at a lens meeting the claimed functional result through trial and error, but whether the specification itself provides sufficient guidance to enable the invention as claimed. See In re Wright, 999 F.2d 1557 (Fed. Cir. 1993); automotive Techs. Int’l v. BMW, 501 F.3d 1274 (Fed. Cir. 2007).
The claim recites a “non-linear targeted resolution creating a magnified zone… with a higher object-to-image magnification compared to a linear targeted resolution.” This is a performance goal rather than a structural limitation. The originally filed specification provides no optical prescription data, surface profiles, refractive indices, or spacing parameters that would direct one of ordinary skill to achieve the claimed non-linear magnification profile. At most, the disclosure described general wide-angle imaging concept without sufficient structural guidance.
Applicant’s reliance on the routine use of optimization software is unavailing. While optimization tools are available, the law requires that the application itself must enable the invention. See MPEP 2164.08(c). A bare assertion that a skilled artisan could start from the prior art designs and optimize until achieving the desired resolution curve amount to undue experimentation, particularly given the breadth of the claim and absence of concrete design guidance. See in re Wands, 858 F.2d 731 (Fed. Cir. 1988) (factors for undue experimentation). Accordingly, the enablement rejection under 35 U.S.C. 112(a) is maintained.
B. On pages 4-5 of the remarks filed on 08/20/2025 applicant argues as following: “Applicant traverses the rejection for at least the following reasons.
Applicant disagrees with the characterization of the above-identified features as purely "functional" or "results." However, even if that were true, the claims still do not fall afoul of the requirements of 35 U.S.C. § 112(b) because a clear-cut indication of the scope of the subject matter embraced by the claims is provided. Those skilled in this art recognize that every lens has a resolution curve, n MTF curve, and a relative illumination curve. See Parent Decl. at ¶ 8. If an optical designer inputs an optical design into lens design software (e.g.. Zemax or CodeV, mentioned above), it is simple, using common, built-in functionality, to output the resolution curve (or equivalent distortion data) and MTF and/or relative illumination values for that optical design. Id. And for a physical lens specimen, it is trivial to measure the resolution, MTF, and relative illumination curves using widely available measurement machines made specifically for these purposes. Id. The person skilled in the art would have no difficulty comparing the determined resolution curve to one or both of the MTF and relative illumination curves and determining whether a zone of higher objective to image magnification aligns with a zone of the image exhibiting a drop in MTF and/or relative illumination as recited in claim 1. Id.
This is unlike claims in chemical arts, where functionality is much more fraught with uncertainty, such as in Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc). Nor are these claims like the vague "aesthetically pleasing" feature advanced in Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342 (Fed. Cir. 2005) or the "pure carbon black 'in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"' from United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942); see also M.P.E.P. § 2173.05(g). Thus, the current claims provide a clear-cut indication of scope that one skilled in the art would be able to simply determine for any lens. For at least these reasons, Applicant respectfully requests reconsideration and withdrawal of the indefiniteness rejection of claims 1-3 and 5-6.”
Response: Applicant traverses the rejection for at least the following reasons.
While it is true that resolution curves and MTF values can be measure for any given lens, the issue under 35 U.S.C. 112(b) is not whether performance can be measured after a lens is built, but whether the claims provide clear boundaries that inform a person of ordinary skill in the art, with reasonable certainty, what fails within the scope of the invention. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014).
The term “non-linear targeted resolution” as used in claim 1 is not recognized term of art and is not defined in the specification with sufficient clarity. The claim attempt to cover any optical design that results in a resolution distribution fitting this coined expression, without providing objective structural boundaries or quantitative criteria. This amount to result-oriented claiming, which is improper. See MPEP 2173.05(g); In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983).
By contrast, while MTF itself is a measurable parameter, the manner in which the claims combine MTF language with the “non-linear targeted resolution” zone limitation leaves substantial ambiguity. It is unclear, for example, how much variation from linearity is required to constitute “non-linear,” what resolution distribution qualifies as “targeted” or how a skilled artisan would distinguish a system within the scope of the claim from one outside it. The specification does not provide sufficient guidance or definitions to resolve this ambiguity.
Accordingly, the claims fail to particularly point out the distinctly claim the invention, and the rejection under 35 U.S.C. 112(b) is maintained.
Regarding the declaration of the inventor Dr. Jocelyn Parent, Examiner concludes the declaration was considered insufficient to overcome the rejection of Claim 1 under 35 U.S.C. 112 as set forth in the last Office action because the affidavit merely reiterates argument already made in Applicant’s response (Remarks filed on 08/20/2025), regarding the field of view, magnified zone and MTF limitations. The affidavit does not provide new technical evidence or test data that overcomes the applied rejections. Accordingly, for the reasons previously discussed in this office action above and in the prior actions, the affidavit is not persuasive, and the rejections under 35 U.S.C. 112 are maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 is rejected under 35 U.S.C. 112(a), first paragraph, as the specification, while being enabling for certain general aspects of a miniature wide-angle optical apparatus, does not enable the full scope of the claimed invention. In particular, the claim recites a “non-linear targeted resolution to intentionally create a zone in an image captured by the miniature wide-angle optical apparatus with a lower or higher object to image magnification,” which is a functional result or performance goal, rather than a concrete structure feature. The specification does not provide sufficient detail as to how such a non-linear resolution is structurally implemented. It lacks disclosure of lens shapes, spacing, materials, index gradients, surface profiles or other concrete features that would enable a person of ordinary skill in the art to make and use the invention without undue experimentation, as required by MPEP 2164.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the phrase: “non-linear targeted resolution to intentionally create a zone in an image … with a lower or higher object to image magnification … used to compensate … for a lower image quality due to at least one of a drop of relative illumination or drop of MTF” is vague and lacks antecedent structural basis. It fails to clearly define the scope of the claimed invention. The claim reads as an attempt to cover any optical system that somehow achieves such a result, without describing the means by which the result is achieved. This amounts to purely result-oriented claiming. As noted in MPEP 2173.05(g), “[a] claim that recited a result without reciting means or steps for obtaining the result is often considered indefinite.” Moreover, per MPEP 2164.01(a) and In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983), claims that broadly recite desired outcomes without corresponding enabling disclosure are noncompliant with 112.
Finally, to overcome these rejections, the applicant should:
provide clear structural support in the specification (e.g., lens configuration) that illustrates how the resolution non-linearity and magnification variance are achieved.
Amend the claim to include specific optical element that are responsible for producing the claimed image characteristics, rather than broadly claiming the outcome.
Allowable Subject Matter
Claims 1-3, 5 and 6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 1, closest prior art of record Thibault teaches: a miniature wide-angle optical apparatus (Thibault, figs.1-9, abstract, the miniature all plastic megapixel panomorph lenses for consumer electronics) comprising:
a light-receiving first surface (see Thibault, fig.5, having an object side of one of the optical elements forming a light-receiving first surface of the optical apparatus),
a focal plane (see fig. 2: focal plane disposed next to the last lens)
an opening angle of light entering the optical apparatus being over 100° (see Thibault, fig.6, having an opening angle of light entering the optical apparatus being over 100°);
an angle of chief-rays reaching the focal plane being over 20o from an optical axis of the optical apparatus (as shown from figs. 2 and 5: the chief rays appear to be greater than 20o)
a non-linear targeted resolution (see Thibault, fig.6, the non-linear targeted resolution) having a magnified zone in an image circle (see, Thibault, fig.6, an image circle) captured by the optical apparatus (Thibault, fig.5, optical apparatus) with a higher object to image magnification (see, Thibault, fig.6, a higher object to image magnification) compared to a linear targeted resolution (see, Thibault, fig.6, linear targeted resolution), the magnified zone (Thibault, fig.6 , the field of view from 0-90 degree) encompassing a field angle of the field of view (Thibault, fig.6 , the field of view about 60 degree), the center of the field of view having a lower object to image magnification (see, Thibault, fig.6, lower object to image magnification) compared to the linear targeted resolution (see, Thibault, fig.6, linear targeted resolution).
However, Thibault does not specifically disclose the higher object to image magnification encompassing maximum field angle of a field of view of the image circle and being used to compensate.
Conclusion
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.
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/EPHREM Z MEBRAHTU/Primary Examiner, Art Unit 2872