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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Arguments
None of Applicant’s remarks are persuasive. Examiner is generally at a loss as to how to convey the issues beyond what has already been written.
Applicant’s affidavit does not resolve the issues presented in the Office Action mailed April 15, 2025. Most notably, the affidavit does not address the examples provided in the originally filed specification and the breadth and scope of claim 1. Examiner understands Applicant’s affidavit as an attempt to show there are other specific solutions to the equation on page 10 lines 12-25 of the affidavit, yet such Excel tables do not address the actual examples as originally filed.
Also of note, claim 1 captures both fluid filled and solid lenses. Applicant’s affidavit provides only a discussion of a fluid filled type.
For brevity Examiner will refer to appendix A and associated spreadsheet.
The originally filed specification (Fig. 9) lists the following values: n1 = 1.38, n2 = 1.65, R1 = 6.05, R2 = 3.92, R3 = ∞. Applicant’s spreadsheet uses different values for R1 and R2. Specifically, R1 = 6.913, R2 = -5.227. Examiner understands that Fig. 9 is likely R2 = -3.92 given the concavity of R2 as shown.
Thus, Applicant’s affidavit does not actually address the embodiment as originally filed and therefore Applicant’s affidavit does not resolve the issues since such affidavit itself constitutes prohibited new matter (MPEP716.09 - Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite. In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991))
Examiner also notes various numerical and mathematical inconsistencies within the spreadsheet for Fig. 9. For instance, row 5 lists Fluid dn/dT = 0.000. However row 4 shows Fluid n = 1.380 (T1 = 30oC) and row 6 states Fluid n T2 = 1.377 (T2 = 40oC) which would require Δn/ΔT = 1.377-1.380/(40-30) = -0.0003. Did Applicant round this? The table implies there is no dn/dT, yet Applicant decidedly needs the change in index of refraction since the index at both 30oC and 40oC have different values. The same would be true for the glass, yet Applicant doesn’t provide any temperature dependence of the glass.
Another inconsistency is that the “drift” determined in the affidavit includes two separate rows. The first is the diopter change with units [dpt] and the second is the diopter change per Celsius with unit [dpt/degC]. While Examiner assumes it is the [dpt/degC] value that Applicant intends by the arguments since those are closest to zero, this is inconsistent with the originally filed specification page 9, lines 20-25 where the drift ΔFP = FPTotal(T1) - FPTotal(T0) and would have units of diopter [dpt].
As calculated by Applicant in appendix A, the lenses have decidedly non-zero drift of -0.012 dpt, -0.009 dpt, and -0.010 dpt, and thus not as claimed “due to a change in temperature is zero”. Even considering the drift [dpt/degC], appendix A values are also -0.001 dpt/degC, -0.001 dpt/degC, -0.001 dpt/degC which are not zero, and thus not what is claimed.
Regarding Applicant’s remarks as they pertain to the prior art, Examiner is not persuaded. Applicant again turns to the method of designing “[t]here is no disclosure of designing n1(t), n2(T), R1(T), R2(T), R3(T)”1.
The claims are directed to the device. The devices of Carlie and Aschwanden explicitly have first and second refractive elements, those first and second refractive elements include first and second indices of refraction (they must, these are lenses made of real materials), and as shown in the figures, those lenses incorporate the various surfaces R1, R2, R3. The result of such “design” by Aschnwanden and Carlie is an athermal doublet as claimed by Applicant. In other words, the prior at contains all the structural limitations of the claimed device. MPEP 2113 - "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Perhaps the issue is Applicant does not appear to understand the term “athermal”? Applicant states “[n]o passage in Carlie demonstrates, predicts, or even suggests that ∂Ktotal/∂T ≈ 0”. Yes Carlie does. Carlie states “for athermalization K1δ1 + K2δ2 = Kαh”. ∂Ktotal/∂T ≈ 0 means athermalization. That’s what that condition is. The change in power/change in temperature for a given total power Ktotal = 0 is known as athermalization.
Perhaps Applicant is having a hard time seeing Carlie’s full equation? Although the inventors/Applicants filed an affidavit so Examiner presumed they would be familiar with the science and math.
Unlike Applicant’s disclosure, Carlie didn’t assume the lenses were in air, but housed. Carlie includes the thermal expansion so as to generalize the athermalization conditions. This is why Carlie considers αh. Why does this show up on the total power side? Because the thermal expansion of the housing would work like a change in the focal length and therefore Carlie treats it as such. Here’s a picture.
PNG
media_image1.png
570
729
media_image1.png
Greyscale
In Applicant’s particular case, where the housing doesn’t exist or doesn’t move the image plane/CCD as per its thermal expansion, then αh = 1. This means Carlie’s equation becomes: K1δ1 + K2δ2 = K.
For a given total power K, then as directed by Carlie, those of ordinary skill would solve for the radii and indices refraction to satisfy K1δ1 + K2δ2 = K under the same conditions as Applicant - i.e. no housing.
The radii and indices of refraction come from K1, K2 via the lensmaker’s equation. Writing out Carlie’s K1 and K2 with lensmaker’s:
K
1
=
1
R
11
-
1
R
12
+
n
1
-
1
d
1
n
1
R
11
R
12
K
2
=
1
R
21
-
1
R
22
+
n
2
-
1
d
1
n
2
R
21
R
22
Where:
R11 = left side radius of the first lens
R12 = right side radius of the first lens
n1 = index of the first lens
d1 = the thickness of the first lens
R21 = left side radius of the second lens
R22 = right side radius of the second lens
n2 = index of second lens
d2 = the thickness of the second lens
Carlie’s equation for the athermalization is in differential form, whereas Applicant’s is in the delta or difference form. Thus Carlie’s athermalization is for Applicant’s condition where limit(T1-T2 ) [Wingdings font/0xE0] 0. Carlie’s athermalization equation starts at the point where the differential has already been taken which leads to the δ1 δ2 variables that include the linear expansion of the materials and the thermal dependence of the refractive indices.
Carlie’s full equation for the athermalization allows for those of ordinary skill in the art, just like Applicant’s disclosure, to solve for the various radii and indices of refraction for a given K to be athermalized.
K1δ1 + K2δ2 = K
(
1
R
11
-
1
R
12
+
n
1
-
1
d
1
n
1
R
11
R
12
) *(δ1) + (
1
R
21
-
1
R
22
+
n
2
-
1
d
2
n
2
R
21
R
22
)*( δ2) = K
1
R
11
-
1
R
12
+
n
1
-
1
d
1
n
1
R
11
R
12
∂
n
1
∂
T
n
1
-
1
-
1
L
∂
L
∂
T
+
1
R
21
-
1
R
22
+
n
2
-
1
d
2
n
2
R
21
R
22
∂
n
2
∂
T
n
2
-
1
-
1
L
∂
L
∂
T
= K
For Applicant’s example of K = 0D, this leads to the differential version of Applicant’s combined equation on page 2 of the affidavit filed October 15, 2025.
1
R
11
-
1
R
12
+
n
1
-
1
d
1
n
1
R
11
R
12
∂
n
1
∂
T
n
1
-
1
-
1
L
∂
L
∂
T
+
1
R
21
-
1
R
22
+
n
2
-
1
d
2
n
2
R
21
R
22
∂
n
2
∂
T
n
2
-
1
-
1
L
∂
L
∂
T
= 0
1
R
11
-
1
R
12
+
n
1
-
1
d
1
n
1
R
11
R
12
∂
n
1
∂
T
n
1
-
1
-
1
L
∂
L
∂
T
= -
1
R
21
-
1
R
22
+
n
2
-
1
d
2
n
2
R
21
R
22
∂
n
2
∂
T
n
2
-
1
-
1
L
∂
L
∂
T
In summary, Carlie teaches what Applicant’s claim covers and is directed to. Specifically, the equation to determine the radii and indices of refraction for a given total focal power (K) of a doublet lens so as to result in “a drift of the total focal power due to a change in temperature is zero” (a.k.a. athermalization).
Claim Rejections - 35 USC § 112
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, 8, 13-15, 25 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.
As to claims 1 and 27, the claims recite “a drift of the total focal power due to a change in temperature is zero” is unclear as per Applicant’s affidavit filed October 15, 2025.
Issue #1 - the affidavit makes reference to zero and “substantially zero” being somehow the same. Applicant’s claims do not say “substantially zero”, nor is there any discussion with the originally filed specification as to what is, or is not, included in substantially zero (MPEP 2173.05(b)).
Issue #2 - the affidavit appears to contradict what is mean by “drift”. As per the originally filed specification (page 9, lines 20-25), the drift would have units of diopter due to the drift equation: ΔFP = FPTotal(T1) - FPTotal(T0). Applicant’s affidavit appears to contradict this by suggesting the drift is ΔFP/ΔT.
The metes and bounds are unclear since whether the claims cover substantially zero (not claimed) and what constitutes the drift are unclear.
Claims 8, 13-15, 25