DETAILED ACTION
The instant application having Application No. 17/761,118 filed on March 16, 2022 is presented for examination by the examiner.
The amended claims submitted December 31, 2025 in response to the office action mailed October 1, 2025 are under consideration. Claims 2-4, 7, 11-15, 20-21 and 23-24 are cancelled. Claims 1, 5-6, 8-10, 16-19, 22, 25-33 are pending, of which claims 10, 29 and 33 are withdrawn as non-elected and claims 1, 5-6, 8-9, 16-19, 22 and 25-28 and 30-32 are under consideration.
Election/Restrictions
Newly submitted claim 33 is directed to an invention that lacks unity with the invention originally claimed for the following reasons:
Claims 1, 5-6, 8-10, 16-19, 22 and 25-33 contain the following distinct groups.
I. Claims 1, 5-6, 8-10, 16-19, 22 and 25-32, drawn to a lens group or terminal device including such a lens group.
II. Claim 33, drawn to a method of assembling a lens group.
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:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the lens group of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art as detailed in the prior art rejections below.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 33 is withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Furthermore, new claim 29 belongs to the non-elected species (b) of the restriction mailed September 26, 2024, and thus is also withdrawn as non-elected.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Rejections - 35 USC § 112
Some of the 35 USC §112 rejections of the previous office action have been overcome by the amendments to the claims. However, the following rejections are either maintained or raised by the amendments to the claims.
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, 5-6, 8-9, 16-19, 22, 25-28 and 30-32 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, claim 1 uses the transitional phrase “consisting of”, however, in claim 17 the lens group further comprises an aperture stop and an infrared cut-off filter, in claim 18 the lens group further comprises a first vignetting stop and in claim 19 the lens group further comprises a second vignetting stop. Usual practice in interpreting a claim with the transitional phrase “consisting of” precludes the presence of any additional elements. Thus, the addition of these elements in claims 17-19 renders the use of the phrase “consisting of” indefinite in claim 1.1 For the purpose of examination, claim 1 will be interpreted consistent with the application and claims 17-19 as requiring that the number of lenses is five, but as not excluding other optical elements with zero-refractive power, such as stops, filters, and cover glasses. However, even if this is the desired interpretation, appropriate correction is required. If the applicant wants claim 1 to be interpreted as lacking any additional elements including stops, filters and cover-glasses, then claims 17-19 should be cancelled. If the applicant merely wished to claim “wherein the number of lenses with non-zero refractive power is five”, then the examiner recommends using that language.
Claims 5-6, 8-9, and 16-19 depend from claim 1 and inherit and do not mitigate the above indefiniteness issue from claim 1.
Regarding claims 17-19, claim 17 introduces an aperture stop and an infrared cut-off filter, claim 18 introduces a first vignetting stop and claim 19 introduces a second vignetting stop, however, claim 1 recited “a lens group consisting of: a first lens, a second lens, a third lens, a fourth lens, and a fifth lens that are sequentially arranged from an object side to an image side” (emphasis added). Thus, the presence of additional optical elements in the lens group is precluded. Thus, the scope of claims 17-19 is indefinite because it is unclear whether these additional optical elements are or are not required by claims 17-19 given that they can’t be there. Appropriate correction is required.
Regarding claim 22, claim 22 uses the transitional phrase “consisting of” to delimit the elements of the lens group, however, in claim 31 the lens group further comprises an aperture stop and an infrared cut-off filter and in claim 32 the lens group further comprises a first vignetting stop. Usual practice in interpreting a claim with the transitional phrase “consisting of” precludes the presence of any additional elements. Thus, the addition of these elements in claims 31-32 renders the use of the phrase “consisting of” indefinite in claim 22.2 For the purpose of examination, claim 22 will be interpreted consistent with the application and claims 31-32 as requiring that the number of lenses is five, but as not excluding other optical elements with zero-refractive power, such as stops, filters, and cover glasses. However, even if this is the desired interpretation, appropriate correction is required. If the applicant wants claim 22 to be interpreted as lacking any additional elements including stops, filters and cover-glasses, then claims 31-32 should be cancelled. If the applicant merely wished to claim “wherein the number of lenses with non-zero refractive power is five”, then the examiner recommends using that language.
Claims 25-32 depend from claim 22 and inherit and do not mitigate the above indefiniteness issue from claim 22.
Regarding claims 31-32, claim 32 introduces an aperture stop and an infrared cut-off filter and claim 32 introduces a first vignetting stop however, claim 22 recited “a lens group consisting of: a first lens, a second lens, a third lens, a fourth lens, and a fifth lens that are sequentially arranged from an object side to an image side” (emphasis added). Thus, the presence of additional optical elements in the lens group is precluded. Thus, the scope of claims 31-32 is indefinite because it is unclear whether these additional optical elements are or are not required by claims 31-32 given that they can’t be there. Appropriate correction is required.
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.
Claims 1, 5-6, 8, 16, 22, 25-27 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Tseng et al. US 2018/0143403 A1 (hereafter Tseng) in view of Yoshioka US 4,792,217 A (hereafter Yoshioka), Sano US 2011/0188131 A1 (hereafter Sano), Kitahara US 2015/0168692 A1 (hereafter Kitahara), Sekine US 2018/0052307 A1 (hereafter Sekine), and Gross et al. "Handbook of Optical Systems Volume 3: Aberration Theory and Correction of Optical Systems" (hereafter Gross).
Regarding claim 1, Tseng teaches (3rd embodiment, Fig. 5, Table 5) “A lens group (lenses 310, 320, 330, 340 and 350, also called Lens 1, Lens 2, Lens 3, Lens 4 and Lens 5) consisting of:
a first lens (310, Lens 1), a second lens (320, Lens 2), a third lens (330, Lens 3), a fourth lens (340, Lens 4), and a fifth lens (350, Lens 5) that are sequentially arranged from an object side to an image side (see Fig. 5, Table 5 and paragraph [0131]: “in order from an object side to an image side”),
wherein the first lens, the third lens, and the fourth lens have positive focal power (see positive focal lengths of Lens 1, Lens 3 and Lens 4 in Table 5 and descriptions in paragraphs [0132]-[0135]), and the second lens and the fifth lens have negative focal power (see negative focal lengths of Lens 2 and Lens 5 in Table 5 and descriptions in paragraphs [0133]-[0136])…
at least one lens (330, Lens 3)…
wherein the lens group meets the following: 0.27<F/EFL<0.9 (given the values that follow F/EFL=3.46/8.55=0.40), and F is a focal length of the at least one lens (Table 5 the focal length of Lens 3 is 3.46), and EFL is the effective focal length of the lens group (Table 5 EFL=f=8.55),
wherein the at least one lens is the third lens (the at least one lens is 330, Lens 3)…
wherein each of the second and fourth lenses is made of resin (Table 5 the material of Lens 2 and Lens 4 is plastic, i.e. cured resin),
wherein each of the second, third, and fourth lens has object side and image side surfaces (the object side and image side surfaces of the second, third and fourth lenses),
wherein the object side surface of … the … third lens is convex (paragraph [0134]: “an object-side surface 331 being convex in a paraxial region thereof”),
wherein the image side surface of each of the second and third lens is concave (paragraph [0133]-[0134]: “an image-side surface 322 being concave in a paraxial region thereof… an image-side surface 332 being concave in a paraxial region thereof”),
wherein the object side surface of the fourth lens is concave (paragraph [0135]: “an object-side surface 341 being concave in a paraxial region thereof”), and
wherein the image side surface of the fourth lens is convex (paragraph [0135]: “an image-side surface 342 being convex in a paraxial region thereof”).”
However, the third embodiment of Tseng fails to teach “wherein the third lens is made of glass”. However, it should be noted that Tseng teaches in paragraph [0077]: “the lens elements of the photographing lens assembly can be made of glass or plastic material. When the lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design.”
Yoshioka teaches (claim 1) “A lens group (col. 4 lines 41-47: FIGS. 1, 4, 7, 10, 17, 20, 23, 26, 29 and 32, are sectional views showing projection lens systems according to Examples 1 to 4 and 6 to 11) consisting of:
a first lens, a second lens, a third lens, a fourth lens, and a fifth lens that are sequentially arranged (col. 1 lines 61-67: “lens system comprising: in order… a first lens unit having a positive focal length, a second lens unit having a negative focal length, a third lens unit having a positive focal length, a fourth lens unit having a positive focal length and a fifth lens unit having a negative focal length”)…
wherein the first lens, the third lens, and the fourth lens have positive focal power (col. 1 lines 61-67: “a first lens unit having a positive focal length… a third lens unit having a positive focal length, a fourth lens unit having a positive focal length”), and the second lens and the fifth lens have negative focal power (col. 1 lines 61-67: “a second lens unit having a negative focal length… and a fifth lens unit having a negative focal length”),
wherein the third lens is made of glass (col. 4 line 17: “the third group lens is of glass”),
wherein each of the second and fourth lenses is made of resin (col. 4 lines 41-46: “In these examples, the first lens unit G.sub.1, the second lens unit G.sub.2, the fourth lens unit G.sub.4, and the fifth lens unit G.sub.5 are acrylic lenses”. Acrylic is a cured resin.).”
Yoshioka further teaches (col. 4 lines 17-18): “If the third group lens is of glass, then its performance is scarcely affected by temperature change.”
Sano teaches (claim 1) “A lens group (Fig. 17 example 9 Table 9) consisting of:
a first lens, a second lens, a third lens, a fourth lens, and a fifth lens that are sequentially arranged from an object side to an image side (paragraph [0172]: “L1 is a first lens, L2 is a second lens, L3 is a third lens, L4 is a fourth lens, L5 is a fifth lens” see Fig. 17 and Table 9),
wherein the first lens, the third lens, and the fourth lens have positive focal power (paragraph [0171] the focal distance of lenses 1, 3 and 4 are positive), and the second lens and the fifth lens have negative focal power (paragraph [0171] the focal distance of lenses 2 and 5 are negative),
wherein the third lens is made of glass (paragraph [0174]: In Example 9, the third lens L3 is a glass-molded lens),
wherein each of the second and fourth lenses is made of resin (paragraph [0174]: “the other lenses are made of plastics.” Plastic is cured resin.).”
Sano also teaches many other embodiments, including example 8, with five lenses arranged positive, negative, positive, positive, negative where all the lenses are formed of plastics (see paragraphs [0166]-[0169]).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the materials of the lens group of Tseng from all plastic lenses to having the third lens glass and the remaining lenses plastic as taught by Yoshioka and Sano. One would have been motivated to make such a change because Tseng teaches when lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design (Tseng paragraph [0077]), Yoshioka teaches that the third glass lens has the benefit that its performance is scarcely affected by temperature change (Yoshioka col. 4 lines 17-18), and Sano teaches that choosing all plastic lenses or choosing the third lens being made of glass and the remaining four lenses being plastic in an imaging system arranged +-++- are both reasonable choices that an ordinary skilled artisan could make within the same inventive concept.
However, the Tseng – Yoshioka – Sano combination fails to teach “wherein a relative refractive index temperature coefficient β of at least one lens meets: -9x10-5≤β≤9x10-5.” The above combination made the material of the third lens glass which Yoshioka teaches is scarcely effected by temperature, but did not explicitly teach a numerical value for the relative refractive index temperature coefficient β.
Kitahara teaches (example 7, Fig. 7, Tables 19-21) (claim 1) “A lens group (paragraph [0100]: “imaging lens in Example 7”) consisting of:
a first lens (L2), a second lens (L3), a third lens (L4), a fourth lens (L5), and a fifth lens (L6) sequentially arranged from an object side to an image side (from left to right in Fig. 7 and from surface 3 to 13 in Table 19. Lenses L2 to L6 are a lens group in sequential order from the object side to the image side, despite the presence of an additional lens L1 on the object side thereof.),
wherein the first lens, the third lens, and the fourth lens have positive focal power (see Table 21 f2, f4 and f5 are positive, and thus the first, third and fourth lenses as identified above have positive focal power), and the second lens and the fifth lens have negative focal power (see Table 21, f3 and f6 are negative, thus the second and fifth lenses as identified above have negative focal power),
wherein a relative refractive index temperature coefficient β (paragraph [0084]: “A column of "dn/dt" shows the temperature coefficient of the refractive index of each optical element… "e-6" is omitted in the value of "dn/dt"”) of at least one lens meets: -9x10-5≤β≤9x10-5 (see Table 19, dn/dt of the last five lenses are 7.1, 27.7, 4.4, 4.9, 1.8 all in units of 10−6/° C, each of which is within the claimed range. To illustrate further, the endpoint of the claimed range 9x10-5 = 0.00009, whereas 7.1x10-6 =0.0000071 and 27.7x10-6=0.000027, both of which are smaller than 9x10-5. Given that the range includes zero, it is self-evident that each of the last five lenses have values of the refractive index temperature coefficient β that are within the claimed range.),
wherein the at least one lens is the third lens (this can be either L3 or L4 depending on how the lenses are identified),
wherein the third lens is made of glass (paragraph [0023]: “all of the first lens through the sixth lens are glass lenses” see also Table 19 “GLASS MATERIAL NAME”).”
Further note that in Table 1, Kitahara teaches a third lens with glass material S-TIM28 with dn/dt of 2.6 in units of 10−6/° C which has a refractive index of 1.68893 and an Abbe number of 31.1 that are quite similar to that of the third lens of Tseng with a refractive index of 1.660 and an Abbe number of 20.4.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the glass material of the third lens a glass material with -9x10-5≤β≤9x10-5 as taught by Kitahara, such as S-TIM28 with dn/dt of 2.6 in units of 10−6/° C which has a refractive index of 1.68893 and an Abbe number of 31.1 in the lens group of the Tseng – Yoshioka – Sano combination. One would have been motivated to make such a choice because Tseng teaches when lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design (Tseng paragraph [0077]), Yoshioka teaches that the third glass lens has the benefit that its performance is scarcely affected by temperature change (Yoshioka col. 4 lines 17-18), and Sano teaches that choosing all plastic lenses or choosing the third lens being made of glass and the remaining four lenses being plastic in an imaging system arranged +-++- are both reasonable choices that an ordinary skilled artisan could make within the same inventive concept. Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because the refractive index and Abbe number of S-TIM28 are quite similar to that of the original third lens in Tseng.
However, Tseng fails to teach “wherein the object side surface of …the second … is convex.”
Sekine teaches (example 1, Fig. 1 Table 1) (claim 1) “A lens group (imaging lens of example 1), consisting of (note that the stop of Sekine is on the object-side of the lens group, and the IR cut filter is on the image-side of the lens group, and thus are not excluded by the claim, which consists of the lenses between them):
a first lens (L1), a second lens (L2), a third lens (L3), a fourth lens (L4), and a fifth lens (L5) that are sequentially arranged from an object side to an image side (see example 1, Fig. 1 Table 1),
wherein the first lens, the third lens, and the fourth lens have positive focal power (Table 1 Constituent Lens Data the focal lengths of Lens 1, 3 and 4 are positive and thus lenses 1, 3 and 4 have positive focal power), and the second lens and the fifth lens have negative focal power (Table 1 Constituent Lens Data the focal lengths of Lens 2 and 5 are negative and thus lenses 2 and 5 have negative focal power),…
wherein each of the second, third, and fourth lens has object side and image side surfaces (the object side and image side surfaces of the second, third and fourth lenses),
wherein the object side surface of each of the second and third lens is convex (see the positive curvature radius of surfaces 4, and 6 in Table 1, indicating a convex object side of the second and third lenses), wherein the image side surface of each of the second and third lens is concave (see the positive curvature radius of surfaces 5 and 7 in Table 1, indicating concave image side surface of the second and third lenses),
wherein the object side surface of the fourth lens is concave (Table 1 the curvature radius of surface 8 is negative, indicating a concave object side surface of the fourth lens), and
wherein the image side surface of the fourth lens is convex (Table 1 the curvature radius of surface 9 is negative, indicating a convex image side surface of the fourth lens).”
Gross teaches (page 378 section 33.1.4) that bending a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Bending a lens involves modifying the curvatures of the two surfaces while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that bending a lens can be done without any great perturbation of the existing setup.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the shape of the second negative lens to be meniscus convex to the object-side and concave to the image-side as taught by Sekine rather than biconvex as originally disclosed in Tseng in the lens group of the Tseng – Yoshioka – Sano – Kitahara combination because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
Regarding claim 22, Tseng teaches (3rd embodiment, Fig. 5, Table 5) “A terminal device (paragraphs [0002]-[0005]: “a photographing lens assembly and an image capturing unit applicable to an electronic device… different kinds of smart electronic devices, such as vehicle devices, image recognition systems, entertainment devices, sport devices and intelligent home assistance systems”. One of ordinary skill in the art would consider these smart electronic devices to include terminal devices, because at least entertainment devices are capable of taking input) comprising a lens group (lenses 310, 320, 330, 340 and 350, also called Lens 1, Lens 2, Lens 3, Lens 4 and Lens 5) consisting of:
a first lens (310, Lens 1), a second lens (320, Lens 2), a third lens (330, Lens 3), a fourth lens (340, Lens 4), and a fifth lens (350, Lens 5) that are sequentially arranged from an object side to an image side (see Fig. 5, Table 5 and paragraph [0131]: “in order from an object side to an image side”),
wherein each of the first lens, the third lens, and the fourth lens has a positive focal power (see positive focal lengths of Lens 1, Lens 3 and Lens 4 in Table 5 and descriptions in paragraphs [0132]-[0135]), and each of the second lens and the fifth lens has a negative focal power (see negative focal lengths of Lens 2 and Lens 5 in Table 5 and descriptions in paragraphs [0133]-[0136])…
at least one lens (330, Lens 3)…
wherein the lens group meets the following: 0.27<F/EFL<0.9 (given the values that follow F/EFL=3.46/8.55=0.40), and F is a focal length of the at least one lens (Table 5 the focal length of Lens 3 is 3.46), and EFL is the effective focal length of the lens group (Table 5 EFL=f=8.55),
wherein the at least one lens is the third lens (the at least one lens is 330, Lens 3)…
wherein each of the second and fourth lenses is made of resin (Table 5 the material of Lens 2 and Lens 4 is plastic, i.e. cured resin),
wherein each of the second, third, and fourth lens has object side and image side surfaces (the object side and image side surfaces of the second, third and fourth lenses),
wherein the object side surface of … the … third lens is convex (paragraph [0134]: “an object-side surface 331 being convex in a paraxial region thereof”),
wherein the image side surface of each of the second and third lens is concave (paragraph [0133]-[0134]: “an image-side surface 322 being concave in a paraxial region thereof… an image-side surface 332 being concave in a paraxial region thereof”),
wherein the object side surface of the fourth lens is concave (paragraph [0135]: “an object-side surface 341 being concave in a paraxial region thereof”), and
wherein the image side surface of the fourth lens is convex (paragraph [0135]: “an image-side surface 342 being convex in a paraxial region thereof”).”
However, the third embodiment of Tseng fails to teach “wherein the third lens is made of glass”. However, it should be noted that Tseng teaches in paragraph [0077]: “the lens elements of the photographing lens assembly can be made of glass or plastic material. When the lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design.”
Yoshioka teaches (claim 1) “A lens group (col. 4 lines 41-47: FIGS. 1, 4, 7, 10, 17, 20, 23, 26, 29 and 32, are sectional views showing projection lens systems according to Examples 1 to 4 and 6 to 11) consisting of:
a first lens, a second lens, a third lens, a fourth lens, and a fifth lens that are sequentially arranged (col. 1 lines 61-67: “lens system comprising: in order… a first lens unit having a positive focal length, a second lens unit having a negative focal length, a third lens unit having a positive focal length, a fourth lens unit having a positive focal length and a fifth lens unit having a negative focal length”)…
wherein the first lens, the third lens, and the fourth lens have positive focal power (col. 1 lines 61-67: “a first lens unit having a positive focal length… a third lens unit having a positive focal length, a fourth lens unit having a positive focal length”), and the second lens and the fifth lens have negative focal power (col. 1 lines 61-67: “a second lens unit having a negative focal length… and a fifth lens unit having a negative focal length”),
wherein the third lens is made of glass (col. 4 line 17: “the third group lens is of glass”),
wherein each of the second and fourth lenses is made of resin (col. 4 lines 41-46: “In these examples, the first lens unit G.sub.1, the second lens unit G.sub.2, the fourth lens unit G.sub.4, and the fifth lens unit G.sub.5 are acrylic lenses”. Acrylic is a cured resin.).”
Yoshioka further teaches (col. 4 lines 17-18): “If the third group lens is of glass, then its performance is scarcely affected by temperature change.”
Sano teaches (claim 1) “A lens group (Fig. 17 example 9 Table 9) consisting of:
a first lens, a second lens, a third lens, a fourth lens, and a fifth lens that are sequentially arranged from an object side to an image side (paragraph [0172]: “L1 is a first lens, L2 is a second lens, L3 is a third lens, L4 is a fourth lens, L5 is a fifth lens” see Fig. 17 and Table 9),
wherein the first lens, the third lens, and the fourth lens have positive focal power (paragraph [0171] the focal distance of lenses 1, 3 and 4 are positive), and the second lens and the fifth lens have negative focal power (paragraph [0171] the focal distance of lenses 2 and 5 are negative),
wherein the third lens is made of glass (paragraph [0174]: In Example 9, the third lens L3 is a glass-molded lens),
wherein each of the second and fourth lenses is made of resin (paragraph [0174]: “the other lenses are made of plastics.” Plastic is cured resin.).”
Sano also teaches many other embodiments, including example 8, with five lenses arranged positive, negative, positive, positive, negative where all the lenses are formed of plastics (see paragraphs [0166]-[0169]).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the materials of the lens group of Tseng from all plastic lenses to having the third lens glass and the remaining lenses plastic as taught by Yoshioka and Sano. One would have been motivated to make such a change because Tseng teaches when lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design (Tseng paragraph [0077]), Yoshioka teaches that the third glass lens has the benefit that its performance is scarcely affected by temperature change (Yoshioka col. 4 lines 17-18), and Sano teaches that choosing all plastic lenses or choosing the third lens being made of glass and the remaining four lenses being plastic in an imaging system arranged +-++- are both reasonable choices that an ordinary skilled artisan could make within the same inventive concept.
However, the Tseng – Yoshioka – Sano combination fails to teach “wherein a relative refractive index temperature coefficient β of at least one lens meets: -9x10-5≤β≤9x10-5.” The above combination made the material of the third lens glass which Yoshioka teaches is scarcely effected by temperature, but did not explicitly teach a numerical value for the relative refractive index temperature coefficient β.
Kitahara teaches (example 7, Fig. 7, Tables 19-21) (claim 1) “A lens group (paragraph [0100]: “imaging lens in Example 7”) consisting of:
a first lens (L2), a second lens (L3), a third lens (L4), a fourth lens (L5), and a fifth lens (L6) sequentially arranged from an object side to an image side (from left to right in Fig. 7 and from surface 3 to 13 in Table 19. Lenses L2 to L6 are a lens group in sequential order from the object side to the image side, despite the presence of an additional lens L1 on the object side thereof.),
wherein the first lens, the third lens, and the fourth lens have positive focal power (see Table 21 f2, f4 and f5 are positive, and thus the first, third and fourth lenses as identified above have positive focal power), and the second lens and the fifth lens have negative focal power (see Table 21, f3 and f6 are negative, thus the second and fifth lenses as identified above have negative focal power),
wherein a relative refractive index temperature coefficient β (paragraph [0084]: “A column of "dn/dt" shows the temperature coefficient of the refractive index of each optical element… "e-6" is omitted in the value of "dn/dt"”) of at least one lens meets: -9x10-5≤β≤9x10-5 (see Table 19, dn/dt of the last five lenses are 7.1, 27.7, 4.4, 4.9, 1.8 all in units of 10−6/° C, each of which is within the claimed range. To illustrate further, the endpoint of the claimed range 9x10-5 = 0.00009, whereas 7.1x10-6 =0.0000071 and 27.7x10-6=0.000027, both of which are smaller than 9x10-5. Given that the range includes zero, it is self-evident that each of the last five lenses have values of the refractive index temperature coefficient β that are within the claimed range.),
wherein the at least one lens is the third lens (this can be either L3 or L4 depending on how the lenses are identified),
wherein the third lens is made of glass (paragraph [0023]: “all of the first lens through the sixth lens are glass lenses” see also Table 19 “GLASS MATERIAL NAME”).”
Further note that in Table 1, Kitahara teaches a third lens with glass material S-TIM28 with dn/dt of 2.6 in units of 10−6/° C which has a refractive index of 1.68893 and an Abbe number of 31.1 that are quite similar to that of the third lens of Tseng with a refractive index of 1.660 and an Abbe number of 20.4.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the glass material of the third lens a glass material with -9x10-5≤β≤9x10-5 as taught by Kitahara, such as S-TIM28 with dn/dt of 2.6 in units of 10−6/° C which has a refractive index of 1.68893 and an Abbe number of 31.1 in the lens group of the Tseng – Yoshioka – Sano combination. One would have been motivated to make such a choice because Tseng teaches when lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design (Tseng paragraph [0077]), Yoshioka teaches that the third glass lens has the benefit that its performance is scarcely affected by temperature change (Yoshioka col. 4 lines 17-18), and Sano teaches that choosing all plastic lenses or choosing the third lens being made of glass and the remaining four lenses being plastic in an imaging system arranged +-++- are both reasonable choices that an ordinary skilled artisan could make within the same inventive concept. Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because the refractive index and Abbe number of S-TIM28 are quite similar to that of the original third lens in Tseng.
However, Tseng fails to teach “wherein the object side surface of …the second … is convex.”
Sekine teaches (example 1, Fig. 1 Table 1) (claim 1) “A lens group (imaging lens of example 1), consisting of (note that the stop of Sekine is on the object-side of the lens group, and the IR cut filter is on the image-side of the lens group, and thus are not excluded by the claim, which consists of the lenses between them):
a first lens (L1), a second lens (L2), a third lens (L3), a fourth lens (L4), and a fifth lens (L5) that are sequentially arranged from an object side to an image side (see example 1, Fig. 1 Table 1),
wherein the first lens, the third lens, and the fourth lens have positive focal power (Table 1 Constituent Lens Data the focal lengths of Lens 1, 3 and 4 are positive and thus lenses 1, 3 and 4 have positive focal power), and the second lens and the fifth lens have negative focal power (Table 1 Constituent Lens Data the focal lengths of Lens 2 and 5 are negative and thus lenses 2 and 5 have negative focal power),…
wherein each of the second, third, and fourth lens has object side and image side surfaces (the object side and image side surfaces of the second, third and fourth lenses),
wherein the object side surface of each of the second and third lens is convex (see the positive curvature radius of surfaces 4, and 6 in Table 1, indicating a convex object side of the second and third lenses), wherein the image side surface of each of the second and third lens is concave (see the positive curvature radius of surfaces 5 and 7 in Table 1, indicating concave image side surface of the second and third lenses),
wherein the object side surface of the fourth lens is concave (Table 1 the curvature radius of surface 8 is negative, indicating a concave object side surface of the fourth lens), and
wherein the image side surface of the fourth lens is convex (Table 1 the curvature radius of surface 9 is negative, indicating a convex image side surface of the fourth lens).”
Gross teaches (page 378 section 33.1.4) that bending a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Bending a lens involves modifying the curvatures of the two surfaces while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that bending a lens can be done without any great perturbation of the existing setup.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the shape of the second negative lens to be meniscus convex to the object-side and concave to the image-side as taught by Sekine rather than biconvex as originally disclosed in Tseng in the lens group of the Tseng – Yoshioka – Sano – Kitahara combination because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
Regarding claims 5 and 25, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination teaches the lens group according to claim 1 and the terminal device according to claim 22 and both Tseng and Kitahara teach “wherein a dispersion coefficient V3 of the at least one lens meets: 15<V3<100 (Tseng Table 5 V3=20.4 and Kitahara Table 1 V3=31.1).”
Regarding claims 6 and 26, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination teaches the lens group according to claim 1 and the terminal device according to claim 22 and Tseng further teaches “wherein the lens group meets the following: SP/LT<0.5 (given the values that follow SP/LT=0.172/3.811=0.045 which is in the claimed range),
wherein SP is a distance between the at least one lens and a next lens in the sequential arrangement (Table 5 the thickness of surface 7 is 0.172), and LT is a distance between a vertex position of an object side of the first lens and a vertex position of an image side of the fifth lens (Table 5 the sum of the thicknesses of surfaces 2 to 10 is 3.811).”
Regarding claims 8 and 27, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination teaches the lens group according to claim 1 and the terminal device according to claim 22 and Tseng example 3 further teaches “wherein an object side surfaces surface of the first lens is convex (paragraph [0132]: “an object-side surface 311 being convex in a paraxial region thereof”)… and an image side surface of the fifth lens is concave (paragraph [0136]: “an image-side surface 352 being concave in a paraxial region thereof”).”
However, Tseng example 3 fails to teach “and an image side surface of the first lens is concave; and wherein an object side surface of the fifth lens is concave.”
Tseng example 10, Table 19 teaches a five lens system arranged +-++- “wherein an object side surfaces surface of the first lens is convex (paragraph [0205]: “an object-side surface 1011 being convex in a paraxial region thereof”), and an image side surface of the first lens is concave (paragraph [0205]: “an image-side surface 1012 being concave in a paraxial region thereof.”); and wherein an object side surface of the fifth lens is concave (paragraph [0209]: “an object-side surface 1051 being concave in a paraxial region thereof”), and an image side surface of the fifth lens is concave (paragraph [0209]: “an image-side surface 1052 being concave in a paraxial region thereof.”).”
Gross teaches (page 378 section 33.1.4) that bending a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Bending a lens involves modifying the curvatures of the two surfaces while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that bending a lens can be done without any great perturbation of the existing setup.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the shape of the positive first lens from biconvex to positive meniscus convex to the object side as taught by Tseng example 10 in the lens group of the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination, because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the shape of the negative fifth lens from meniscus to biconcave as taught by Tseng example 10 in the lens group of the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination, because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
Regarding claims 16 and 30, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination teaches the lens group according to claim 1 and the terminal device according to claim 22 and Tseng example 3 teaches “wherein the lens group meets the following: TTL/EFL (TTL/EFL=8.641/8.55=1.01), wherein TTL is a total track length of the lens group (Table 5 the sum of the thicknesses of surfaces 2 to 13 is 8.641).”
However, Tseng example 3 fails to teach TTL/EFL<0.96, instead teaching a value of 1.01 which is so close that one of ordinary skill in the art would have expected them to have the same properties. Furthermore, Tseng teaches (paragraph [0075]): “When an axial distance between the object-side surface of the first lens element and the image surface is TL, the focal length of the photographing lens assembly is f, the following condition can be satisfied: 0.95<TL/f<1.20.”
The Examiner contends that the prior art, Tseng value of 1.01 for TTL/EFL is sufficiently close to the claimed range of TTL/EFL<0.96 to render it obvious. See MPEP 2144.05(I); Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium, with the court opining that "[t]he proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
Here, the difference between 1.01 and the endpoint of 0.96 is insubstantial, representing only a 5.3% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated TTL/EFL value from the prior art is substantially closer to Applicant’s claimed range than was the case in the Titanium Metals decision. Moreover, the present record does not demonstrate any substantial difference in operation, or any superior and unexpected effect, attributable to the claimed range of TTL/EFL<0.96.
In view of the above facts, a person of ordinary skill in the art before the filing date of the claimed invention would have reasonably concluded that the value of 1.01 for TTL/EFL, calculated from the prior art disclosure, is sufficiently close to the claimed range of TTL/EFL<0.96 to render it obvious because the difference between 1.01 and the endpoint of 0.96 is insubstantial, a value of 1.01 is reasonably expected to have the same effect as if it were the endpoint of the range for TTL/EFL, and because there is no evidence to suggest criticality of the endpoint of the claimed range and/or that the endpoint of the claimed range is related to any superior and/or unexpected result.
Claims 17-18 and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Tseng et al. US 2018/0143403 A1 (hereafter Tseng) in view of Yoshioka US 4,792,217 A (hereafter Yoshioka), Sano US 2011/0188131 A1 (hereafter Sano), Kitahara US 2015/0168692 A1 (hereafter Kitahara), Sekine US 2018/0052307 A1 (hereafter Sekine), and Gross et al. "Handbook of Optical Systems Volume 3: Aberration Theory and Correction of Optical Systems" (hereafter Gross) as applied to claims 1 and 22 above and further in view of Chae et al. US 2021/0072509 A1 (hereafter Chae).
Regarding claims 17 and 31, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination teaches the lens group according to claim 1 and the terminal device according to claim 22 and Tseng example 3 teaches “wherein the lens group further comprises an aperture stop (Table 5 “Ape. Stop”) and an infrared cut-off filter (IRCF) (Table 5 IR-cut filter); … and the infrared cut-off filter is disposed behind the image side of the fifth lens (see Table 5).”
However, Tseng fails to teach “an aperture stop… and the aperture stop is disposed between the third lens and the fourth lens.”
Chae teaches (claims 1 and 22) (first example, Figs. 1-4, Tables 1, 2, 13 and 14) “A lens group (imaging lens system 100)…
a first lens (110), a second lens (120), a third lens (130), a fourth lens (140), and a fifth lens (150) that are sequentially arranged from an object side to an image side (from left to right in Fig. 1 and from surface 1 to 20 in Table 1), and a relative refractive index temperature coefficient β (paragraph [0084]: “refractive index temperature coefficient (10−6/° C.). Refractive index temperature coefficients (DTn) of the lenses”) of at least one lens meets: -9x10-5≤β≤9x10-5 (see Table 1, DTn of the first five lenses are 3.6, 3.8, 3.7, -6.8 and -3.7 all in units of 10−6/° C, each of which is within the claimed range. To illustrate further, the endpoint of the claimed range -9x10-5 = -0.00009, whereas -6.8x10-6 =-0.0000068 which is smaller in absolute value than -9x10-5. Given that the range includes zero, it is self-evident that each of these five lenses have values of the refractive index temperature coefficient β that are within the claimed range.)
(claims 17 and 31) “wherein the lens group further comprises an aperture stop (Fig. 1 “ST” paragraph [0108]: “The stop ST may be disposed between the third lens 130 and the fourth lens 140”) and an infrared cut-off filter (IRCF) (filter 182, paragraph [0083]: “the filter may block light having infrared wavelength”. A filter that blocks infrared light is either a narrowband filter or an infrared cut-off filter. Although it is conceivable that an infrared filter might be a narrowband filter that only blocks certain infrared wavelengths, an ordinary skilled artisan would at once envisage that the infrared blocking filter is an infrared cut-off filter, because these are by far the most common type and are used to block IR light that is both harmful to the sensor and would degrade the visible light image. Thus Chae anticipates an infrared cut-off filter3); and
the aperture stop is disposed between the third lens and the fourth lens (Table 1 surface 7 “Stop”, Fig. 1 “ST” and paragraph [0108]: “The stop ST may be disposed between the third lens 130 and the fourth lens 140”), and the infrared cut-off filter is disposed behind the image side of the fifth lens (Fig. 1 filter 182, Table 1 surfaces 16 and 17 “Filter”).”
Chae further teaches (paragraph [0083]): “The stop may be configured to adjust an amount of light incident to the lenses. For example, the stop may be disposed between the third lens and the fourth lens.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a stop between the third and fourth lenses as taught by Chae in the lens group of the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination for the purpose of adjusting the light incident to the lenses as taught by Chae (paragraph [0083]).
Note that if claims 17 and 31 are interpreted as not introducing the claimed stop and infrared cut-off filter then the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross combination introduced for claims 1 and 22 also teaches claims 17 and 31.
Regarding claims 18 and 32, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross – Chae combination teaches the lens group according to claim 17 and the terminal device according to claim 31 and Tseng example 3 teaches “further comprising a first vignetting stop (Table 19 “Ape. Stop” at surface 1 which is a vignetting stop in that it is positioned before the first lens), which is disposed in front of the object side of the first lens (see Figure 19, the stop is in front of the object side of the first lens at least at the distance from the optical axis at which the stop is disposed).”
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Tseng et al. US 2018/0143403 A1 (hereafter Tseng) in view of Yoshioka US 4,792,217 A (hereafter Yoshioka), Sano US 2011/0188131 A1 (hereafter Sano), Kitahara US 2015/0168692 A1 (hereafter Kitahara), Sekine US 2018/0052307 A1 (hereafter Sekine), Gross et al. "Handbook of Optical Systems Volume 3: Aberration Theory and Correction of Optical Systems" (hereafter Gross) and Chae et al. US 2021/0072509 A1 (hereafter Chae) as applied to claim 18 above and further in view of Chen et al. US 2018/0364455 A1 (hereafter Chen).
Regarding claim 19, the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross – Chae combination teaches “The lens group according to claim 18,” however, Tseng fails to teach “further comprising a second vignetting stop, which is disposed behind the image side of the fifth lens.”
Chen teaches (claim 1) (sixth embodiment Fig. 11) “A lens group (Fig. 11), comprising:
a first lens (610), a second lens (620), a third lens (630), a fourth lens (640), and a fifth lens (650) that are sequentially arranged from an object side to an image side (paragraph [0177]: “in order from an object side to an image side”)”.
(claim 18) “further comprising a first vignetting stop (aperture stop 600), which is disposed in front of the object side of the first lens (See Fig. 11 and paragraph [0177]: “The image capturing lens system includes, in order from an object side to an image side, an aperture stop 600”).”
(claim 19) “further comprising a second vignetting stop (601), which is disposed behind the image side of the fifth lens (see Fig. 11 and paragraph [0177]: “in order from an object side to an image side, … a fifth lens element 650, a stop 601, a filter 660 and an image surface 670”).”
Chen further teaches (paragraphs [0094]-[0095]): “According to the present disclosure, the image capturing lens system can include at least one stop, such as an aperture stop, a glare stop or a field stop. Said glare stop or said field stop is set for eliminating the stray light and thereby improving the image quality thereof…
A middle stop disposed between the first lens element and the image surface is favorable for enlarging the view angle of the image capturing lens system and thereby provides a wider field of view for the same.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place a stop between the fifth lens element and the image surface as taught by Chen in the lens system of the Tseng – Yoshioka – Sano – Kitahara – Sekine – Gross – Chae combination because Chen teaches that a “middle stop disposed between the first lens element and the image surface is favorable for enlarging the view angle of the image capturing lens system and thereby provides a wider field of view for the same.” (Chen paragraph [0095]).
Allowable Subject Matter
Claims 9 and 28 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 9 and 28, the prior art taken either singly or in combination fails to teach or reasonably suggest the following limitation when taken in context of the claim as a whole: (claims 1 and 22) “wherein the object side surface of … the second … lens is convex, wherein the image side surface of … the second … lens is concave,” and (claims 9 and 28) “wherein the lens group meets the following: |EFL/R21|+|EFL/R22|=3.39, where R21 is a curvature radius of the object side surface of the second lens, and R22 is a curvature radius of the image side surface of the second lens.”
In particular, although the second lens of Tseng can be bent such that the object side surface of the second lens is convex and the image side surface of the second lens is concave in view of Sekine and Gross without changing the focal length of the second lens, it is not possible to retain such a small focal length of -1.93 without at least one correspondingly small curvature radius such that the expression |EFL/R21|+|EFL/R22| would always be considerably larger than 3.39. Thus there is no proper motivation without improper hindsight to modify Tseng to meet claim 9. The examiner further notes that there are no other examples in Tseng that could form a reasonable basis for a rejection of claim 9, either because it is similarly not possible to retain such a small focal length of the second lens without at least one correspondingly small curvature radius such that the expression |EFL/R21|+|EFL/R22| would always be considerably larger than 3.39 or because the other examples do not meet the condition that of F/EFL, or because they do not meet the claimed arrangement of lens powers.
Response to Arguments
Applicant's arguments filed December 31, 2025 have been fully considered but they are not persuasive.
Under the heading “Status of the Claims” on page 7 of 13 of the applicant’s remarks the applicant summarizes the amendments made to the claims and states that no new matter has been introduced. The examiner agrees the amended claims are supported by the application as filed.
Under the heading “Summary of the Office Action” on pages 7 and 8 of 13 of the applicant’s remarks the applicant summarizes the withdrawn, maintained and new rejections of the office action mailed October 1, 2025. No arguments are made in this section.
Under the heading “Summary of the Office Action’s “Response to Arguments”” on page 8 of 13 of the applicant’s remarks the applicant notes the presence of the response to arguments in the office action mailed October 1, 2025. No arguments are made in this section.
Under the heading “Response to Section 112 Rejection” on page 9 of 13 of the applicant’s remarks the applicant states that independent claims 1 and 22 have been amended to address the Section 112 rejection. The examiner agrees that the amendments to claims 1 and 22 address one of the 112 rejections thereof, however, no amendment was made or argument presented to overcome the remaining 112 issue regarding the interpretation of “a lens group consisting of” previously presented in claim 1 and now incorporated into claim 22.
In the opening portion under the heading “Response to Prior Art Rejections” on page 9 of 13 of the applicant’s remarks the applicant reproduces amended claim 1, with emphasis added to some of the claim limitations. No argument is made in this opening portion.
Under the heading “Kitahara Rejection of Independent Claim 22” on pages 9 and 10 of 13 of the applicant’s remarks the applicant argues that the amendments to claim 22 overcome this rejection. The examiner agrees, this rejection has been withdrawn.
Under the heading “Sekine and Chae Rejection of Independent Claims 1 and 22” on page 10 of 13 of the applicant’s remarks the applicant argues that the combination of Sekine and Chae fails to teach or suggest claims 1 and 22 as amended. This argument is moot because the rejection of claims 1 and 22 over Sekine and Chae have been withdrawn.
Under the heading “Tseng and Chae Rejection of Independent Claims 1 and 22” on pages 10 and 11 of 13 of the applicant’s remarks the applicant argues “Although Tseng describes a group of five lens arranged sequentially from an object side to an image side and having a distribution of positive and negative focal powers generally consistent with the claimed distribution, representative amended claim 1 reproduced above includes several structural, material, and functional features not taught or suggested by either Tseng or Chae. For example, Tseng does not teach any refractive-index temperature coefficient β. Tseng does not identify β as a design parameter. Tseng does not provide β values for any lens. Tseng is unconcerned with temperature variation. Consistent with this lack of concern, Tseng does not discuss thermal drift, temperature compensation, or any thermally motivated allocation of focal power. Also, Tseng does not disclose selecting any lens material based on consideration of β values for the purpose of improving thermal stability of the lens group.”
This argument is not persuasive for at least the following reasons. First, Tseng explicitly teaches that the ratio of the focal power of the third lens to the effective focal length of the lens group F/EFL=0.40 which is within the claimed range. Given that the claim is directed to a lens group, there is no reason why the allocation of focal power would need to be “thermally motivated” to meet this limitation in the claim. Secondly, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In particular, the claim limitations directed to the material and refractive-index temperature coefficient of the third lens are taught by the secondary references Yoshioka, Sano and Kitahara.
In the fourth and sixth paragraphs of page 11 of 13 of the applicant’s remarks the applicant argues that Chae does not make up for the deficiencies of Tseng. This argument is moot because in light of the amendments to the claim, Yoshioka, Sano and Kitahara are relied upon for the argued features, not Chae.
In the fifth paragraph of page 11 of 13 of the applicant’s remarks the applicant argues that new claim 33 is not taught or suggested by Tseng and Chae. This argument is moot because claim 33 is withdrawn as being directed to a non-elected invention. In particular, since the applicant has received an action on the merits for the originally presented invention, the invention of claims 1 and 22 have been constructively elected by original presentation for prosecution on the merits, and new claim 33 lacks unity of invention with the elected group as explained above.
In the paragraph spanning pages 11 and 12 of 13 of the applicant’s remarks the applicant first argues that neither Tseng nor Chae teach a glass third lens as newly recited. This is not quite accurate. As pointed out in the new rejection above Tseng does teach in paragraph [0077]: “the lens elements of the photographing lens assembly can be made of glass or plastic material. When the lens elements are made of glass material, the refractive power distribution of the photographing lens assembly may be more flexible to design.”
In the first three lines of page 12 of 13 of the applicant’s remarks the applicant argues “Nor is there any recognition in either Tseng or Chae that selecting glass as the material for the third lens would assist in achieving a β value within the claimed range or reduce temperature effects in the architecture of the lens group described in Tseng.” This argument is not persuasive. That glass is less susceptible to temperature variations and has lower β values is common knowledge within the field as evidenced by at least Yoshioka and Kitahara relied upon above.
In the second paragraph of page 12 of 13 of the applicant’s remarks the applicant argues that Tseng fails to teach the surface-shape features of the second, third and fourth lenses. This argument is not persuasive because the new grounds of rejection now relies upon the third example in Tseng which teaches the surface-shape features of the third and fourth lenses, and upon Sekine which teaches the surface-shape features of the second lens.
In the third paragraph of page 12 of 13 of the applicant’s remarks the applicant argues “Finally, although the Office action asserts Tseng's incidental F/EFL ratios fall within the claimed range, amended claim 1 describes a range of the F/EFL ratio in the context of selecting a third lens based on its B value and based on its allocation of focal power to reduce temperature sensitivity of the lens group. Neither Tseng nor Chae teaches using a range of values for the F/EFL ratio as a design constraint. Nor does Tseng or Chae teach adjusting lens spacing, curvature, or surface shape for the purpose of achieving values of the ratio within the range. Nothing in either Tseng or Chae links the F/EFL ratio to temperature compensation, material R selection, or focal-power allocation.” This argument is not persuasive for at least the following reasons. First, as noted above and acknowledged by the applicant, Tseng already teaches F/EFL=0.40 for the third lens which is within the claimed range, thus anticipating “the lens group meets the following: 0.27<F/EFL<0.9, and F is a focal length of the at least one lens, and EFL is the effective focal length of the lens group, wherein the at least one lens is the third lens.” Second, the mental processes of the ordinary skilled artisan when designing a lens system are only pertinent to the claim to the extent that they result in distinct structural claimed features. Since all of the limitations of the claim are suggested by the combination of prior art applied, the mental processes are irrelevant.
In the first paragraph under the heading “Sekine/Tseng, Chae and Gross/Chen Rejections of Dependent Claims 8, 9, and 19” on page 12 of 13 of the applicant’s remarks the applicant states that “Each of Gross and Chen is cited to support rejections of one or more of dependent claims 8, 9, and 19. Based on Applicant's understanding of the teachings in Gross and Chen, neither is relevant to features of amended claim 1 discussed above in connection with the rejections based on Sekine, Chae, Tseng, and Chae.” The examiner respectfully disagrees. The teachings of Sekine and Gross with respect to the surface shapes of the second lens are pertinent to the question of the obviousness of claims 1 and 22.
In the second paragraph under the heading “Sekine/Tseng, Chae and Gross/Chen Rejections of Dependent Claims 8, 9, and 19” on page 12 of 13 of the applicant’s remarks the applicant states that “The final Office action at page 29 cites Gross at page 378 section 33.1.4 for allegedly teaching bending lenes to achieve "better performance" is amongst operations an ordinary skilled artisan would typically employ. Applicant understands the final Office action relies on gross to dismiss the features of dependent claims 8 and 9 as mere design choices.” This is a characterization of the rejection, but does not appear to present an argument. If the applicant intended the characterization of the application of Gross as dismissing the features of claims 8 and 9 without proper application of the standards for obviousness, the applicant has failed to explain what legal or factual basis it is that the applicant thinks is lacking from the rejection.
In the third paragraph under the heading “Sekine/Tseng, Chae and Gross/Chen Rejections of Dependent Claims 8, 9, and 19” on page 12 of 13 of the applicant’s remarks the applicant states that “The final Office action at pages 32 and 33 cites Chen at Fig. 11 and paragraphs [0094], [0095], and [0177] for allegedly teaching a second vignetting stop disposed behind an image side of a fifth lens.” This is a characterization of the rejection, but does not appear to present an argument. If the applicant intended the adverb “allegedly” to be taken as an argument, the examiner would point out that these teachings of Chen are facts not allegations.
Under the heading “Request for Rejoinder” on page 12 of 13 of the applicant’s remarks the applicant requests the rejoinder of dependent claim 10, upon the allowance of its base claim. This request is denied at the present time given that claim 1 is not yet in condition for allowance.
In the conclusion section on page 13 of 13 of the applicant’s remarks the applicant concludes that all of the pending claims are allowable in view of the previous arguments. The arguments underlying this conclusion have been addressed above.
The request for an interview with the examiner in paragraph 5 of page 13 of 13 of the applicant’s remarks is denied. The nature and number of the outstanding issues of patentability are such that it does not appear that an interview would result in expediting allowance of the application at this time. See MPEP §713.01 (IV) “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application… Where a complete reply to a first action includes a request for an interview, the examiner, after consideration of the reply, should grant such an interview request if it appears that the interview would result in expediting the allowance of the application.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham can be reached on 571-272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARA E RAKOWSKI/ Primary Examiner, Art Unit 2872
1 Note that no written description issue is raised by amended claim 1 in this regard, because each of the stops and the infrared cut-off filter were discussed as being optional in the specification.
2 Note that no written description issue is raised by amended claim 22 in this regard, because each of the stops and the infrared cut-off filter were discussed as being optional in the specification.
3 See MPEP § 2131.02(III). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).