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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/10/2025 has been entered.
Response to Amendment
The amendments to the claims, in the submission dated 11/10/2025, are acknowledged and accepted. Claims 1, 7, 8, 11, and 13-15 are amended. Claims 2, 9, and 19 are cancelled by the applicant. Claims 1, 3-8, 10-18, and 20 are pending.
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, 3-7, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kuo US PGPub 2020/0393652 A1 (of record, see Office action dated 02/21/2025, hereinafter, “Kuo”) in view of Gross et al. "Handbook of Optical Systems Volume 3: Aberration Theory and Correction of Optical Systems" Weinheim Germany, WILEY-VCH Verlag GmbH & Co. KGaA, pp. 377-379 (Year: 2007) (of record, see Office action dated 02/21/2025, hereinafter, “Gross”) and Chen US PGPub 2020/0393653 A1 (of record, see Office action dated 02/21/2025, hereinafter, “Chen”).
Regarding amended independent claim 1, Kuo discloses an optical imaging lens (refer to at least title and abstract disclosing an optical photographing lens assembly), from an object side to an image side in order along an optical axis (nine lens elements are listed in order from an object side to an image side, par. [0046]) comprising: a first lens element, a second lens element, a third lens element, a fourth lens element, a fifth lens element, a sixth lens element, a seventh lens element, an eighth lens element and a ninth lens element (see at least Fig. 15, depicting a schematic view of an image capturing unit according to the eighth embodiment, par. [0268], showing first through ninth lens elements labeled 810, 820, 830, 840, 850, 860, 870, 880, and 890), the first lens element to the ninth lens element each having an object-side surface facing toward the object side and allowing imaging rays to pass through as well as an image-side surface facing toward the image side and allowing the imaging rays to pass through (as shown in Fig. 15, light rays pass through lens elements 810, 820, 830, 840, 850, 860, 870, 880, and 890 from an object side to an image side to image sensor 899, therefore all lens elements have object-side surfaces and image-side surfaces that allow imaging rays to pass through to reach the image sensor 899, as must be the case in order for the device to function as intended), wherein:
a periphery region of the image-side surface of the first lens element is concave (see Fig. 15, lens element 810 has a periphery region on the image-side surface that is concave);
a periphery region of the object-side surface of the fourth lens element is concave (see Fig. 15, fourth lens element 840 has concave periphery regions, and Kuo discloses fourth lens element 840 has one inflection point on the object side, par. [0272], which, as understood by the Examiner, indicates a change in curvature of the object-side surface of lens element 840, and from Table 15 lens 4 has a curvature radius of -7.9666 in the paraxial region, a negative radius of curvature defining a concave surface as is understood by the Examiner, and thus the off-axis, i.e., periphery region, of the fourth lens element 840 of Kuo has a concave curvature);
an optical axis region of the object-side surface of the sixth lens element is concave (Table 15, detailed data on the eighth embodiment lists lens 6, i.e., lens element 860, with a negative radius of curvature of -24.328 in the paraxial region, therefore the paraxial, i.e., optical axis region, of the sixth lens element is concave on the object side); and
an optical axis region of the object-side surface of the ninth lens element is convex (Table 15, detailed data on the eighth embodiment lists lens 9, i.e., lens element 890, with a positive radius of curvature of 2.519 in the paraxial region, therefore the paraxial, i.e., optical axis region, of the ninth lens element is convex on the object side);
wherein lens elements included by the optical imaging lens are only the nine lens elements described above (Fig. 15 depicts no additional lens elements disposed between each of the adjacent nine lens elements, par. [0268]), D11t22 is defined as a distance from the object-side surface of the first lens element to the image-side surface of the second lens element along the optical axis, D41t52 is defined as a distance from the object-side surface of the fourth lens element to the image-side surface of the fifth lens element along the optical axis, D22t41 is defined as a distance from the image-side surface of the second lens element to the object-side surface of the fourth lens element along the optical axis, G23 is an air gap between the second lens element and the third lens element along the optical axis and G34 is an air gap between the third lens element and the fourth lens element along the optical axis to satisfy (G23+G34)/|G23-G34| ≥ 3.000 (Table 15, air gap between lens 2 and lens 3 is G23 = 0.425, and air gap between lens 3 and lens 4 is G34 = 0.444, therefore the ratio (G23+G34)/|G23-G34| = 45.7, satisfying the instant condition), (Dl1t22+D41t52)/D22t41 ≤ 2.000 (refer to Table 15 for details of the eighth embodiment, where the relevant parameters are disclosed, e.g., D11t22 = 0.769, D41t52 = 1.269, and D22t41 = 0.39, therefore (D11t22 + D41t52)/D22t41 = 0.91, satisfying the instant condition).
Kuo in the eighth embodiment does not disclose an optical axis region of the object-side surface of the seventh lens element is convex (Table 15 provides detailed data on the eighth embodiment and lists lens 7, i.e., lens element 870, with a negative radius of curvature of -2.993 in the paraxial region, therefore the paraxial, i.e., optical axis region, of the seventh lens element is concave on the object side), nor does Kuo in the eighth embodiment disclose an Abbe number of the fourth lens element is greater than an Abbe number of the ninth lens element (Kuo provides the Abbe number of the fourth lens element in the eighth embodiment as 20.4, and the Abbe number of the ninth lens element in the eighth embodiment as 56.0).
However, Kuo in at least the second and third embodiments, discloses a seventh lens element with an object-side surface that is convex in the paraxial region, see Table 3, lens 7, i.e., lens element 270, has a positive radius of curvature on the object side, and see Table 5, lens 7, i.e., lens element 370, has a positive radius of curvature on the object side. Therefore, Kuo discloses embodiments of an optical photographing lens assembly with convex object-side surfaces in the optical axis region for the seventh lens element.
In the general field of optical systems, 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. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have adjusted the curvature of the object-side surface of the seventh lens element in the eighth embodiment of Kuo, 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).
The prior art combination of Kuo in view of Gross does not disclose the condition wherein an Abbe number of the fourth lens element is greater than an Abbe number of the ninth lens element.
In the same field of invention, Chen discloses an optical imaging lens (refer to at least title and abstract disclosing an optical lens system), from an object side to an image side in order along an optical axis comprising: a first lens element, a second lens element, a third lens element, a fourth lens element, a fifth lens element, a sixth lens element, a seventh lens element, an eighth lens element and a ninth lens element (refer to at least abstract and par. [0005] thereof disclosing an optical lens system with nine lens elements from object side to image side, in order along an optical axis, and see at least Fig. 5 depicting a third embodiment of the lens system and refer to Table 5 for parameters of the third embodiment having nine lens elements, par. [0185] of Chen), the first lens element to the ninth lens element each having an object-side surface facing toward the object side and allowing imaging rays to pass through as well as an image-side surface facing toward the image side and allowing the imaging rays to pass through (Chen Fig. 5 shows all lens elements having object-side and image-side surfaces allowing rays to pass through the lens, as is necessary for the optical lens system to function as intended), wherein:
a periphery region of the image-side surface of the first lens element is concave (Chen Fig. 5, third embodiment has first lens element 310 with a periphery region of the image-side surface 312 that is concave, pars. [0173-174] thereof);
a periphery region of the object-side surface of the fourth lens element is concave (Chen Fig. 5, third embodiment has fourth lens element 340 with object-side surface 341 that is concave in the periphery region, par. [0177] thereof);
an optical axis region of the object-side surface of the sixth lens element is concave (Chen Fig. 5, third embodiment has sixth lens element 360 with object-side surface 361 that is concave, refer also to Table 5, par. [0179] thereof); and
an optical axis region of the object-side surface of the ninth lens element is convex (Chen Fig. 5, third embodiment has ninth lens element 390 with object-side surface 391 that is convex, par. [0182] thereof);
wherein lens elements included by the optical imaging lens are only the nine lens elements described above (see at least Fig. 5 of Chen, and refer to pars. [0005] and [0015] thereof, disclosing only nine lens elements in the optical lens system) and Chen further discloses an Abbe number of the fourth lens element is greater than an Abbe number of the ninth lens element (refer to Table 5, third embodiment lens 4, i.e., lens element 340, has an Abbe number of 56.0, and lens 9, i.e., lens element 390, has an Abbe number of 40.4).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Chen to the disclosure of Kuo to optimize the Abbe numbers of at least the fourth and ninth lenses of the eighth embodiment of Kuo, because Abbe numbers of lens elements are art recognized results effective variables, in that Abbe numbers of lenses in an optical system influence the resulting aberrations in the final image, as taught by Chen in at least par. [0058] and Kuo in at least par. [0056]. Thus, a person having ordinary skill would have been motivated to optimize the results-effective variables n4 and n9 because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Furthermore, it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07. In this case, the selection of materials for lenses based on Abbe number is within the skill of a person having ordinary skill in the art, since the selection of materials for lenses based on inherent Abbe numbers is based on optimizing the resulting chromatic aberration in the final image produced by the system.
Regarding dependent claim 3, Kuo in view of Gross and Chen (hereinafter, “modified Kuo”) discloses the optical imaging lens of claim 1, and Kuo further discloses wherein n4 is the Abbe number of the fourth lens element, n9 is the Abbe number of the ninth lens element, and the optical imaging lens satisfies the relationship: n4 + n9 ≤ 100.000 (refer to Kuo Table 15 for details of the eighth embodiment, which lists the Abbe number for lens 4 as 20.4 and the Abbe number for lens 9 as 56, the sum of which is 76.4, satisfying the instant condition, and refer to Chen Table 5, third embodiment lens 4, i.e., lens element 340, has an Abbe number of 56.0, and lens 9, i.e., lens element 390, has an Abbe number of 40.4, the sum of which is 96.4, and as such Chen also satisfies the instant condition).
Regarding dependent claim 4, modified Kuo discloses the optical imaging lens of claim 1, and Kuo further discloses wherein T5 is a thickness of the fifth lens element along the optical axis, T6 is a thickness of the sixth lens element along the optical axis, G45 is an air gap between the fourth lens element and the fifth lens element along the optical axis, G56 is an air gap between the fifth lens element and the sixth lens element along the optical axis (refer to Table 15 of Kuo for details of the eighth embodiment, where the equivalent parameters are disclosed), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: 1.900 ≤ (G56+T6)/(G45+T5) (per Kuo Table 15, the ratio (G56+T6)/(G45+T5) = 1.07 for the eighth embodiment).
However, Kuo discloses a first embodiment, refer to Table 1 for details thereof, with values for the parameters G45, G56, T5, and T6 that provides a value (G56+T6)/(G45+T5) = 1.91.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for G45, G56, T5, and T6 in a first embodiment that overlaps the claimed range of greater than 1.900. 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 to optimize the size and spacing of the lens elements of the eighth embodiment of Kuo, such as by looking to the size and spacing of the lens elements of the first embodiment of Kuo, such that the parameters G45, G56, T5, and T6 are optimized to have a value greater than 1.90, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, size and spacing of lens elements is an art recognized results effective variable in that the size and spacing of lenses in an optical system influences the total length of the optical system, as taught by Kuo in at least par. [0053]. Thus, one would have been motivated to optimize the results-effective variables G45, G56, T5, and T6, because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Regarding dependent claim 5, modified Kuo discloses the optical imaging lens of claim 1, and Kuo further discloses wherein Fno is an f-number of the optical imaging lens, D11t51 is defined as a distance from the object-side surface of the first lens element to the object-side surface of the fifth lens element along the optical axis, D62t82 is defined as a distance from the image-side surface of the sixth lens element to the image-side surface of the eighth lens element along the optical axis, D51t62 is defined as a distance from the object-side surface of the fifth lens element to the image-side surface of the sixth lens element along the optical axis (refer to Table 15 of Kuo for details of the eighth embodiment, where equivalent parameters are disclosed), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: Fno*(D11t51+D62t82)/D51t62 ≤ 6.300 (refer to Kuo Table 15 for details of the eighth embodiment, where the condition Fno*(D11t51+D62t82)/D51t62 = 12.07).
However, Kuo discloses a second embodiment, refer to Table 3 for details thereof, where the parameters provide a value for the condition Fno*(D11t51+D62t82)/D51t62 = 4.73.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for Fno, D11t51, D62t82, and D51t62 in a second embodiment that overlaps the claimed range of less than or equal to 6.300. 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 to optimize the size and spacing of the lens elements of the eighth embodiment of Kuo, such as by looking to the size and spacing of the lens elements of the second embodiment of Kuo, such that the parameters Fno, D11t51, D62t82, and D51t62 are optimized to have a value less than 4.8, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, size and spacing of lens elements is an art recognized results effective variable in that the size and spacing of lenses in an optical system influences the total length of the optical system, as taught by Kuo in at least par. [0053]. Thus, one would have been motivated to optimize the results-effective variables D11t51, D62t82, and D51t62, because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Regarding dependent claim 6, modified Kuo discloses the optical imaging lens of claim 1, and Kuo further discloses wherein EPD is an entrance pupil diameter of the optical imaging lens, TTL is the distance from the object-side surface of the first lens element to an image plane along the optical axis, D62t82 is defined as a distance from the image-side surface of the sixth lens element to the image-side surface of the eighth lens element along the optical axis (refer to Tables 15 and 16 of Kuo for details of the eighth embodiment, where equivalent parameters are disclosed), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: 6.100 ≤ (EPD+TTL)/D62t82 (refer to Kuo Table 15 for details of the eighth embodiment, where the parameters provide a value for the condition (EPD+TTL)/D62t82 = 5.16).
However, Kuo discloses a second embodiment, refer to Table 3 for details thereof, where the parameters provide a value for the condition (EPD+TTL)/D62t82 =10.96.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for EPD, TTL, and D62t82 in a second embodiment that overlaps the claimed range of greater than or equal to 6.100. 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 to optimize the size and spacing of the lens elements of the eighth embodiment of Kuo, such as by looking to the size and spacing of the lens elements of the second embodiment of Kuo, such that the parameters EPD, TTL, and D62t82 are optimized to have a value greater than 10, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, size and spacing of lens elements is an art recognized results effective variable in that the size and spacing of lenses in an optical system influences the total length of the optical system, as taught by Kuo in at least par. [0053]. Thus, one would have been motivated to optimize the results-effective variables EPD, TTL, and D62t82, because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Regarding amended dependent claim 7, modified Kuo discloses the optical imaging lens of claim 1, and Kuo in the eighth embodiment further discloses wherein T3 is a thickness of the third lens element along the optical axis, D62t82 is defined as a distance from the image-side surface of the sixth lens element to the image-side surface of the eighth lens element along the optical axis, and the optical imaging lens satisfies the relationship: (D1t22+D62t82)/(G23+T3) ≤ 4.100 (refer to Table 15 for details of the eighth embodiment, where the condition (D11t22+D62t82)/(G23+T3) = 2.34, satisfying the instant condition).
Regarding amended independent claim 15, Kuo discloses an optical imaging lens (refer to at least title and abstract disclosing an optical photographing lens assembly), from an object side to an image side in order along an optical axis (nine lens elements are listed in order from an object side to an image side, par. [0046]) comprising: a first lens element, a second lens element, a third lens element, a fourth lens element, a fifth lens element, a sixth lens element, a seventh lens element, an eighth lens element and a ninth lens element (see at least Fig. 15, depicting a schematic view of an image capturing unit according to the eighth embodiment, par. [0268], showing first through ninth lens elements labeled 810, 820, 830, 840, 850, 860, 870, 880, and 890), the first lens element to the ninth lens element each having an object-side surface facing toward the object side and allowing imaging rays to pass through as well as an image-side surface facing toward the image side and allowing the imaging rays to pass through (as shown in Fig. 15, light rays pass through lens elements 810, 820, 830, 840, 850, 860, 870, 880, and 890 from an object side to an image side to image sensor 899, therefore all lens elements have object-side surface and image-side surfaces that allow imaging rays to pass through to reach the image sensor 899, as must be the case in order for the device to function as intended), wherein:
an optical axis region of the object-side surface of the fourth lens element is concave (Table 15 of detailed data on the eighth embodiment lists lens 4, i.e., lens element 840, with a negative radius of curvature of -7.966 in the paraxial region of the object side, therefore the paraxial, i.e., optical axis region, of the object-side surface of the fourth lens element is concave);
an optical axis region of the object-side surface of the sixth lens element is concave (Table 15 of detailed data on the eighth embodiment lists lens 6, i.e., lens element 860, with a negative radius of curvature of -24.328 in the paraxial region of the object side, therefore the paraxial, i.e., optical axis region, of the sixth lens element is concave on the object side); and
wherein lens elements included by the optical imaging lens are only the nine lens elements described above (no additional lens elements are disposed between each of the adjacent nine lens elements of the eighth embodiment, par. [0268]), G23 is an air gap between the second lens element and the third lens element along the optical axis and G34 is an air gap between the third lens element and the fourth lens element along the optical axis to satisfy (G23+G34)/|G23-G34| ≥ 4.400 (Table 15, air gap between lens 2 and lens 3 is G23 = 0.425, and air gap between lens 3 and lens 4 is G34 = 0.444, therefore the ratio (G23+G34)/|G23-G34| = 45.7, satisfying the instant condition).
Kuo in the eighth embodiment does not disclose an optical axis region of the image-side surface of the seventh lens element is concave (Table 15 provides detailed data on the eighth embodiment and lists lens 7, i.e., lens element 870, with a negative radius of curvature of -19.010 in the paraxial region of the image-side surface, therefore the paraxial, i.e., optical axis region, of the image-side surface seventh lens element is convex), and Kuo does not disclose the limitation Fno*(ALT+BFL)/AAG ≤ 3.700 where Fno is an f-number of the optical imaging lens, ALT is a sum of nine thicknesses of the nine lens elements from the first lens element to the ninth lens element along the optical axis, BFL is a distance from the image-side surface of the ninth lens element to an image plane along the optical axis, AAG is a sum of eight air gaps from the first lens element to the ninth lens element along the optical axis (refer to Table 15 for details of the eighth embodiment, where the values provide a condition Fno*(ALT+BFL)/AAG = 6.72), and Kuo does not disclose an Abbe number of the fourth lens element is greater than an Abbe number of the ninth lens element.
However, Kuo in at least the third embodiment discloses a seventh lens element with an image-side surface that is concave in the paraxial region, see Table 5, lens 7, i.e., lens element 370, has a positive radius of curvature on the image side. Therefore, Kuo discloses an embodiment of an optical photographing lens assembly with a concave image-side surface in the optical axis region for the seventh lens element.
In the general field of optical systems, 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. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have adjusted the curvature of the image-side surface of the seventh lens element in the eighth embodiment of Kuo, 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).
The prior art combination of Kuo eighth and third embodiment in view of the teachings of Gross does not disclose parameters that satisfy the limitation Fno*(ALT+BFL)/AAG ≤ 3.700.
However, Kuo in at least the second embodiment discloses values for Fno, ALT, BFL, and AAG that satisfies the condition Fno*(ALT+BFL)/AAG ≤ 3.700. Refer to Table 3 for details of the second embodiment, where the condition Fno*(ALT+BFL)/AAG = 3.83.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for Fno, ALT, BFL, and AAG in at least the second embodiment that are within 3.6% of the claimed range of less than or equal to 3.700.
The Examiner contends that the value of 3.83 for Fno*(ALT+BFL)/AAG in the second embodiment of Kuo is sufficiently close to the claimed range of less than or equal to 3.70 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 3.83 and the endpoint of 3.70 is insubstantial, representing only a 3.6% difference, while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated Fno*(ALT+BFL)/AAG 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 less than or equal to 3.700.
In view of the above facts, a person having ordinary skill in the art, before the filing date of the claimed invention, would have reasonably concluded that the value of 3.83 for Fno*(ALT+BFL)/AAG, calculated from the prior art disclosure, is sufficiently close to the claimed range of less than or equal to 3.700 to render it obvious because the difference between 3.83 and the endpoint of 3.700 is insubstantial, a value of 3.83 is reasonably expected to have the same effect as if it were the endpoint of the range for Fno*(ALT+BFL)/AAG, 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.
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 to optimize the parameters Fno, ALT, BFL, and AAG of the eighth embodiment of Kuo, such as by looking to the parameters of the second embodiment of Kuo, such that the parameters Fno, ALT, BFL, and AAG provide a value equal to 3.83, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, the parameters Fno, ALT, BFL, and AAG are art recognized results effective variables in these parameters influences the size of the optical system, as taught by Kuo in at least par. [0053]. Thus, one would have been motivated to optimize the results-effective variables Fno, ALT, BFL, and AAG, because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
The prior art combination of Kuo (second, third, and eighth embodiments thereof) in view of Gross does not disclose an Abbe number of the fourth lens element is greater than an Abbe number of the ninth lens element.
In the same field of invention, Chen discloses an optical imaging lens (refer to at least title and abstract disclosing an optical lens system), from an object side to an image side in order along an optical axis comprising: a first lens element, a second lens element, a third lens element, a fourth lens element, a fifth lens element, a sixth lens element, a seventh lens element, an eighth lens element and a ninth lens element (refer to at least abstract and par. [0005] of Chen disclosing an optical lens system with nine lens elements from object side to image side, in order along an optical axis, see at least Fig. 5 depicting a third embodiment of the lens system and Table 5 for parameters of the third embodiment having nine lens elements, par. [0185] thereof), the first lens element to the ninth lens element each having an object-side surface facing toward the object side and allowing imaging rays to pass through as well as an image-side surface facing toward the image side and allowing the imaging rays to pass through (Fig. 5 of Chen shows all lens elements having object-side and image-side surfaces allowing rays to pass through the lens, as is necessary for the optical lens system to function as intended), wherein:
an optical axis region of the object-side surface of the fourth lens element is concave (Chen Fig. 5, third embodiment has lens element 340 with object-side surface 341 that is concave, refer to par. [0177] and Table 5 thereof);
an optical axis region of the object-side surface of the sixth lens element is concave (Chen Fig. 5, third embodiment has lens element 360 with object-side surface 361 that is concave, par. [0179] and Table 5 thereof); and
wherein lens elements included by the optical imaging lens are only the nine lens elements described above (see at least Fig. 5 of Chen and refer to pars. [0005] and [0015] thereof), and an Abbe number of the fourth lens element is greater than an Abbe number of the ninth lens element (Chen Table 5, third embodiment lens 4, i.e., lens element 340, has an Abbe number of 56.0, and lens 9, i.e., lens element 390 has an Abbe number of 40.4, satisfying the instant limitations).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Chen to the disclosure of Kuo to optimize the Abbe numbers of at least the fourth and ninth lenses of the eighth embodiment of Kuo, because in the current instance, the Abbe numbers of lens elements are art recognized results effective variables in that the Abbe numbers of lenses in an optical system influence the resulting aberrations in the final image, as taught by Chen in at least par. [0058] and Kuo in at least par. [0056]. Thus, a person having ordinary skill would have been motivated to optimize the results-effective variables n4 and n9 because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Furthermore, it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07. In this case, the selection of materials for lenses based on Abbe number is within the skill of a person having ordinary skill in the art, since the selection of materials for lenses based on inherent Abbe numbers is based on optimizing the resulting chromatic aberration in the final image produced by the system.
Regarding dependent claim 16, modified Kuo discloses the optical imaging lens of claim 15, and Kuo in the eighth embodiment further discloses wherein D62t92 is defined as a distance from the image-side surface of the sixth lens element to the image-side surface of the ninth lens element along the optical axis, T6 is a thickness of the sixth lens element along the optical axis, G56 is an air gap between the fifth lens element and the sixth lens element along the optical axis (refer to Table 15 of Kuo disclosing equivalent parameters for the eighth embodiment), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: D62t92/(G56+T6) ≤ 5.100 (refer to Kuo Table 15 for details of the eighth embodiment, where values for the relevant parameters are given, such that the condition D62t92/(G56+T6) = 11.79).
However, Kuo discloses first and second embodiments, refer to Table 1 for details of the first embodiment and to Table 3 for details of the second embodiment, where the given parameters provide a value for the condition D62t92/(G56+T6) =2.67 for the first embodiment, and D62t92/(G56+T6) = 1.73 for the second embodiment.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for D62t92, G56, and T6 in first and second embodiments that overlaps the claimed range of less than 5.100. 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 to optimize the size and spacing of the lens elements of the eighth embodiment of Kuo, such as by looking to the size and spacing of the lens elements of the first and second embodiments of Kuo, such that the parameters D62t92, G56, and T6 are optimized to have a value less than 2.7, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, size and spacing of lens elements is an art recognized results effective variable in that the size and spacing of lenses in an optical system influences the total length of the optical system, as taught by Kuo in at least par. [0053]. Thus, one would have been motivated to optimize the results-effective variables D62t92, G56, and T6 of the eighth embodiment disclosed by Kuo, because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Regarding dependent claim 17, modified Kuo discloses the optical imaging lens of claim 15, and Kuo in the eighth embodiment discloses wherein n3 is an Abbe number of the third lens element, n9 is the Abbe number of the ninth lens element (refer to Kuo Table 15 disclosing Abbe numbers for all lens elements of the eighth embodiment), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: n3 + n9 ≤ 100.000 (refer to Table 15 for details of the eighth embodiment, where the condition n3 + n9 = 111.5).
However, Kuo in at least the first and fifth embodiments discloses values for the Abbe numbers of third and ninth lenses that satisfies the instant condition. Refer to Table 1 for details of the first embodiment, where the condition n3 + n9 = 63.8, and refer to Table 9 for details of the fifth embodiment, where the condition n3 + n9 = 76.4, satisfying the instant condition.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for Abbe numbers in at least the first and fifth embodiments that overlap the claimed range of less than 100.000. 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 to optimize the Abbe numbers of at least the third and ninth lenses of the eighth embodiment of Kuo, such as by looking to the Abbe numbers for the lens elements of the first and fifth embodiments of Kuo, such that the sum of the Abbe numbers n3 + n9 are less than 77, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, the Abbe numbers of lens elements are an art recognized results effective variable in that Abbe numbers of lenses in an optical system influences resulting aberrations in the final image, as taught by Kuo in at least par. [0056]. Thus, one would have been motivated to optimize the results-effective variables n3 and n9, because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Furthermore, it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07. In this case, the selection of materials for lenses based on Abbe number is within the skill of a person having ordinary skill in the art, since the selection of materials for lenses based on inherent Abbe numbers is based on optimizing the resulting chromatic aberration in the final image produced by the system.
Regarding dependent claim 18, modified Kuo discloses the optical imaging lens of claim 15, and Kuo in the eighth embodiment further discloses wherein D11t32 is defined as a distance from the object-side surface of the first lens element to the image-side surface of the third lens element along the optical axis, T4 is a thickness of the fourth lens element along the optical axis, T5 is a thickness of the fifth lens element along the optical axis, G45 is an air gap between the fourth lens element and the fifth lens element along the optical axis (refer to Kuo Table 15 disclosing equivalent parameters for the eighth embodiment), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: (Dl1t32+G45+T5)/(G34+T4) ≤ 2.800 (refer to Table 15 for details of the eighth embodiment, where the parameters provided therein give a value for the condition (D11t32 + G45 + T5)/(G34 + T4) = 3.34).
However, Kuo discloses a sixth embodiment, refer to Table 11 for details of the sixth embodiment, where the given parameters provide a value for the condition (D11t32 + G45 + T5)/(G34 + T4) =2.64 for the sixth embodiment.
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Kuo discloses parameters for D11t32, G34, G45, T4, and T5 in the sixth embodiment that overlaps the claimed range of less than 2.800. 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 to optimize the size and spacing of the lens elements of the eighth embodiment of Kuo, such as by looking to the size and spacing of the lens elements of the sixth embodiment of Kuo, such that the parameters D11t32, G34, G45, T4, and T5 are optimized to have a value less than 2.7, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, size and spacing of lens elements is an art recognized results effective variable in that the size and spacing of lenses in an optical system influences the total length of the optical system, as taught by Kuo in at least par. [0053]. Thus, one would have been motivated to optimize the results-effective variables D11t32, G34, G45, T4, and T5 because these parameters are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Regarding dependent claim 20, modified Kuo discloses the optical imaging lens of claim 15, and Kuo in the eighth embodiment further discloses wherein D62t82 is defined as a distance from the image-side surface of the sixth lens element to the image-side surface of the eighth lens element along the optical axis, D5 1t62 is defined as a distance from the object-side surface of the fifth lens element to the image-side surface of the sixth lens element along the optical axis, T9 is a thickness of the ninth lens element along the optical axis, G89 is an air gap between the eighth lens element and the ninth lens element along the optical axis (refer to Kuo Table 15 disclosing equivalent parameters for the eighth embodiment), but Kuo in the eighth embodiment does not disclose the optical imaging lens satisfies the relationship: (D62t82+G89+T9)/D51t62 ≤ 2.400 (refer to Table 15 for details of the eighth embodiment, where the values provided give the condition (D62t82+G89+T9)/D51t62 = 6.54).
However, Kuo discloses first and second embodiments, refer to Table 1 for details of the first embodiment and to Table 3 for details of the second embodiment, where the given