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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/30/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/21/2025 has been considered by the Examiner and made of record in the application file.
Response to Amendment
The Amendment filed 09/02/2025 has been entered. Claims 11 and 34 have been amended.
Response to Arguments
Applicant's arguments filed 09/02/2025, with respect to the claim interpretation under 112(f) and rejections under 112(b) have been fully considered and in combination with the amendments are persuasive. The claim interpretation under 112(f) and 112(b) rejections previously set forth in the office action of 07/03/2025 have been withdrawn.
Applicant's arguments filed 09/02/2025, with respect to the rejections under 103 have been fully considered and are appreciated, however they are not persuasive.
Applicant argues that the previously applied prior art, Takemoto and Komatsu, does not disclose the third group lens is a dummy lens with no refractive power or that during the first magnification function, where an image obtained at the image sensor is enlarged utilizing a digital zoom, the third group lens is fixed. However, examiner respectfully disagrees.
The limitation “wherein the third group lens is a dummy lens with no refractive power” is not enabled. The claim requires “when the third group lens moves, an effective focal length (EFL) of the optical system is changed”, which requires the third group lens to have a refractive power. For the purposes of prosecution, claim 11 is considered without the limitation “when the third group lens moves, an effective focal length (EFL) of the optical system is changed,” see 112(a) rejection below.
Regarding applicant’s argument that neither Takemoto nor Komatsu teach that during the first magnification function, the third group lens is fixed, examiner respectfully disagrees. Takemoto discloses a first magnification state (the telephoto end of Fig. 11), in which the lenses are not moving. The first magnification function is defined as a digital zoom mechanism, which is not taught by Takemoto. However, Komatsu teaches a digital zoom mechanism can be performed in addition in a lens system that can do an optical zoom. There are only two possibilities as to when to perform a digital zoom, either separately from the optical zoom (i.e. the lenses are fixed) or together with the optical zoom (i.e. during variable magnification, when the lenses are moving). It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the third group lens to be fixed during the first magnification function (i.e. perform digital zoom and optical zoom separately) for the purpose of preventing the image from becoming pixelated during the variable magnification function.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11, 19, and 31-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding independent claim 11, the limitation “wherein the third group lens is a dummy lens with no refractive power” is not enabled.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the [enablement or scope of enablement] requirement and whether any necessary experimentation is “undue”. These factors include, but are not limited to: (A) The breadth of the claims; (B) The Nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure (see In re Wands, 858 F.2d 7331, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
In the instant case, the claim also includes the limitation “when the third group lens moves, an effective focal length (EFL) of the optical system is changed.” It is not enabled for the third group lens to move to change the EFL and simultaneously have no refractive power. In order for the movement of the third group lens to change the EFL, the third group lens is required to have a refractive power. Additionally, there are no working examples in which the movement of the third group lens changes the EFL and is also a dummy lens with no refractive power. Thus, The breadth of the limitations (Wands factor A) exceeds the nature of the invention (Wands factor B) in light of prior art (Wands factor C) beyond what one skilled in the art (Wands factor D) could predictably arrive at (Wands factor E). The direction provided by the inventor (Wands factor F) states that the third group lens can have no refractive power, can have positive refractive power, or can have negative refractive power, and no working examples (Wands factor G) are provided for any case, and specifically is not provided in the case where the third group lens has no refractive power and also affects the EFL. Therefore, one of ordinary skill in the art would be unable to arrive at the claimed invention without undue experimentation (Wands factor H) using the instant application disclosure, see MPEP 2164.01(a).
For the purposes of examination, claim 11 will be considered without the limitation “wherein the third group lens is a dummy lens with no refractive power,” i.e. the end of claim 11 will be considered as “… and wherein the first magnification function and the second magnification function are distinguished by a point at which the third group lens moves from the first position to the different position
Claims 19 and 31-36 are dependent on claim 11 and therefore inherent the same issues.
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 11, 19, and 31-36 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 independent claim 11, the limitation “wherein the first magnification function and the second magnification function are distinguished by a point at which the third group lens moves from the first position to the different position” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear what the further limitation is. It is unclear if this limitation is just a definition of the first magnification function and the second magnification – which are described above already as the third group lens being fixed during the first magnification function and the third group lens moving during the second magnification function – or if there is meant to be a further structural or functional limitation.
For the purposes of examination, examiner assumes “wherein the first magnification function and the second magnification function are distinguished by a point at which the third group lens moves from the first position to the different position” as just a definition of the first and second magnification functions, and will consider the limitation met as long as the rest of the claim 11 limitations are met.
Claims 19 and 31-36 are dependent on claim 11 and therefore inherit the same issues.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
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.
Claim(s) 11, 19, 31-32, and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Takemoto et al. (US 20140118607 A1), hereinafter Takemoto, in view of Komatsu et al. (US 20190377166 A1), hereinafter Komatsu.
Regarding independent claim 11, Takemoto discloses a camera module (125; Fig. 12; ¶0109), comprising:
a housing (101; Fig. 12);
an optical system (114-116; Fig. 12; ¶0109) disposed in the housing (101) (Fig. 12);
a substrate (implicit from Fig. 12 and ¶0110) disposed under the optical system (114-116) (Fig. 12); and
an image sensor (110) disposed on the substrate (implicit that a CCD or CMOS sensor would be on a substrate; Fig. 12; ¶0110),
wherein the optical system comprises a first group lens (U1; Fig. 11; ¶0051), a second group lens (U2; Fig. 11; ¶0051), a third group lens (U3; Fig. 11; ¶0051), a fourth group lens (U4; Fig. 11; ¶0051), and a fifth group lens (U5; Fig. 11; ¶0051) arranged in order, and when the third group lens (U3) moves, an effective focal length (EFL) of the optical system (114-116) is changed (second and third lens units that move during zooming; ¶0109),
wherein the first group lens (U1, 114) and the fifth group lens (U5, 116) are fixed (Fig. 11; ¶0051), and the second group lens (U2), the third group lens (U3) and the fourth group lens (U4) are movable along an optical axis of the optical system (Fig. 11; ¶0109),
wherein the optical system comprises a first magnification state (telephoto end; Fig. 11) and a second magnification function (wide angle starting state moving to telephoto end state; Fig. 11),
wherein in the first magnification state (telephoto end; Fig. 11), the second group lens (U2) and the third group lens (U3) are fixed (fixed at telephoto end; Fig. 11), and the fourth group lens (U4) is moved along the optical axis of the optical system (114-116) (fourth lens unit moved on the optical axis during focusing; Fig. 11; ¶0051, ¶0109), and during the second magnification function (wide angle starting state moving to telephoto end state; Fig. 11), the second group lens (U2), the third group lens (U3), and the fourth group lens (U4) are moved along the optical axis of the optical system (114-116) (Fig. 11; ¶0051, ¶0109), and
wherein during the second magnification function (wide angle starting state moving to telephoto end state; Fig. 11), the number of pixels of image obtained from the image sensor (110) is constant as the magnification of the optical system (114-116) increases (image height stays constant throughout wide angle, intermediate, and telephoto states as seen in the table on pages 8-15),
wherein in the first magnification state (telephoto end), the third group lens (U3) is at a first position (Fig. 11), and during the second magnification function (wide angle starting state moving to telephoto end state), the third group lens (U3) is moved along the optical axis of the optical system (114-116) to a position different from the first position (Fig. 11; ¶0051, ¶0109), and
wherein the first magnification state (telephoto end) and the second magnification function (wide angle starting state moving to telephoto end state) are distinguished by a point at which the third group lens (U3) moves from the first position to the different position (Fig. 11; this is a definition, see 112(b) rejection above).
Takemoto does not disclose the first magnification state is a first magnification function, wherein during the first magnification function, an image obtained from the image sensor is enlarged utilizing a digital zoom, and during the first magnification function, the third group lens is fixed at a first position.
However, Komatsu teaches a similar optical system (Fig. 18) which comprises a first group lens (G1; Fig. 18; ¶0304), a second group lens (G2; Fig. 18; ¶0304), a third group lens (G3; Fig. 18; ¶0304), a fourth group lens (G4; Fig. 18; ¶0304), and a fifth group lens (G5; Fig. 18; ¶0304) arranged in order, wherein the first group lens (G1) and the fifth group lens (G5) are fixed (Fig. 18; ¶0304), and further comprises a first magnification function (magnification processing of image data, digital zoom; ¶0010, ¶0164), wherein an image obtained from the image sensor is enlarged utilizing a digital zoom (¶0010, ¶0164). One would be motivated to incorporate the first magnification function wherein an image obtained from the image sensor is enlarged utilizing a digital zoom as taught by Komatsu for the purpose of further magnifying the image obtained.
Komatsu does not explicitly teach that during the first magnification function, the third group lens is fixed at a first position. Specifically, Komatsu does not teach the digital zoom is utilized separately from the optical zoom.
However, there are only two possibilities as to when to perform a digital zoom – at the same time as the optical zoom, or when the zoom lenses are fixed and independently of the optical zoom. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007). One would be motivated to utilize the optical zoom and the digital zoom separately from each other, i.e. have the second and third group lenses fixed during the first magnification function, for the purpose of preventing the image from becoming pixelated during the optical zoom.
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 modified Takemoto to incorporate the digital zoom function of Komatsu for the purpose of further magnifying the image obtained and to have the third group lens fixed during the first magnification function (i.e. perform optical zoom and digital zoom independently of each other) to prevent the image from being pixelated during the optical zoom.
Regarding claim 19, Takemoto in view of Komatsu discloses a portable terminal device (video camera; ¶0002) comprising: the camera module (125) of claim 11 (as set forth above).
Regarding claim 31, Takemoto in view of Komatsu discloses the camera module of claim 11, as set forth above. Takemoto further discloses when the second group lens (U2) is fixed, the magnification of the optical system (114-116) is fixed (implicit from ¶0051 and Fig. 11, which states the second lens unit U2 and third lens unit U3 move during zooming), and when the second group lens (U2) is moved in a direction of a central axis of the optical system (114-116), the magnification of the optical system (114-116) increases (second lens unit moves during zooming; ¶0051, ¶0109).
Regarding claim 32, Takemoto in view of Komatsu discloses the camera module of claim 11, as set forth above. Takemoto further discloses wherein the third group lens (U3) is disposed between the second group lens (U2) and the fourth group lens (U4) (Fig. 11), and wherein the third group lens (U3) is moved along the optical axis of the optical system (114-116) when the second group lens (U2) is moved along the optical axis of the optical system (114-116) (Fig. 11; ¶0051, ¶0109).
Regarding claim 35, Takemoto in view of Komatsu discloses the camera module of claim 11, as set forth above. Takemoto further discloses the fourth group lens (U4) is moved during focusing (Fig. 11; ¶0051, ¶0109).
Regarding claim 36, Takemoto in view of Komatsu discloses the camera module of claim 11, as set forth above. Takemoto further discloses the second group lens (U2) is moved during zooming (Fig. 11; ¶0051, ¶0109).
Claim(s) 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Takemoto (US 20140118607 A1) in view of Komatsu (US 20190377166 A1) and further in view of Morooka (US 20130038946 A1).
Regarding claim 33, Takemoto in view of Komatsu discloses the camera module of claim 11, as set forth above. Neither Takemoto nor Komatsu teach a reflective member disposed in the housing, wherein a slope of the reflective member is slantly formed relative to the optical axis of the optical system.
However, Morooka teaches a similar optical system (Fig. 1) which comprises a first group lens (G1; Fig. 1; ¶0108), a second group lens (G2; Fig. 1; ¶0108), a third group lens (G3; Fig. 1; ¶0108), a fourth group lens (G4; Fig. 1; ¶0108), and a fifth group lens (G5; Fig. 1; ¶0108) arranged in order, and further comprising a reflective member (Fig. 11; ¶0158) disposed in the housing (Fig. 11), wherein a slope of the reflective member is slantly formed relative to the optical axis of the optical system (Fig. 11; ¶0158).
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 modified Takemoto and Komatsu to incorporate the reflective member of Morooka for the purpose of bending the optical path and making the camera module more compact.
Regarding claim 34, Takemoto in view of Komatsu discloses the camera module of claim 33, as set forth above. Neither Takemoto nor Komatsu teach the optical system is disposed between the reflective member and the substrate.
However, Morooka further teaches the optical system is disposed between the reflective member and the image sensor (Fig. 11; ¶0158).
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 modified Takemoto and Komatsu to incorporate the reflective member of Morooka for the purpose of bending the optical path and making the camera module more compact.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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/NATASHA NIGAM/Examiner, Art Unit 2872 November 6th, 2025
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872