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 .
DETAILED ACTION
The instant application having Application No. 18/409,800 filed on January 11, 2024 is presented for examination by the examiner.
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.
Priority
As required by the M.P.E.P. 214.03, acknowledgement is made of applicant’s claim for priority based on applications filed on April 24, 2023 (China CN202310448544.3).
Receipt is acknowledged of papers submitted under 37 CFR 1.55, which papers have been placed of record in the file.
Drawings
The applicant’s drawings submitted on January 11, 2024 are acceptable for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statements dated April 22, 2025 and September 26, 2025 are acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the limitation “a liquid lens” is indefinite because, in light of the specification, it is unclear what aspect of the lens, the term “liquid” is referring to. In the prior art “liquid” can refer to many disparate elements (1)a liquid that is inserted into a cavity formed by two solid lenses, (2) a liquid lens with a deformable membrane that can be actuated to change the optical properties of the lens, (3)(a) an electrowetting liquid lens or (b) a liquid crystal lens that can be electrically actuated, or (4) one half of a compound, hybrid or cemented lens that is formed by applying a liquid to one surface of a solid lens which is subsequently cured or hardened into a chosen shape. These are dramatically different optical lenses. Based on the specification as filed it is unclear which of elements 2, 3a, 3b, or 4 it is that applicant is disclosing. The most pertinent portions of the specification are paragraphs [0013]-[0015]:
[0013] The remarkable plasticity of the liquid lens enables dynamic adjustments to the overall refractive index, the surface shape, the curvature radius, and other optical characteristics of the cemented lens BL, which represents a significant leap beyond the manufacturing limitations typically tied to the conventional solid lenses.
[0014] According to one or more of the embodiments of the disclosure, a refractive index of the spheric lens 1 falls within a range from 1.5 to 1.96, the liquid lens 2 may include ultraviolet (UV) resin, a refractive index of the liquid lens 2 falls within a range from 1.5 to 1.62, and a diameter of the liquid lens 2 falls within a range from 1.0 mm to 6.0 mm, which should however not be construed as a limitation in the disclosure. In other embodiments, other highly plastic droplets may be applied to manufacture the liquid lens 2.
[0015] The cemented lens BL has a positive refracting power, an optical axis region on the object side surface 15 of the cemented lens BL is a convex surface, an optical axis region on the image side surface 26 of the cemented lens BL is a concave surface, the object side surface 15 is a spheric surface, and the image side surface 26 is an aspheric surface. Specifically, by cementing the liquid lens 2 on the easier-to-mold spheric lens 1, the aspheric image side surface 26 is generated, whereby the aspheric cemented lens BL is formed. This greatly reduces the difficulty of manufacturing aspheric lenses as provided in the related art.
At first glance, “dynamic adjustments” would sound as if “liquid lens” were referring to an actuatable type liquid lens of interpretations 2, 3a or 3b. However, the emphasis on the manufacturing improvements, a UV resin and plastic droplets would tend to indicate that “liquid” is referring to the method of manufacture. Such an interpretation is supported by the attached machine translation of the foreign priority document where “liquid lens” always appears as “liquid drop lens”. Furthermore, one would normally expect at least some discussion of the actuation if the liquid lens was actually variable during use. However, the specification is sufficiently ambiguous that it is not appropriate to simply state that “liquid lens” will be interpreted as a product-by-process limitation, or as a synonym for “resin lens”. Nor, is it obvious that the present specification would support an interpretation of “liquid lens” and encompassing all of the above interpretations.
Appropriate correction is required, which may involve providing additional evidence. One possible solution would be to claim a resin lens having a thickness on the optical axis of less than or equal to 0.100 mm in claim 1. For the purpose of considering prior art, any of the interpretations (1), (2), (3a), (3b) or (4) will be considered to meet the limitation of a “liquid lens.”
Claims 2-12 depend from claim 1 and inherit and do not mitigate the above indefiniteness issue from claim 1.
Regarding claim 2, the term “ultraviolet resin” is indefinite because it is unclear from the specification what aspect of “ultraviolet” it is that the applicant is referring to. Possibilities include (a) resin that can be cured by application of ultraviolet light (b) resin that is sufficiently transparent in the ultraviolet so as to be usable in an ultraviolet imager or (c) ultraviolet absorbing resin that can act as a UV-filter or protectant for the imaging system. Given how divergent these meanings are from one another, it seems highly unlikely that applicant intended all of these choices. In line with the examiner’s best guess that the liquid lens is referring to a process of manufacturing, the examiner also guesses that ultraviolet meant ultraviolet curable resin. However, even if this guess is correct, further evidence may be needed to accompany any amendment clarifying the meaning of “ultraviolet”. Appropriate correction is required. For the purpose of considering prior art, any of the interpretations (a), (b) or (c) will be considered to meet the limitation of “ultraviolet resin”.
Regarding claim 6, the limitation “further comprising a first lens, a second lens, a third lens, a fourth lens, and a fifth lens” is indefinite because claim 1 already recites “wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers” and the specification does not support the presence of 10 or 11 lenses as would be implied by “further comprising”. This raises a question of whether the 4 or 5 additional lenses were actually required in claim 1, and if claims 6 and 7 should be interpreted as having 6, 10 or 11 total lenses including the cemented lens. If the applicant wishes to claim the configuration of Fig. 1A in claims 6 and 7, the examiner recommends amending claim 6 as follows:
6. (proposed amendment) The image capturing lens according to claim 1, wherein the 4 or 5 additional lenses comprise a first lens, a second lens, a third lens, a fourth lens, and a fifth lens which are sequentially disposed from an object side to an image side, wherein the cemented lens is disposed at the object side of the first lens.
Appropriate correction is required.
Claim 7 depends from claim 6 and inherits and does not mitigate the above indefiniteness issue from claim 6.
Regarding claim 8, the limitation “further comprising a first lens, a second lens, a third lens, and a fourth lens” is indefinite because claim 1 already recites “wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers” and the specification does not support the presence of 9 or 10 lenses as would be implied by “further comprising”. This raises a question of whether the 4 or 5 additional lenses were actually required in claim 1, and if claims 8 and 9 should be interpreted as having 5, 9 or 10 total lenses including the cemented lens. If the applicant wishes to claim the configuration of Fig. 2A in claims 8 and 9, the examiner recommends amending claim 8 as follows:
8. (proposed amendment) The image capturing lens according to claim 1, wherein the 4 or 5 additional lenses comprise a first lens, a second lens, a third lens, and a fourth lens which are sequentially disposed from an object side to an image side, wherein the cemented lens is disposed at the object side of the first lens.
Appropriate correction is required.
Claim 9 depends from claim 8 and inherits and does not mitigate the above indefiniteness issue from claim 8.
Regarding claim 10, the limitation “further comprising a first lens, a second lens, a third lens, and a fourth lens” is indefinite because claim 1 already recites “wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers” and the specification does not support the presence of 9 or 10 lenses as would be implied by “further comprising”. This raises a question of whether the 4 or 5 additional lenses were actually required in claim 1, and if claims 10 and 11 should be interpreted as having 5, 9 or 10 total lenses including the cemented lens. If the applicant wishes to claim the configuration of Fig. 3A in claims 10 and 11, the examiner recommends amending claim 10 as follows:
10. (proposed amendment) The image capturing lens according to claim 1, wherein the 4 or 5 additional lenses comprise a first lens, a second lens, a third lens, and a fourth lens which are sequentially disposed from an object side to an image side, wherein the cemented lens is disposed between the first lens and the second lens.
Appropriate correction is required.
Claim 11 depends from claim 10 and inherits and does not mitigate the above indefiniteness issue from claim 10.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nurishi et al. US 6,141,157 (hereafter Nurishi).
Regarding claim 1, Nurishi teaches “An image capturing lens (the zoom lens of numerical embodiment 1, e.g. Fig. 1, table in cols. 9 and 10 or the fore lens unit thereof) comprising:
a cemented lens (e.g. col. 5 lines 55-57 thin layer X of resin and lens G2 which are a cemented lens see col. 10 surfaces 3-5 where G2 is surfaces 3-4 and thin layer X is surfaces 4-5), having a positive refracting power (the combined focal length of the cemented lens of surfaces 3-5 can be calculated from the data of surfaces 3-5 in col. 10 using a matrix calculator to be about 217.5 which is positive, thus the cemented lens has a positive refracting power) and comprising a spheric lens and a liquid lens (col. 6 lines 40-59: “thin layer X of resin, the technique of forming an aspherical surface on the surface of a spherical-surface-worked glass lens by the use of a thin layer of resin can be applied.” Thus G2 is a spheric lens and thin layer X is a liquid lens in that it is a thin layer of resin applied to the surface of a solid lens. Moreover, the further limitations of “liquid lens” are directed to method steps of making the device, and it could have been made using an alternative method such as applying a thin molded sheet of resin. The method limitations are not germane to patentability pursuant to MPEP §2113, since it has been held that “'[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.' In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).” In the instant case, the thin layer X of resin has the same final structure as the liquid lens in that it is made of plastic, is thin, and creates an aspheric exterior surface to the cemented lens),
wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers (If the image capturing lens is considered to be the fore lens unit, then there are 4 additional lenses G1, G3, G4 and G5. If the image capturing lens is considered to be the entire zoom lens, then it comprises 4 or 5 lenses with refracting powers, plus all the rest of the lenses. Note that additional lenses with refracting powers are not considered to be precluded by the claim because both the claim and this limitation are “comprises” which is open-ended and the claim does not recite: “wherein the total number of lenses with non-zero refracting power is 5 or 6.”).”
Regarding claim 3, Nurishi teaches “The image capturing lens according to claim 1, wherein the liquid lens comprises an aspheric profile (e.g. col. 6 lines 40-59: “thin layer X of resin, the technique of forming an aspherical surface on the surface of a spherical-surface-worked glass lens by the use of a thin layer of resin can be applied.”).”
Regarding claim 5, Nurishi teaches “The image capturing lens according to claim 1, wherein a thickness of the liquid lens on an optical axis is less than or equal to 0.100 mm (col. 8 lines 11-12: “The center thickness of the thin layer X of said resin is as small as 0.02 mm” and col. 10 d4=0.02).”
Regarding claim 6, Nurishi teaches “The image capturing lens according to claim 1, further comprising a first lens (surfaces 12-13, first lens in variator V), a second lens (surfaces 16-17, third lens in variator V), a third lens (surface 18-19 fourth lens in variator V), a fourth lens (surfaces 24-25, second lens in relay lens R), and a fifth lens (surfaces 33-35, the second cemented lens in relay lens R) which are sequentially disposed from an object side to an image side (these lenses are sequentially disposed from the object to the image side. Note that “sequentially” does not preclude additional lenses because it does not state “consecutively sequentially” nor does it state that each of the recited lenses are adjacent to one another.), wherein the cemented lens is disposed at the object side of the first lens (G2 is on the object side of variator V).”
Regarding claim 7, Nurishi teaches “The image capturing lens according to claim 6, wherein the cemented lens (surfaces 3-5), the first lens (surfaces 12-13), the second lens (surfaces 16-17), the third lens (surfaces 18-19), the fourth lens (surfaces 24-25), and the fifth lens (surfaces 33-35) respectively have (the focal lengths of the lenses enumerated above can be calculated from the data of the respective surfaces from col. 10 using a matrix calculator that utilizes the full Lensmaker’s equation. The results of these calculations are tabulated below) a positive refracting power (surfaces 3-5 have a positive focal length of 217.5 and thus a positive refracting power), a negative refracting power (surfaces 12-13 have a negative focal length of -28.5 and thus a negative refracting power), a positive refracting power (surfaces 16-17 have a positive focal length of 22.7 and thus a positive refracting power), a negative refracting power (surfaces 18-19 have a negative focal length of -33.58 and thus a negative refracting power), a positive refracting power (surfaces 24-25 have a positive focal length of 65.4 and thus a positive refracting power), and a negative refracting power (the cemented lens of surfaces 33-35 has a negative focal length of -51.16 and thus a negative refracting power).”
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Regarding claim 8, Nurishi teaches “The image capturing lens according to claim 1, further comprising a first lens (G3 surfaces 6-7), a second lens (surfaces 12-13 the first lens in variator V), a third lens (surfaces 16-17 the third lens in variator V), and a fourth lens (surfaces 24-25 the first lens in relay lens R) which are sequentially disposed from an object side to an image side (these lenses are sequentially disposed from the object to the image side. Note that “sequentially” does not preclude additional lenses because it does not state “consecutively sequentially” nor does it state that each of the recited lenses are adjacent to one another.), wherein the cemented lens is disposed at the object side of the first lens (G2 is on the object side of variator G3).”
Regarding claim 9, Nurishi teaches “The image capturing lens according to claim 8, wherein the cemented lens (surfaces 3-5), the first lens (surfaces 6-7), the second lens (surfaces 12-13), the third lens (surfaces 16-17), and the fourth lens (surfaces 24-25) respectively have (the focal lengths of the lenses enumerated above can be calculated from the data of the respective surfaces from col. 10 using a matrix calculator that utilizes the full Lensmaker’s equation. The results of these calculations are tabulated above) a positive refracting power (surfaces 3-5 have a positive focal length of 217.5 and thus a positive refracting power), a positive refracting power (surfaces 6-7 have a positive focal length of 212.76 and thus a positive refracting power), a negative refracting power (surfaces 12-13 have a negative focal length of -28.5 and thus a negative refracting power), a positive refracting power (surfaces 16-17 have a positive focal length of 22.7 and thus a positive refracting power), and a positive refracting power (surfaces 24-25 have a positive focal length of 65.4 and thus a positive refracting power).”
Regarding claim 10, Nurishi teaches “The image capturing lens according to claim 1, further comprising a first lens (G1 surfaces 1-2), a second lens (surfaces 12-13 the first lens in variator V), a third lens (surfaces 16-17 the third lens in variator V), and a fourth lens (surfaces 18-19 the fourth lens in variator V) which are sequentially disposed from an object side to an image side (these lenses are sequentially disposed from the object to the image side. Note that “sequentially” does not preclude additional lenses because it does not state “consecutively sequentially” nor does it state that each of the recited lenses are adjacent to one another.), wherein the cemented lens is disposed between the first lens and the second lens (G2/X is between G1 and variator V).”
Regarding claim 11, Nurishi teaches “The image capturing lens according to claim 10, wherein the first lens (G1 surfaces 1-2), the cemented lens (G2 and X), the second lens (surfaces 12-13), the third lens (surfaces 16-17), and the fourth lens (surfaces 18-19) respectively have (the focal lengths of the lenses enumerated above can be calculated from the data of the respective surfaces from col. 10 using a matrix calculator that utilizes the full Lensmaker’s equation. The results of these calculations are tabulated above) a negative refracting power (G1 has a negative focal length of -112.5 and thus has negative refracting power), a positive refracting power (surfaces 3-5 have a positive focal length of 217.5 and thus a positive refracting power), a negative refracting power (surfaces 12-13 have a negative focal length of -28.5 and thus a negative refracting power), a positive refracting power (surfaces 16-17 have a positive focal length of 22.7 and thus have positive refracting power), and a negative refracting power (surfaces 18-19 have a negative focal length of -33.58 and thus a negative refracting power).”
Regarding claim 12, Nurishi teaches “The image capturing lens according to claim 1, wherein a curvature radius of an object side surface of the liquid lens (col. 10 r4=-120.931) is different from a curvature radius of an image side surface of the liquid lens (col. 10 r5=-204.283 thus the curvature radii of the thin resin layer X are different from one another).”
Claims 1, 3-6, 8 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liao JP 2007047783 (hereafter Liao, where reference will be made to the attached machine translation).
Regarding claim 1, Liao teaches “An image capturing lens (page 6 “BEST-MODE” zoom lens for photography), comprising:
a cemented lens (second lens set 2 which is a cemented lens of hybrid lens 20 and hybrid resin layer 21), having a positive refracting power (the combined focal length of the second lens set can be calculated from the data of surfaces 3-5 in Table 1 using a matrix calculator to be about 15.9 which is positive and thus the second lens set has a positive refracting power) and comprising a spheric lens (the last paragraph of page 8 states that surfaces R1, R2, R5, R7, R12, R13, and R14 in each lens set are all aspherical surfaces, therefor surfaces R3 and R4 that are the two surfaces of hybrid lens 20 are not aspherical and thus are spherical) and a liquid lens (hybrid resin layer 21 is a liquid lens in that it is a thin resin lens formed on a surface on the imaging side of lens 20. Moreover, the further limitations of “liquid lens” are directed to method steps of making the device, and it could have been made using an alternative method such as applying a thin molded sheet of resin. The method limitations are not germane to patentability pursuant to MPEP §2113, since it has been held that “'[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.' In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).” In the instant case, the hybrid resin layer 21 has the same final structure as the liquid lens in that it is made of plastic, is thin, and creates an aspheric exterior surface to the cemented lens, see last paragraph of page 8 states that surface R5 in each lens set is an aspherical surface.)
wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers (see Table 1 there are 6 more lenses with refracting powers other than the cemented lens of surfaces 3-5, thus the image capturing lens comprises 4 or 5 lenses, plus 1 or 2 more. Note that additional lenses with refracting powers are not considered to be precluded by the claim because both the claim and this limitation are “comprises” which is open-ended and the claim does not recite: “wherein the total number of lenses with non-zero refracting power is 5 or 6.”).”
Regarding claim 3, Liao teaches “The image capturing lens according to claim 1, wherein the liquid lens comprises an aspheric profile (the hybrid resin layer 21 is surfaces 4-5 and the last paragraph of page 8 states that surface R5 in each lens set is an aspherical surface.).”
Regarding claim 4, Liao teaches “The image capturing lens according to claim 1, wherein a refractive index of the spheric lens falls within a range from 1.5 to 1.96 (Table 1 Nd of surface 3 is 1.7552 which is in the claimed range), and a refractive index of the liquid lens falls within a range from 1.5 to 1.62 (Table 1 Nd of surface 4 is 1.52 which is in the claimed range).”
Regarding claim 5, Liao teaches “The image capturing lens according to claim 1, wherein a thickness of the liquid lens on an optical axis is less than or equal to 0.100 mm (Table 1 the thickness in mm of surface 4 is 0.08 which is in the claimed range).”
Regarding claim 6, Liao teaches “The image capturing lens according to claim 1, further comprising (Table 1) a first lens (surfaces 7-8), a second lens (surfaces 8-9), a third lens (surfaces 9-10), a fourth lens (surfaces 11-12), and a fifth lens (surfaces 13-14) which are sequentially disposed from an object side to an image side (these lenses are sequentially disposed from the object to the image side. Note that “sequentially from an object side” does not preclude an additional lens on the object side of the cemented lens, but rather just that the enumerated lenses must be sequential and in order from the object side), wherein the cemented lens is disposed at the object side of the first lens (the cemented lens of 20 and 21, surfaces 3-5 is on the object side of the first lens with surfaces 7-8).”
Regarding claim 8, Liao teaches “The image capturing lens according to claim 1, further comprising (Table 1) a first lens (surfaces 7-8), a second lens (surfaces 8-9), a third lens (surfaces 9-10), and a fourth lens (surfaces 11-12) which are sequentially disposed from an object side to an image side (these lenses are sequentially disposed from the object to the image side. Note that “sequentially from an object side to the image side” does not preclude an additional lens on the object side of the cemented lens and an additional lens on the image side of the fourth lens, but rather just that the enumerated lenses must be sequential and in order from the object side to the image side), wherein the cemented lens is disposed at the object side of the first lens (the cemented lens of 20 and 21, surfaces 3-5 is on the object side of the first lens with surfaces 7-8).”
Regarding claim 10, Liao teaches “The image capturing lens according to claim 1, further comprising (Table 1) a first lens (surfaces 1-2), a second lens (surfaces 7-8), a third lens (surfaces 8-9), and a fourth lens (surfaces 9-10) which are sequentially disposed from an object side to an image side (these lenses are sequentially disposed from the object to the image side. Note that “sequentially from an object side to the image side” does not preclude two additional lenses on the image side of the fourth lens, but rather just that the enumerated lenses must be sequential and in order from the object side to the image side), wherein the cemented lens is disposed between the first lens and the second lens (the cemented lens of surfaces 3-5 is between the first lens of surfaces 1-2 and the second lens of surfaces 7-8).”
Regarding claim 11, Liao teaches “The image capturing lens according to claim 10, wherein the first lens (surfaces 1-2), the cemented lens (surfaces 3-5), the second lens (surfaces 7-8), the third lens (surfaces 8-9), and the fourth lens (surfaces 9-10) respectively have (the focal lengths of the lenses enumerated above can be calculated from the data of the respective surfaces from Table 1 using a matrix calculator that utilizes the full Lensmaker’s equation. The results of these calculations are tabulated below) a negative refracting power (the focal length of surfaces 1-2 is -6.56 thus the first lens has negative refracting power), a positive refracting power (the focal length of surfaces 3-5 is 15.9, thus the cemented lens has positive refracting power), a negative refracting power (the focal length of surfaces 7-8 is -63.06 thus the second lens has negative refracting power), a positive refracting power (the focal length of surfaces 8-9 is 2.37 thus the third lens has positive refracting power), and a negative refracting power (the focal length of surfaces 9-10 is -2.45 thus the fourth lens has negative refracting power).”
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Regarding claim 12, Liao teaches “The image capturing lens according to claim 1, wherein a curvature radius of an object side surface of the liquid lens (Table 1 the radius of surface 4 is 6.18) is different from a curvature radius of an image side surface of the liquid lens (Table 1 the radius of surface 5 is 7.646 which is different that 6.18).”
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nurishi et al. US 6,141,157 (hereafter Nurishi) as applied to claim 1 above, and further in view of Imamura US 2011/0222168 A1 (hereafter Imamura).
Regarding claim 2, Nurishi teaches “The image capturing lens according to claim 1,” however, Nurishi fails to explicitly teach “wherein the liquid lens comprises ultraviolet resin.”
Imamura teaches (claim 1) “An image capturing lens (zoom optical system of embodiment 1), comprising:
a cemented lens (cemented lens of L22 and L23), having a … refracting power (paragraph [0196]: “negative cemented lens”) and comprising a [first] lens (L22) and a liquid lens (L23 which can be formed by hardening a liquid resin applied to L22 see paragraphs [0196]-[0197]),
wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers (there are 4 or 5 lenses with refracting powers plus additional lenses not precluded by the open-ended claim).”
(claim 2) “wherein the liquid lens comprises ultraviolet resin (paragraph [0201]: “it is preferred that UV-curable resins are used for direct forming” where a UV-curable resin is an ultraviolet resin in that it is cured by application of UV light).”
Imamura further teaches (paragraphs [0200]-[0201]): “Besides, it is preferred that energy curable resins and so on are used as a resin material for direct forming. The use of an energy curable resin makes it possible to easily make a compound lens by merely pressing the resin through a mold to give the mold energy after applying or discharging the resin to or on a lens.
Also, any kinds of energy curable resins, such as thermosetting resin and UV-curable resin, may be used in this case. In particular, it is preferred that UV-curable resins are used for direct forming. The use of an UV-curable resin makes it possible to harden the resin without heating the resin, so that materials having low heat resistance, such as plastic, can be used for a lens which is a substrate.”
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 material of the thin layer X of resin of Nurishi a UV-curable resin as taught by Imamura so that the resin lens can be hardened without applying heat as taught by Imamura (paragraphs [0200]-[0201] and the other advantages explained therein).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Liao JP 2007047783 (hereafter Liao, where reference will be made to the attached machine translation) as applied to claim 1 above, and further in view of Imamura US 2011/0222168 A1 (hereafter Imamura).
Regarding claim 2, Liao teaches “The image capturing lens according to claim 1,” however, Liao fails to explicitly teach “wherein the liquid lens comprises ultraviolet resin.”
Imamura teaches (claim 1) “An image capturing lens (zoom optical system of embodiment 1), comprising:
a cemented lens (cemented lens of L22 and L23), having a … refracting power (paragraph [0196]: “negative cemented lens”) and comprising a [first] lens (L22) and a liquid lens (L23 which can be formed by hardening a liquid resin applied to L22 see paragraphs [0196]-[0197]),
wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers (there are 4 or 5 lenses with refracting powers plus additional lenses not precluded by the open-ended claim).”
(claim 2) “wherein the liquid lens comprises ultraviolet resin (paragraph [0201]: “it is preferred that UV-curable resins are used for direct forming” where a UV-curable resin is an ultraviolet resin in that it is cured by application of UV light).”
Imamura further teaches (paragraphs [0200]-[0201]): “Besides, it is preferred that energy curable resins and so on are used as a resin material for direct forming. The use of an energy curable resin makes it possible to easily make a compound lens by merely pressing the resin through a mold to give the mold energy after applying or discharging the resin to or on a lens.
Also, any kinds of energy curable resins, such as thermosetting resin and UV-curable resin, may be used in this case. In particular, it is preferred that UV-curable resins are used for direct forming. The use of an UV-curable resin makes it possible to harden the resin without heating the resin, so that materials having low heat resistance, such as plastic, can be used for a lens which is a substrate.”
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 material of the thin layer X of resin of Liao a UV-curable resin as taught by Imamura so that the resin lens can be hardened without applying heat as taught by Imamura (paragraphs [0200]-[0201] and the other advantages explained therein).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nurishi et al. US 6,141,157 (hereafter Nurishi).
Regarding claim 4, Nurishi teaches “The image capturing lens according to claim 1,” however, Nurishi fails to teach “wherein a refractive index of the spheric lens falls within a range from 1.5 to 1.96, and a refractive index of the liquid lens falls within a range from 1.5 to 1.62.” instead teaching values of n2=1.49845 and n3=1.49375 that are so close that one of ordinary skill in the art would have expected them to have the same properties.
The Examiner contends that the prior art, Nurishi value of 1.49845 for the refractive index of the spheric lens is sufficiently close to the claimed range of 1.5 to 1.96 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 1.49845 and the endpoint of 1.5 is insubstantial, representing only a 0.1% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the refractive index of the spheric lens 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 1.5 to 1.96.
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 1.49845 for the refractive index of the spheric lens, from the prior art disclosure, is sufficiently close to the claimed range of 1.5 to 1.96 to render it obvious because the difference between 1.49845 and the endpoint of 1.5 is insubstantial, a value of 1.49845 is reasonably expected to have the same effect as if it were the endpoint of the range for the refractive index of the spheric lens, 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.
The Examiner contends that the prior art, Nurishi value of 1.49375 for the refractive index of the liquid lens is sufficiently close to the claimed range of 1.5 to 1.96 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 1.49375 and the endpoint of 1.5 is insubstantial, representing only a 0.1% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the refractive index of the liquid lens 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 1.5 to 1.96.
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 1.49375 for the refractive index of the liquid lens, from the prior art disclosure, is sufficiently close to the claimed range of 1.5 to 1.96 to render it obvious because the difference between 1.49375 and the endpoint of 1.5 is insubstantial, a value of 1.49375 is reasonably expected to have the same effect as if it were the endpoint of the range for the refractive index of the spheric lens, 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 1, 3-8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fang US 2018/0164547 A1 (hereafter Fang) in view of Nurishi et al. US 6,141,157 (hereafter Nurishi).
Regarding claim 1, Fang teaches “An image capturing lens (optical camera lens 20 tables 7-12), comprising:
a … lens (first lens L1), having a positive refracting power (e.g. Table 7 f1=4.192365, thus L1 has positive refractive power) …
wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers (there are five more lenses with refracting power lenses L2, L3, L4, L5 and L6).”
However, Fang fails to teach “a cemented lens… comprising a spheric lens and a liquid lens”.
Nurishi teaches (claim 1) “An image capturing lens (the zoom lens of numerical embodiment 1, e.g. Fig. 1, table in cols. 9 and 10 or the fore lens unit thereof) comprising:
a cemented lens (e.g. col. 5 lines 55-57 thin layer X of resin and lens G2 which are a cemented lens see col. 10 surfaces 3-5 where G2 is surfaces 3-4 and thin layer X is surfaces 4-5), having a positive refracting power (the combined focal length of the cemented lens of surfaces 3-5 can be calculated from the data of surfaces 3-5 in col. 10 using a matrix calculator to be about 217.5 which is positive, thus the cemented lens has a positive refracting power) and comprising a spheric lens and a liquid lens (col. 6 lines 40-59: “thin layer X of resin, the technique of forming an aspherical surface on the surface of a spherical-surface-worked glass lens by the use of a thin layer of resin can be applied.” Thus G2 is a spheric lens and thin layer X is a liquid lens in that it is a thin layer of resin applied to the surface of a solid lens. Moreover, the further limitations of “liquid lens” are directed to method steps of making the device, and it could have been made using an alternative method such as applying a thin molded sheet of resin. The method limitations are not germane to patentability pursuant to MPEP §2113, since it has been held that “'[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.' In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).” In the instant case, the thin layer X of resin has the same final structure as the liquid lens in that it is made of plastic, is thin, and creates an aspheric exterior surface to the cemented lens),
wherein in addition to the cemented lens, the image capturing lens comprises 4 or 5 lenses with refracting powers (If the image capturing lens is considered to be the fore lens unit, then there are 4 additional lenses G1, G3, G4 and G5. If the image capturing lens is considered to be the entire zoom lens, then it comprises 4 or 5 lenses with refracting powers, plus all the rest of the lenses. Note that additional lenses with refracting powers are not considered to be precluded by the claim because both the claim and this limitation are “comprises” which is open-ended and the claim does not recite: “wherein the total number of lenses with non-zero refracting power is 5 or 6.”).”
Nurishi further teaches (col. 6 lines 40-59): “By using a lens (optical element) provided with such a thin layer X of resin, the fluctuation of chromatic aberration of magnification by focal length changing is reduced and the entire variable power range is corrected well.
In the present embodiment, as a method of easily manufacturing a lens (optical element) provided with a thin layer X of resin, the technique of forming an aspherical surface on the surface of a spherical-surface-worked glass lens by the use of a thin layer of resin can be applied. If this technique is used, there is the feature that the center thickness of the thin layer of resin can be formed very thinly (several tens of µm
As described above, a thin layer endowed with appropriate negative refractive power is formed by the use of resin which is small in Abbe's number relative to the positive lens, whereby it is endowed with the effect of achromatism without almost increasing the full length of the optical system. Acryl resin, epoxy resin, polycarbonate or the like can be applied as transparent resin used in the present embodiment.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adopt a cemented lens comprising a spheric lens and a thin layer of resin as any of the lenses of Fang including the first lens as taught by Nurishi because Nurishi teaches that such a cemented lens enables the aspherical surface to be easily manufactured (col. 6 lines 44-51) and corrects chromatic aberrations in a manner that a singlet lens would not (col. 6 lines 40-43).
Regarding claim 3, the Fang – Nurishi combination teaches “The image capturing lens according to claim 1,” and both of Fang and Nurishi teach “wherein the liquid lens comprises an aspheric profile (In Fang Table 9 R2 is aspheric and in Nurishi the image-side surface of the thin layer of resin is aspheric, see e.g. col. 6 lines 40-59: “thin layer X of resin, the technique of forming an aspherical surface on the surface of a spherical-surface-worked glass lens by the use of a thin layer of resin can be applied.”).” Thus when Fang is modified in view of Nurishi the image-side surface of the first lens that is made from a thin resin layer will still be aspheric.
Regarding claim 4, the Fang – Nurishi combination teaches “The image capturing lens according to claim 1,” and Fang further teaches “wherein a refractive index of the [first] lens falls within a range from 1.5 to 1.96 (Table 8 nd1 is 1.5449).” However, Fang and Nurishi fail to teach “a refractive index of the liquid lens falls within a range from 1.5 to 1.62.” instead Nurishi teaches values of n3=1.49375 that is so close that one of ordinary skill in the art would have expected them to have the same properties.
The Examiner contends that the prior art, Nurishi value of 1.49375 for the refractive index of the liquid lens is sufficiently close to the claimed range of 1.5 to 1.96 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 1.49375 and the endpoint of 1.5 is insubstantial, representing only a 0.1% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the refractive index of the liquid lens 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 1.5 to 1.96.
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 1.49375 for the refractive index of the liquid lens, from the prior art disclosure, is sufficiently close to the claimed range of 1.5 to 1.96 to render it obvious because the difference between 1.49375 and the endpoint of 1.5 is insubstantial, a value of 1.49375 is reasonably expected to have the same effect as if it were the endpoint of the range for the refractive index of the spheric lens, 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.
Regarding claim 5, the Fang – Nurishi combination teaches “The image capturing lens according to claim 1,” however, Fang fails to teach “wherein a thickness of the liquid lens on an optical axis is less than or equal to 0.100 mm.” Note however, that in Table 8 the distance between the first and second lenses is only 0.086 mm.
Nurishi teaches “The image capturing lens according to claim 1, wherein a thickness of the liquid lens on an optical axis is less than or equal to 0.100 mm (col. 8 lines 11-12: “The center thickness of the thin layer X of said resin is as small as 0.02 mm” and col. 10 d4=0.02).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adopt a cemented lens comprising a spheric lens and a thin layer of resin with a thickness as small as 0.02 mm as taught by Nurishi because Nurishi teaches that such a cemented lens enables the aspherical surface to be easily manufactured (col. 6 lines 44-51) and corrects chromatic aberrations in a manner that a singlet lens would not (col. 6 lines 40-43).
Regarding claim 6, the Fang – Nurishi combination teaches “The image capturing lens according to claim 1,” and Fang further teaches “further comprising a first lens (second lens L2), a second lens (third lens L3), a third lens (fourth lens L4), a fourth lens (fifth lens L5), and a fifth lens (sixth lens L6) which are sequentially disposed from an object side to an image side (see table 8), wherein the cemented lens is disposed at the object side of the first lens (the first lens L1, which was modified to become a cemented