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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statements
The Information Disclosure Statements filed on 1/19/2024 and 3/28/2025 have been considered.
DETAILED ACTION
The instant application having Application No. 18/417,828 filed on 1/19/2024 is presented for examination by the Examiner.
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.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 11 is provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 3 of co-pending U.S. Patent Application 18/886,435 of Chae (hereinafter “Chae”, US 20250138273).
An explanation along with the listing of claims 11 of the present application and claim 3 of Chae is given below.
Instant claims: 18/417,828
Patent App. No. 18/886,435
11. An imaging lens system comprising:
a first lens, a second lens, a third lens, a fourth lens, a fifth lens, a sixth lens, a seventh lens, and an eighth lens, sequentially arranged from an object side,
wherein the second lens has a convex image-side surface,
wherein the imaging lens system satisfies conditional expression:
1.16<f3/f<1.26,
where f is a focal length of the imaging lens system, and f3 is a focal length of the third lens.
3. An imaging lens system comprising:
a first lens, a second lens, a third lens, a fourth lens, a fifth lens, a sixth lens, a seventh lens, and an eighth lens, sequentially arranged from an object side,
wherein the seventh lens has a convex image-side surface,
wherein the eighth lens has positive refractive power, and
wherein the imaging lens system satisfies the following conditional expression:
1.10<f3/f<1.40,
where f is a focal length of the imaging lens system, and f3 is a focal length of the third lens,
wherein the second lens has a convex image-side surface.
Claim 3 of Chae discloses all the limitations of claim 11 of the present application
except for 1.16<f3/f<1.26.
However, Chae discloses 1.10<f3/f<1.40.
Here, the claimed range 1.16<f3/f<1.26 lies inside the range for f3/f disclosed by Chae. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Chae so that f3/f lies within the claimed range, for the purpose of downsizing the imaging lens and correcting spherical aberration, see [0048] of Hirano (US 2020/0400922, hereinafter, “Hirano”).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 3-8, 10, 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al. (US 2019/0235196, hereinafter, “Hong”).
Regarding claim 1, Hong discloses an imaging lens system 100 (Fig. 1) comprising:
a first lens L1, a second lens L2, a third lens L3, a fourth lens L4, a fifth lens L5, a sixth lens L6, a seventh lens L7, and an eighth lens L8, sequentially arranged from an object side (Fig. 1, [0033]), wherein
each of the second lens and the third lens has a positive refractive power ([0033]), wherein
the imaging lens system satisfies conditional expression:
❘L3DTn❘<10.0[10-6/°C.] (Table 3, DN/DT=0.2 or 1.7 for L3), where L3DTn is a change rate in refractive index according to a change in temperature of the third lens.
Regarding claim 3, Hong discloses the imaging lens system of claim 1, wherein
the first lens comprises a concave image-side surface (Fig. 1).
Regarding claim 4, Hong discloses the imaging lens system of claim 1, wherein
the second lens comprises a convex image-side surface (Fig. 1, [0037]).
Regarding claim 5, Hong discloses the imaging lens system of claim 1, wherein
the third lens comprises a convex image-side surface (Fig. 1).
Regarding claim 6, Hong discloses the imaging lens system of claim 1, wherein
the fourth lens comprises a concave image-side surface (Fig. 1).
Regarding claim 7, Hong discloses the imaging lens system of claim 1, wherein
the fifth lens comprises a convex image-side surface (Fig. 1).
Regarding claim 8, Hong discloses the imaging lens system of claim 1, wherein
the sixth lens comprises a concave image-side surface (Fig. 1, [0038]).
Regarding claim 10, Hong discloses the imaging lens system of claim 1, wherein
the eighth lens comprises a convex object-side surface (Fig. 1, [0038]).
Regarding claim 17, Hong discloses an imaging lens system 100 (Fig. 1) comprising:
a first lens L1, a second lens L2, a third lens L3, a fourth lens L4, a fifth lens L5, a sixth lens L6, a seventh lens L7, and an eighth lens L8, sequentially arranged from an object side (Fig. 1, [0033]),
wherein a material of the first to third lenses is different from a material of the fourth to eighth lenses (the change rate in the refractive index according to a change in temperature DN/DT is different for the L1-L8 lenses, see Table 3),
wherein each of the second lens and the third lens has a positive refractive power ([0033]),
wherein the imaging lens system satisfies conditional expression: ❘L3DTn❘<10.0[10-6/°C.] (Table 3, DN/DT=0.2 or 1.7 for L3),
where L3DTn is a change rate in refractive index according to a change in temperature of the third lens.
Regarding claim 18, Hong discloses the imaging lens system of claim 17, wherein the material of the first to third lenses is glass ([0039]).
Claims 11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feng et al. (US 2021/0149164, hereinafter, “Feng”).
Regarding claim 11, Feng discloses an imaging lens system (Fig. 3) comprising:
a first lens E1, a second lens E2, a third lens E3, a fourth lens E4, a fifth lens E5, a sixth lens E6, a seventh lens E7, and an eighth lens E8, sequentially arranged from an object side,
wherein the second lens has a convex image-side surface ([0063]),
wherein the imaging lens system satisfies conditional expression: 1.16<f3/f<1.26 (Table 6, f3=8.15, f=7.0, f3/f=1.164),
where f is a focal length of the imaging lens system, and f3 is a focal length of the third lens.
Regarding claim 14, Feng discloses the imaging lens system of claim 11, wherein the imaging lens system satisfies the conditional expression:
-5.0<(f1+f2)/(f3+f4)<-2.0 (Table 6, f1=5.02, f2=-21.66, f3=8.15, f4=-4.09, thus, (f1+f2)/(f3+f4)=-4.09),
where f1 is a focal length of the first lens, f2 is a focal length of the second lens, and f4 is a focal length of the fourth lens.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hong, as evidenced by Huang (US 2019/0258028, hereinafter, “Huang”).
Regarding claim 19, Hong discloses the imaging lens system of claim 17.
Hong does not disclose wherein the material of the fourth to eighth lenses is plastic.
The parameter of a material of a lens is a result-effective variable, i.e., it is are recognized to achieve a recognized result, for example, affecting the refractive power distribution of the optical lens assembly or the manufacturing cost, see, for example, [0072] in Huang (disclosing an optical lens assembly).
Hong discloses the claimed invention except for the material of the fourth to eighth lens being plastic.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Hong so that L4 to L8 are made of plastic, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the current instance, the material of a lens is an art recognized result-effective variable in that it affects the performance of the lens assembly, as taught by Huang.
Thus, one would have been motivated to optimize the material of the L4-L8 lenses because it is an art-recognized result-effective variable 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 claim 20, Hong discloses the imaging lens system of claim 17, wherein the material of the first to third lenses is glass ([0039]).
Hong does not disclose wherein the material of the fourth to eighth lenses is plastic.
The parameter of a ratio of focal lengths of lenses in the lens assembly is a result-effective variable, i.e., it is are recognized to achieve a recognized result, for example, improving the imaging quality of the optical lens assembly or the manufacturing cost, see [0041] in Huang (disclosing an optical lens assembly).
Hong discloses the claimed invention except for the material of the fourth to eighth lens being plastic.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Hong so that L4 to L8 are made of plastic, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the current instance, the material of a lens is an art recognized result-effective variable in that it affects the performance of the lens assembly, as taught by Huang.
Thus, one would have been motivated to optimize the material of the L4-L8 lenses because it is an art-recognized result-effective variable 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”.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano.
Regarding claim 11, Hirano discloses an imaging lens system (Fig. 28) comprising:
a first lens L1, a second lens L2, a third lens L3, a fourth lens L4, a fifth lens L5, a sixth lens L6, a seventh lens L7, and an eighth lens L8, sequentially arranged from an object side (Fig. 31, [0189]), wherein
wherein the second lens L2 has a convex image-side surface ([0193]).
Hirano does not disclose wherein the imaging lens system satisfies conditional expression: 1.16<f3/f<1.26, where f is a focal length of the imaging lens system, and f3 is a focal length of the third lens.
However, Hirano discloses f3/f=1.0, [0624], Ex. 10.
The parameter of a ratio of a focal length of a lens to the total focal length in the lens assembly is a result-effective variable, i.e., it is are recognized to achieve a recognized result, for example, downsizing the optical lens assembly and improving the imaging quality of the optical lens assembly, see [0048] in Hirano.
Hirano discloses the claimed invention except for the claimed range for f3/f.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Hirano so that f3/f lies in the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the current instance, the ratio of a focal length of a lens to the total focal length in a lens assembly is an art recognized result-effective variable in that it affects the performance of the lens assembly, as taught by Hirano.
Thus, one would have been motivated to optimize the ratio f3/f because it is an art-recognized result-effective variable 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 claim 13, Hirano discloses the imaging lens system satisfies the conditional expression: 1.8<f2/f3<2.60 (f2/f3=2.1, [0623]), where f2 is a focal length of the second lens.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2022/0208256, hereinafter, “Chen”), as evidenced by Hirano.
Regarding claim 11, Chen discloses an imaging lens system 10 (Fig. 1) comprising:
a first lens L1, a second lens L2, a third lens L3, a fourth lens L4, a fifth lens L5, a sixth lens L6, a seventh lens L7, and an eighth lens L8, sequentially arranged from an object side (Fig. 1, [0038]), wherein
wherein the second lens L2 has a convex image-side surface ([0048]).
Chen does not disclose wherein the imaging lens system satisfies conditional expression: 1.16<f3/f<1.26, where f is a focal length of the imaging lens system, and f3 is a focal length of the third lens.
However, Chen discloses (f3/f=1.29, Table 13, Emb. 1).
Here, the value for f3/f is close with the claimed range for f3/f. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Therefore, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Chen so that f3/f lies within the claimed range, for the purpose of downsizing the imaging lens and correcting spherical aberration, see [0048] of Hirano.
Regarding claim 12, Chen discloses the imaging lens system of claim 11.
Chen does not disclose the imaging lens system satisfies the conditional expression:
-1.0<f1/f3<-0.60, where f1 is a focal length of the fist lens.
However, Chen discloses f1/f3=-1.21 (Table 13, Emb. 1).
The parameter of a ratio of focal lengths of lenses in the lens assembly is a result-effective variable, i.e., it is are recognized to achieve a recognized result, for example, improving the imaging quality of the optical lens assembly, see [0041] in Chen
Chen discloses the claimed invention except for the claimed range for f1/f3.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Chen so that f1/f3 lies in the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the current instance, the ratio of focal lengths of lenses in a lens assembly is an art recognized result-effective variable in that it affects the performance of the lens assembly, as taught by Chen.
Thus, one would have been motivated to optimize the ratio f1/f3 because it is an art-recognized result-effective variable 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”.
Allowable Subject Matter
Claims 2, 9 and 15-16 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and provided that the provisional double patenting rejection of claim 11 is overcome.
Regarding claim 2, in Hong, f3/f=8.31 (Table 4) which is away from the claimed range.
Regarding claim 9, Hong is silent as to L7 comprising a convex object-side surface.
Regarding claim 15, Feng is silent as to values of L1DTn to L8DTn. In addition, in Hong, f3/f=8.31 (Table 4) which is away from the claimed range.
Regarding claim 16, Feng is silent as to values of L1DTn to L8DTn. In addition, in Hong, f3/f=8.31 (Table 4) which is away from the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEONIDAS BOUTSIKARIS whose telephone number is (703)756-4529. The Examiner can normally be reached Mon. - Fr. 9.00-5.00.
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/L.B./
Patent Examiner, AU 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872