DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 2, 2026 has been entered.
The amended claims submitted June 2, 2026 in response to the office action mailed April 20, 2026 are under consideration. Claims 1-3, 5-11 and 13-14 are pending. Claims 4, 12 and 15 are cancelled.
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 1-3, 5-11 and 13-14 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 8, the limitation “OAL/f < (Img HT) < 1.5” is not supported by the specification as filed, in that the portion of the expression (Img HT) < 1.5 is not supported. In particular, Figs. 2, 5, and 8 depict IMG HT of 3.74, 3.74 and 3.75, which are reasonably consistent with the tabulated values of OAL=5.34, OAL/(Img HT)=1.428 ; OAL=5.14 OAL/(Img HT)=1.376 and OAL=5.34 OAL/(Img HT)=1.428 from Figs. 3, 6 and 9 and Table 1. Thus, the specification does not support imaging lens systems having (Img HT) < 1.5. Rather it appears most likely that the claimed expression is in error and the intended limitation would have been OAL/f < OAL/(Img HT) < 1.5. Appropriate correction is required.
Claims 2-3 and 5-7 depend from claim 1 and inherit and do not mitigate the above written description issue from claim 1.
Claims 9-11 and 13-14 depend from claim 8 and inherit and do not mitigate the above written description issue from claim 8.
In the interest of compact prosecution, claims 1 and 8 will be treated as if the above error was corrected to claim OAL/f < OAL/(Img HT) < 1.5, so that the applicant is properly informed as to the rejection that would follow such an amendment.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. US 2015/0138431 A1 (cited in an IDS, hereafter Shin) in view of Park US 2016/0124189 A1 (cited in an IDS, hereafter Park) and Gross et al. "Handbook of Optical Systems Volume 3: Aberration Theory and Correction of Optical Systems" (previously cited, hereafter Gross) as evidenced by Kimura US 2021/0096343 A1 (hereafter Kimura).
The applied reference, Park, has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Additionally, although reference, Park, could be excepted as prior art under 35 U.S.C. 102(a)(2), as explained above, it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 103 by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Regarding claim 1, Shin teaches “An imaging lens system (paragraph [0072]: “photographing lens group L” of Fig. 5, Table 5 ) comprising:
a first lens (first lens G1) comprising a refractive power (paragraph [0072]: “a focal length (f1) of a first lens G1 is 3.061 mm”);
a second lens (second lens G2) comprising a refractive power (paragraph [0072]: “a focal length (f2) of a second lens G2 is -4.961 mm”) and a concave image-side surface (Table 5 the radius of curvature of surface S4 is positive, indicating concave on the image-side);
a third lens (third lens G3) comprising positive refractive power (paragraph [0072]: “a focal length (f3) of a third lens G3 is -48.127 mm”. However, using the data in Table 5, one can see that G3 is positive meniscus, not negative meniscus, and a focal length calculated using the Full Lens Maker’s equation gives f3=48.1. Thus the value in paragraph [0072] is taken to be a typographical error, and the data in Table 5 teaches a positive refractive power.) …
a fourth lens (fourth lens G4) comprising positive refractive power (paragraph [0072]: “a focal length (f4) of a fourth lens G4 is 20.492 mm”);
a fifth lens (fifth lens G5) comprising a refractive power (paragraph [0072]: “a focal length (f5) of a fifth lens G5 is -14.033 mm”); and
a sixth lens (sixth lens G6) comprising positive refractive power (paragraph [0072]: “a focal length (f6) of a sixth lens G6 is 42.411 mm.”) and a concave image-side surface (Table 5 the radius of curvature of surface S12 is positive indicating concave on the image-side),
wherein one or more of the first lens and the second lens has positive refractive power (paragraph [0072]: “a focal length (f1) of a first lens G1 is 3.061 mm”),
wherein the first to sixth lenses are sequentially disposed from an object to an image side (see order in Fig. 5 and Table 5),
wherein the imaging lens system comprises no more than six lenses having refractive power (there are six and only six lenses with non-zero refractive power in Fig. 5 and Table 5),
wherein a distance from an image-side surface of the first lens to an object-side surface of the second lens (Table 5 the thickness of surface S2 is 0.025) … a distance from an image-side surface of the fifth lens to an object-side surface of the sixth lens (Table 5 the thickness of surface S10 is 0.025),
wherein an absolute value of a radius of curvature of an object-side surface of the second lens (Table 5 the radius of curvature of surface S3 is 3.657) is less than an absolute value of a radius of curvature of an object-side surface of the third lens (Table 5 the radius of curvature of surface S5 is 11.587, where 3.657 is less than 11.587),
wherein a thickness of the third lens (Table 5 the thickness of surface S5 is 0.483) is greater than a thickness of the fourth lens (Table 5 the thickness of surface S7 is 0.369 where 0.483 is greater than 0.369),
wherein an absolute value of a radius of curvature of an image-side surface of the fourth lens (Table 5 the radius of curvature of surface S8 is 23.697) is greater than an absolute value of a radius of curvature of an object-side surface of the sixth lens (Table 5 the radius of curvature of surface S11 is 1.660),
wherein an absolute value of a radius of curvature of an object-side surface of the fourth lens (Table 5 the radius of curvature of surface S7 is 7.532) … the absolute value of the radius of curvature of the image-side surface of the fourth lens (Table 5 the radius of curvature of surface S8 is 23.697), and
wherein … f/f3 <0.5 (given the values that follow f/f3=0.094),
OAL/f < (Img HT) < 1.5, (given the values that follow OAL/f=5.44.542=1.19 and OAL/(Img HT)=5.4/3.43=1.572. Thus OAL/F is less than both OAL/(Img HT) and less than 1.5, however, OAL/(Img HT) is slightly larger than 1.5) and
F No. (the F No. of an imaging lens system is the focal length, f, divided by the entrance pupil diameter, EPD. Paragraph [0072] discloses “an effective focal length (f) of the photographing lens group L is 4.542 mm”. The value of EPD can be measured by using OAL to determine the scale of the ray-tracing diagram of Fig. 5, and measuring the diameter of the first lens as evidence by Kimura paragraph [0040] which teaches “The effective diameter may not be described in the lens data of the literature. In that case, the simplest way to obtain the effective ray diameter is to find the drawing magnification from the actual overall length of the lens drawn in the sectional view of the zoom lens and the known overall lens length shown by numerical data, and to multiply the actual size of the diameter of the drawn curved part by the drawing magnification.” From the examiner’s markup of Fig. 5 below 5.4 mm corresponds to 3.63 in, therefor 1.46 in corresponds to 2.17 mm. Thus F No. =f/EPD =4.542/2.17=2.09 which is slightly larger than 2.0),
where f is a focal length of the imaging lens system (paragraph [0072] “an effective focal length (f) of the photographing lens group L is 4.542 mm”) f3 is focal length of the third lens (paragraph [0072]: “a focal length (f3) of a third lens G3 is -48.127 mm”. However, using the data in Table 5, one can see that G3 is positive meniscus, not negative meniscus, and a focal length calculated using the Full Lens Maker’s equation gives f3=48.1.), OAL is a distance from an object-side surface of the first lens to an imaging plane (OAL is the sum of all of the thicknesses in Table 5, thus OAL=5.4), and Img HT is a height of the imaging plane (Fig. 6 Img HT=3.43).”
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528
462
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However, Shin Fig. 5, Table 5 fails to teach “a third lens comprising… a convex image-side surface along an optical axis.” instead teaching a positive meniscus lens, concave to the image-side.
Shin Table 1 teaches that a positive third lens in such a system can be biconvex.
Gross teaches (page 378 section 33.1.4) that bending a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Bending a lens involves modifying the curvatures of the two surfaces while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that bending a lens can be done without any great perturbation of the existing setup.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to the shape of the third lens to be bi-convex as taught by Table 1, because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
That this is possible can be demonstrated with an example, where the focal length of the first lens can be calculated using the Full Lens Maker’s Equation.
Given the data for the third lens in Table 5, one can calculate:
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44
306
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Choosing the third lens to be biconvex one can empirically find a set of curvatures, that maintain the same focal length (to at least two decimal points), even without changing the thickness or refractive index.
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44
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The above example is provided merely to demonstrate the principle that bending a lens can be performed without introducing any change in the refractive power, and is not in any way limiting. It is worth noting, however, that changing the third lens to be bi-convex while maintaining the same focal length will necessarily result in a flatter object-side surface with a larger radius of curvature such that the limitation “wherein an absolute value of a radius of curvature of an object-side surface of the second lens is less than an absolute value of a radius of curvature of an object-side surface of the third lens” will still be maintained after such a modification.
However, Shin Fig. 5 Table 5 also fails to teach “wherein an absolute value of a radius of curvature of an object-side surface of the fourth lens is greater than the absolute value of the radius of curvature of the image-side surface of the fourth lens.”
Shin Fig. 7 Table 7 teaches a similar system having six and only six lenses also arranged PNPPNP (where P is positive and N is negative).
Shin Fig. 7, Table 7 teaches “wherein an absolute value of a radius of curvature of an object-side surface of the fourth lens (Table 7 the absolute value of the radius of curvature of surface S7 is 8.425) is greater than the absolute value of the radius of curvature of the image-side surface of the fourth lens (Table 7 the absolute value of the radius of curvature of surface S8 is 6.038).”
In particular, in Fig. 5, Table 5, the fourth lens is positive meniscus, convex to the object-side on axis, while in Fig. 7 Table 7, the fourth lens is positive meniscus, convex to the image-side on axis.
Gross teaches (page 378 section 33.1.4) that flipping a lens into reverse orientation is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Flipping a lens reverses its orientation while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that flipping a lens can be done without any great perturbation of the existing setup.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to reverse the orientation of at least the on-axis portion of the fourth lens of Fig. 5 Table 5 of Shin to be meniscus convex to the image-side as taught by Fig. 7 Table 7 of Shin, because Gross teaches that flipping the orientation of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that flipping a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
With such a modification the on-axis portion of the fourth lens would have an object side radius of -23.697 and an image-side radius of -7.532, such that “an absolute value of a radius of curvature of an object-side surface of the fourth lens (the absolute value of -23.697 is 23.697) is greater than the absolute value of the radius of curvature of the image-side surface of the fourth lens (the absolute value of -7.532 is 7.532).”
This modification also still meets the limitation “wherein an absolute value of a radius of curvature of an image-side surface of the fourth lens (the absolute value of -7.532 is 7.532) is greater than an absolute value of a radius of curvature of an object-side surface of the sixth lens (Table 5 the radius of curvature of surface S11 is 1.660).”
However, Shin also fails to teach “wherein a distance from an image-side surface of the first lens to an object-side surface of the second lens is greater than a distance from an image-side surface of the fifth lens to an object-side surface of the sixth lens” instead teaching both of these distances having the same value of 0.025, see Table 5.
The Examiner contends that the prior art, Shin value of 0.025 for the gap between the fifth and sixth lenses is sufficiently close to the claimed range of less than 0.025 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 0.025 and the endpoint of less than 0.025 is insubstantial, representing only a infinitesimal difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the gap between the fifth and sixth lenses value from the prior art is substantially closer to Applicant’s claimed range than was the case in the Titanium Metals decision. Moreover, the present record does not demonstrate any substantial difference in operation, or any superior and unexpected effect, attributable to the claimed range of less than 0.025.
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 0.025 for the gap between the fifth and sixth lenses, from the prior art disclosure, is sufficiently close to the claimed range of less than 0.025 to render it obvious because the difference between 0.025 and the endpoint of less than 0.025 is both infinitesimal and insubstantial, a value of 0.025 is reasonably expected to have the same effect as if it were the endpoint of the range for the gap between the fifth and sixth lenses, 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.
However, Shin also fails to teach “wherein 0.1 < f/f3 <0.5” instead teaching a value of 0.094 that is so close that one of ordinary skill in the art would have expected them to have the same properties.
Park teaches (claim 1) “An imaging lens system (lens module 600, sixth embodiment Figs. 21-24 and Tables 1 and 2) comprising:
a first lens (610 first lens) comprising a refractive power (Table 1 f1=3.263);
a second lens (620 second lens) comprising a refractive power (Table 1 f2=-8.572) and a concave image-side surface (e.g. paragraph [0153]: “an image-side surface of the second lens 620 may be concave.”);
a third lens (630 third lens) comprising positive refractive power (Table 1 f3=12.023) and a convex image-side surface along an optical axis (paragraph [0153]: “an image-side surface of the third lens 630 may be convex”);
a fourth lens (640 fourth lens) comprising positive refractive power (Table 1 f4=19.761);
a fifth lens (650 fifth lens) comprising a refractive power (Table 1 f5=-6.587); and
a sixth lens (660 sixth lens) comprising positive refractive power (Table 1 f6=98.26) and a concave image-side surface (e.g. paragraph [0153]: “an image-side surface of the sixth lens 660 may be concave”),
wherein one or more of the first lens and the second lens has positive refractive power (see Table 1 f1 is positive and thus the first lens has positive refractive power),
wherein the first to sixth lenses are sequentially disposed from an object to an image side (see order in Figs. 21 and 23),
wherein the imaging lens system comprises no more than six lenses having refractive power (there are only six lenses with non-zero refractive power in lens module 600),
…
wherein an absolute value of a radius of curvature of an object-side surface of the second lens (Fig. 23 the radius of surface 4 is 4.07) is less than an absolute value of a radius of curvature of an object-side surface of the third lens (Fig. 23 the radius of surface 7 is 16.71, where 4.07 is less than 16.71),
wherein a thickness of the third lens (Fig. 23 the thickness of surface 7 is 0.437) is greater than a thickness of the fourth lens (Fig. 23 the thickness of surface 9 is 0.350, where 0.437 is greater than 0.350),
wherein an absolute value of a radius of curvature of an image-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 10 is 2.35) is greater than an absolute value of a radius of curvature of an object-side surface of the sixth lens (Fig. 23 the radius of surface 13 is 1.29 where 2.35 is greater than 1.29),
wherein an absolute value of a radius of curvature of an object-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 9 is 2.70) is greater than the absolute value of the radius of curvature of the image-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 10 is 2.35, where 2.70 is greater than 2.35), and
wherein 0.1 < f/f3 <0.5 (Table 1 f=3.730 and f3=12.023, thus f/f3=0.31, see also Table 2 where f3/f=3.223 which would also make f/f3=0.31), where f is a focal length of the imaging lens system (Table 1 f=3.730) and f3 is focal length of the third lens (Table 1 f3=12.023).”
Park further teaches (paragraphs [0058]-[0060]): “0<f3/f<6.0 [Conditional Expression]… f3 is a focal length [mm] of the third lens… and f is the overall focal length [mm] of the lens module. The Conditional Expressions above may provide refractive power ranges of the second to fifth lenses, in which a length of the optical system may be shortened. In addition, the Conditional Expressions above may be optimal conditions for correcting aberration.”
The Examiner contends that the prior art, Shin value of 0.094 for f/f3 is sufficiently close to the claimed range of 0.1 to 0.5 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 0.094 and the endpoint of 0.1 is insubstantial, representing only a 6% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated f/f3 value from the prior art is similarly close to Applicant’s claimed range as 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 0.1 to 0.5.
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 0.094 for f/f3, calculated from the prior art disclosure, is sufficiently close to the claimed range of 0.1 to 0.5 to render it obvious because the difference between 0.094 and the endpoint of 0.1 is insubstantial, a value of 0.094 is reasonably expected to have the same effect as if it were the endpoint of the range for f/f3, 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.
Furthermore, one of ordinary skill in the art would have been motivated to optimize f/f3 because Park teaches paragraphs [0058]-[0060]): “0<f3/f<6.0 [Conditional Expression]… f3 is a focal length [mm] of the third lens… and f is the overall focal length [mm] of the lens module. The Conditional Expressions above may provide refractive power ranges of the second to fifth lenses, in which a length of the optical system may be shortened. In addition, the Conditional Expressions above may be optimal conditions for correcting aberration.”
Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Park teaches a similar six lens system with f/f3=0.31 well within the claimed range.
Lastly, it is worth noting that paragraph [0063] of the specification as filed discloses: “When the refractive power of the third lens exceeds a lower limit of Conditional Expression 1, the refractive power of the third lens is small, and it may be difficult to achieve a desired resolution of the imaging lens system.” However, this is not considered to amount to evidence of criticality or unexpected results. As noted in MPEP §712.02 “Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected).” Further as noted in MPEP §712.02 (I) “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
However, Shin fails to teach OAL/(Img HT) < 1.51, instead teaching a value of 1.572 which 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, Shin value of 1.572 for OAL/(Img HT) is sufficiently close to the claimed range of OAL/(Img HT) < 1.5 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 1.572 and the endpoint of 1.5 is insubstantial, representing only a 4.8% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated OAL/(Img HT) 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 OAL/(Img HT) < 1.5. Although the expression OAL/(Img HT) < 1.5 corresponds to Conditional Expression 6 in the specification, no discussion is provided that discusses the criticality or even the advantages of meeting this range.
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 1.572 for OAL/(Img HT), calculated from the prior art disclosure, is sufficiently close to the claimed range of OAL/(Img HT) < 1.5 to render it obvious because the difference between 1.572 and the endpoint of 1.5 is insubstantial, a value of 1.572 is reasonably expected to have the same effect as if it were the endpoint of the range for OAL/(Img HT), 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.
However, Shin fails to teach “F No. < 2.0” instead teaching a value of 2.09 which 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, Shin value of 2.09 for F No. is sufficiently close to the claimed range of F No. < 2.0 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 2.09 and the endpoint of 2.0 is insubstantial, representing only a 4.5% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated F No. 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 F No. < 2.0. Although the expression F No. < 2.0 is present in the specification, no discussion is provided that discusses the criticality or even the advantages of meeting this range.
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 2.09 for F No., calculated from the prior art disclosure, is sufficiently close to the claimed range of F No. < 2.0 to render it obvious because the difference between 2.09 and the endpoint of 2.0 is insubstantial, a value of 2.09 is reasonably expected to have the same effect as if it were the endpoint of the range for F No., 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 notes that, although, at first glance it might seem as if the number and significance of the suggested modifications might render the prior art inoperable or fail to have a reasonable expectation of success, when considering all of the changes together in light of the teachings of Shin, the modifications are, in fact, minor and insignificant.
Firstly, it is worth noting that the third lens is the weakest lens on-axis in the system and both of the on-axis shapes of the surfaces of the third lens are nearly flat. Thus, modifying the image-side of the third lens to be mildly convex rather than mildly concave makes almost no impact on the lens system as a whole. Even changing the focal length of the third from 48.1 to 45.3 barely impacts the focal length of the system. Compare the output of a matrix calculator that encodes the full Lens Maker’s equation for the original data and with the data of the third lens modified below:
Original Data of Table 5:
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418
382
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90
418
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Table 5 with the third lens chosen to be bi-convex and have a slightly shorter focal length:
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416
380
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94
430
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Likewise, the fourth lens is relatively weak on axis, such that it is not difficult to empirically find values of the radii of curvature of the two surfaces of the fourth lens that meet the claim limitations thereon, but which keep the focal length of the system as a whole relatively unchanged, see below:
Both the third lens and the fourth lens surfaces modified and the gap between the fifth and sixth lenses made slightly smaller than the gap between the first and second lenses:
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422
380
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92
426
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Furthermore, these changes must be considered in the context of Shin as a whole. In particular, Shin teaches (paragraphs [0008]-[0012]):
“One or more embodiments of the present disclosure include an electronic apparatus that includes a compact high-performance photographing lens group. Additional embodiments will be set forth in part in the description which follows and, in part, will be apparent from the description, or may be learned by practice of the presented embodiments. According to one or more embodiments, a photographing lens group includes… a third lens having a positive or negative refractive power; a fourth lens having a positive or negative refractive power… The photographing lens group may satisfy an inequality of 0<|f1/f3|+|f1/f4|<1.0, where f1 is a focal length of the first lens, f3 is a focal length of the third lens, and f4 is a focal length of the fourth lens.”
(paragraphs [0051]-[0053]): “The photographing lens group L may satisfy the following inequality: 0<|f1/f3|+|f1/f4|<1.0 <Inequality 3>… may be limited to not exceed an upper limit value (e.g., 1.0) of Inequality 3 so that a refractive power of the first lens G1 is reduced, thus facilitating correction of spherical aberration and coma aberration.”
The above example which satisfies all of the claimed limitations has f1 = 3.06, f3 = 45.37 and f4 = 16.45, which would result in |f1/f3|+|f1/f4| = 0.067 + 0.186 = 0.253 which is well within the preferred range of Shin. Thus, the above modifications, when taken in context of the routine experimentation one of ordinary skill in the art would typically perform, does not appear to render the lens system of Shin inoperable. Furthermore, one of ordinary skill in the art would have a reasonable expectation of success of achieving the desired high optical performance of Shin when making this modification because the proposed modifications can be completed while maintaining the preferred ranges of parameters disclosed in Shin.
Lastly, it is important to note that the above specific implementations of the proposed modifications are for the purpose of illustration only, and should not in any way be construed as limiting. An ordinary skilled artisan has access to sophisticated lens design programs such as Zemax and CodeV, that would enable them to optimize the lens system to achieve the desired performance after making modifications along the lines of those proposed above.
Regarding claim 2, the Shin combination teaches “The imaging lens system of claim 1,” however, Shin fails to teach “wherein the first lens has a concave image-side surface along an optical axis.”
Park teaches (claim 1) “An imaging lens system (lens module 600, sixth embodiment Figs. 21-24 and Tables 1 and 2) comprising:
a first lens (610 first lens) comprising a refractive power (Table 1 f1=3.263);
a second lens (620 second lens) comprising a refractive power (Table 1 f2=-8.572) and a concave image-side surface (e.g. paragraph [0153]: “an image-side surface of the second lens 620 may be concave.”);
a third lens (630 third lens) comprising positive refractive power (Table 1 f3=12.023) and a convex image-side surface along an optical axis (paragraph [0153]: “an image-side surface of the third lens 630 may be convex”);
a fourth lens (640 fourth lens) comprising positive refractive power (Table 1 f4=19.761);
a fifth lens (650 fifth lens) comprising a refractive power (Table 1 f5=-6.587); and
a sixth lens (660 sixth lens) comprising positive refractive power (Table 1 f6=98.26) and a concave image-side surface (e.g. paragraph [0153]: “an image-side surface of the sixth lens 660 may be concave”),
wherein one or more of the first lens and the second lens has positive refractive power (see Table 1 f1 is positive and thus the first lens has positive refractive power),
wherein the first to sixth lenses are sequentially disposed from an object to an image side (see order in Figs. 21 and 23),
wherein the imaging lens system comprises no more than six lenses having refractive power (there are only six lenses with non-zero refractive power in lens module 600),
…
wherein an absolute value of a radius of curvature of an object-side surface of the second lens (Fig. 23 the radius of surface 4 is 4.07) is less than an absolute value of a radius of curvature of an object-side surface of the third lens (Fig. 23 the radius of surface 7 is 16.71, where 4.07 is less than 16.71),
wherein a thickness of the third lens (Fig. 23 the thickness of surface 7 is 0.437) is greater than a thickness of the fourth lens (Fig. 23 the thickness of surface 9 is 0.350, where 0.437 is greater than 0.350),
wherein an absolute value of a radius of curvature of an image-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 10 is 2.35) is greater than an absolute value of a radius of curvature of an object-side surface of the sixth lens (Fig. 23 the radius of surface 13 is 1.29 where 2.35 is greater than 1.29),
wherein an absolute value of a radius of curvature of an object-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 9 is 2.70) is greater than the absolute value of the radius of curvature of the image-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 10 is 2.35, where 2.70 is greater than 2.35), and
wherein 0.1 < f/f3 <0.5 (Table 1 f=3.730 and f3=12.023, thus f/f3=0.31, see also Table 2 where f3/f=3.223 which would also make f/f3=0.31), where f is a focal length of the imaging lens system (Table 1 f=3.730) and f3 is focal length of the third lens (Table 1 f3=12.023).”
(claim 2) “wherein the first lens has a concave image-side surface along an optical axis (Fig. 23 the radius of curvature of surface no. 3 is positive indicating concave on the image-side see also paragraph [0153] “an image-side surface of the first lens 610 may be concave”).”
Gross teaches (page 378 section 33.1.4) that bending a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Bending a lens involves modifying the curvatures of the two surfaces while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that bending a lens can be done without any great perturbation of the existing setup.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the first lens to be positive meniscus, concave to the image side as taught by Park, rather than bi-convex as in Shin Table 5, because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4).
Regarding claim 3, the Shin combination teaches “The imaging lens system of claim 1,” and Shin Table 5 further teaches “wherein the second lens has a convex object-side surface along an optical axis (Table 5 the radius of curvature of surface S3 is positive indicating convex on the object-side).”
Regarding claim 5, the Shin combination teaches “The imaging lens system of claim 1,” and Shin Table 5 further teaches “wherein the third lens has a convex object-side surface along an optical axis (Table 5 the radius of curvature of surface S5 is positive indicating convex on the object-side. Note that the modifications proposed for claim 1 served to make the third lens bi-convex which would still meet this limitation).”
Regarding claim 6, the Shin combination teaches “The imaging lens system of claim 1,” and Shin Table 5 further teaches “wherein the fifth lens has a concave object-side surface along an optical axis (Table 5 the radius of curvature of surface S9 is negative indicating concave on the object-side.).”
Regarding claim 7, the Shin combination teaches “The imaging lens system of claim 1,” and Shin Table 5 further teaches “wherein the sixth lens has a convex object-side surface along an optical axis (Table 5 the radius of curvature of surface S11 is positive indicating convex on the object-side.).”
Claims 8-11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Park US 2016/0124189 A1 (cited in an IDS, hereafter Park) in view of Gross et al. "Handbook of Optical Systems Volume 3: Aberration Theory and Correction of Optical Systems" (previously cited, hereafter Gross).
The applied reference, Park, has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Additionally, although reference, Park, could be excepted as prior art under 35 U.S.C. 102(a)(2), as explained above, it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 103 by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Regarding claim 8, Park teaches “An imaging lens system (lens module 600, sixth embodiment Figs. 21-24 and Tables 1 and 2) comprising:
a first lens (610 first lens) comprising a refractive power (Table 1 f1=3.263);
a second lens (620 second lens) comprising a refractive power (Table 1 f2=-8.572) and a concave image-side surface (e.g. paragraph [0153]: “an image-side surface of the second lens 620 may be concave.”);
a third lens (630 third lens) comprising positive refractive power (Table 1 f3=12.023);
a fourth lens (640 fourth lens) comprising positive refractive power (Table 1 f4=19.761);
a fifth lens (650 fifth lens) comprising a refractive power (Table 1 f5=-6.587); and
a sixth lens (660 sixth lens) comprising positive refractive power (Table 1 f6=98.26) and a concave image-side surface along an optical axis (e.g. paragraph [0153]: “an image-side surface of the sixth lens 660 may be concave”),
wherein one or more of the first lens and the second lens has positive refractive power (see Table 1 f1 is positive and thus the first lens has positive refractive power),
wherein the first to sixth lenses are sequentially disposed from an object to an image side (see order in Figs. 21 and 23),
wherein the imaging lens system comprises no more than six lenses having refractive power (there are only six lenses with non-zero refractive power in lens module 600),
wherein a thickness of the first lens (Fig. 23 the thickness of surface 2 is 0.576) is greater than a thickness of the sixth lens (Fig. 23 the thickness of surface 13 is 0.513, where 0.576 is greater than 0.513),
wherein an absolute value of a radius of curvature of an image-side surface of the first lens (Fig. 23 the radius of surface 3 is 4.62) … an absolute value of a radius of curvature of an image-side surface of the fifth lens (Fig. 23 the radius of surface 12 is 5.26),
wherein an absolute value of a radius of curvature of an object-side surface of the second lens (Fig. 23 the radius of surface 4 is 4.07) is less than an absolute value of a radius of curvature of an object-side surface of the third lens (Fig. 23 the radius of surface 7 is 16.71, where 4.07 is less than 16.71),
wherein a thickness of the third lens (Fig. 23 the thickness of surface 7 is 0.437) is greater than a thickness of the fourth lens (Fig. 23 the thickness of surface 9 is 0.350, where 0.437 is greater than 0.350),
wherein an absolute value of a radius of curvature of an image-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 10 is 2.35) is greater than an absolute value of a radius of curvature of an object-side surface of the sixth lens (Fig. 23 the radius of surface 13 is 1.29 where 2.35 is greater than 1.29),
wherein an absolute value of a radius of curvature of an object-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 9 is 2.70) is greater than the absolute value of the radius of curvature of the image-side surface of the fourth lens (Fig. 23 the absolute value of the radius of surface 10 is 2.35, where 2.70 is greater than 2.35), and
wherein 0.1 < f/f3 <0.5 (Table 1 f=3.730 and f3=12.023, thus f/f3=0.31, see also Table 2 where f3/f=3.223 which would also make f/f3=0.31),
OAL/f < (Img HT) < 1.5 (given the values that follow OAL/f=4.435/3.73=1.189 and OAL/(Img HT)=4.435/2.93=1.514. Thus OAL/f is less than both OAL/(Img HT) and 1.5. However, OAL/(Img HT) is slightly larger than 1.5), and
F No. (Table 1 F No. = 2.07),
where f is a focal length of the imaging lens system (Table 1 f=3.730), f3 is focal length of the third lens (Table 1 f3=12.023), OAL is a distance from an object-side surface of the first lens to an imaging plane (Table 1 OAL=4.435), and Img HT is a height of the imaging plane (Fig. 22 Img HT=2.93).”
However, the lens module 600 fails to teach “wherein an absolute value of a radius of curvature of an image-side surface of the first lens is greater than an absolute value of a radius of curvature of an image-side surface of the fifth lens.”
Park examples 1, 2, 3 and 4, lens modules 100, 200, 300 and 400 all teach lens systems having six and only six lenses arranged +-++-+, similar to lens module 600. However, in each case the first lens is configured with a flatter image side than is the case in lens 600 such that an absolute value of a radius of curvature of an image-side surface of the first lens (Figs. 3, 7, 11 and 15: 30.91, 23.60, 28.15 and 26.32 respectively) is greater than an absolute value of a radius of curvature of an image-side surface of the fifth lens (Figs. 3, 7, 11 and 15: 7.53, 6.71, 7.63, and 7.72 respectively).”
Furthermore, Park teaches (paragraphs [0065]-[0067]): “[0065] The optical system of the lens module may satisfy the following Conditional Expressions.
… 0<r3/f<10.0 [Conditional Expression]
0<r11/f<5.0 [Conditional Expression]
[0066] Here… r3 is a radius [mm] of curvature of the image-side surface of the first lens, r11 is a radius [mm] of curvature of an image-side surface of the fifth lens, and f is the overall focal length [mm] of the lens module.
[0067] The Conditional Expressions above may be conditions for optimizing sizes of BFL, D3, r3, and r11 having an influence on the overall focal length of the optical system… As yet another example, the Conditional Expressions for r3 above and r11 may be preferred conditions for securing refractive power of the first and fifth lenses.”
Thus, Park explicitly teaches that the radius of curvature of the image-side surface of the first lens, r3, can take larger values than the image-side surface of the fifth lens, and achieve preferred conditions for securing refractive power of the first and fifth lenses.
Moreover, Gross teaches (page 378 section 33.1.4) that bending a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance. Bending a lens involves modifying the curvatures of the two surfaces while keeping the focal power of the lens the same (“zero power operations”, “do not introduce any refractive power”). Gross teaches that bending a lens can be done without any great perturbation of the existing setup.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose an absolute value of a radius of curvature of an image-side surface of the first lens to be greater than an absolute value of a radius of curvature of an image-side surface of the fifth lens as taught by lens modules 100, 200, 300 and 400 of Park in the lens module 600 of Park because Gross teaches that changing the curvatures of a lens is amongst the operations that an ordinary skilled artisan would typically employ in order to find a lens design with better performance (Gross page 378, section 33.1.4).
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize r3/f and r11/ f such that an absolute value of a radius of curvature of an image-side surface of the first lens to be greater than an absolute value of a radius of curvature of an image-side surface of the fifth lens as taught by lens modules 100, 200, 300 and 400 of Park in the lens module 600 of Park, 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, both r3/f and r11/f are art recognized results effective variables in that choosing them appropriately within the ranges of 0<r3/f<10.0 and 0<r11/f<5.0 as taught by Park enables preferred conditions for securing refractive power of the first and fifth lenses (Park paragraphs [0065]-[0067]). Thus one would have been motivated to optimize r3/f and r11/f because they are art-recognized result-effective variables and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Gross teaches that bending a lens does not introduce any refractive power changes and can be done without any great perturbation of the existing setup (Gross page 378, section 33.1.4). That this is possible can be demonstrated with an example, where the focal length of the first lens can be calculated using the Full Lens Maker’s Equation.
Given the data for the first lens in lens 600, one can calculate:
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46
308
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which is very close to the stated value of 3.263
Allowing the image-side surface to be flatter closer to the values of lens modules, 100, 200, 300 and 400, one can empirically find a set of curvatures, that maintain the same focal length (to at least two decimal points), even without changing the thickness or refractive index.
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42
310
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The above example is provided merely to demonstrate the principle that bending a lens can be performed without introducing any change in the refractive power, and is not in any way limiting.
However, Park fails to teach OAL/(Img HT) < 1.5 , instead teaching a value of 1.514 which 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, Park value of 1.514 for OAL/(Img HT) is sufficiently close to the claimed range of OAL/(Img HT) < 1.5 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 1.514 and the endpoint of 1.5 is insubstantial, representing only a 0.9% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated OAL/(Img HT) 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 OAL/(Img HT) < 1.5. Although the expression OAL/(Img HT) < 1.5 corresponds to Conditional Expression 6 in the specification, no discussion is provided that discusses the criticality or even the advantages of meeting this range.
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 1.514 for OAL/(Img HT), calculated from the prior art disclosure, is sufficiently close to the claimed range of OAL/(Img HT) < 1.5 to render it obvious because the difference between 1.514 and the endpoint of 1.5 is insubstantial, a value of 1.514 is reasonably expected to have the same effect as if it were the endpoint of the range for OAL/(Img HT), 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.
However, Park fails to teach “F No. < 2.0” instead teaching a value of 2.07 which 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, Park value of 2.07 for F No. is sufficiently close to the claimed range of F No. < 2.0 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 2.07 and the endpoint of 2.0 is insubstantial, representing only a 3.5% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the value of the F No. 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 F No. < 2.0. Although the expression F No. < 2.0 is present in the specification, no discussion is provided that discusses the criticality or even the advantages of meeting this range.
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 2.07 for F No., calculated from the prior art disclosure, is sufficiently close to the claimed range of F No. < 2.0 to render it obvious because the difference between 2.07 and the endpoint of 2.0 is insubstantial, a value of 2.07 is reasonably expected to have the same effect as if it were the endpoint of the range for F No., 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 9, the Park combination teaches “The imaging lens system of claim 8,” and Park lens module 600 further teaches “wherein the first lens has a convex object-side surface along an optical axis (e.g. paragraph [0153]: “An object-side surface of the first lens 610 may be convex”).”
Regarding claim 10, the Park combination teaches “The imaging lens system of claim 8,” and Park lens module 600 further teaches “wherein the first lens has a concave image-side surface along an optical axis (e.g. paragraph [0153]: “an image-side surface of the first lens 610 may be concave”).”
Regarding claim 11, the Park combination teaches “The imaging lens system of claim 8,” and Park lens module 600 further teaches “wherein the second lens has a convex object-side surface along an optical axis (e.g. paragraph [0153]: “An object-side surface of the second lens 620 may be convex”).”
Regarding claim 13, the Park combination teaches “The imaging lens system of claim 8,” and Park lens module 600 further teaches “wherein the third lens has a convex object-side surface along an optical axis (e.g. paragraph [0153]: “An object-side surface of the third lens 630 may be convex”).”
Regarding claim 14, the Park combination teaches “The imaging lens system of claim 8,” and Park lens module 600 further teaches “wherein the sixth lens has a convex object-side surface along an optical axis (e.g. paragraph [0153]: “An object-side surface of the sixth lens 660 may be convex”).”
Response to Arguments
Applicant's arguments filed June 2, 2026 have been fully considered but they are not persuasive.
In the opening three paragraphs of page 7 of 11 of the applicant’s remarks the applicant introduces that claims 1 and 8 have been amended and asserts that the amendments do not add new matter and are fully supported by the specification. As noted in the 35 USC §112 rejection above, due to what appears to be an error in the newly added limitations where the parameter (Img HT) should have been the expression OAL/(Img HT), the amended claims are not supported by the specification as filed.
Under the heading “Rejections Under 35 U.S.C. § 103 on page 7 of 11 of the applicant’s remarks the applicant enumerates the previous grounds of rejection and introduces that although the Applicant does not acquiesce in the Office's characterization of the claimed subject matter nor the cited art, claims 1 and 8 have been amended in the interest of expedited and compact prosecution. No specific argument is made on this page.
On page 8 of 11 of the applicant’s remarks the applicant reproduces amended claim 1 emphasizing the newly added limitations “OAL/f < (Img HT) < 1.5 and F No. < 2.0” and summarizes the portions of Shin and Park that were relied upon in the previous rejection. No specific argument is made on this page.
In the first three paragraphs of page 9 of 11 of the applicant’s remarks the applicant tabulates the values of OAL/(Img HT) and F No of each of the embodiments in Shin and Park which evidence that neither Shin nor Park anticipates both of the new expressions simultaneously. The examiner agrees, although examples 7 and 8 of Park anticipate one or the other of the new expressions, no single embodiment discloses both of the newly claimed expressions.
However, as explained in the new grounds of rejection above, these ranges are still obvious. In particular, Shin example 3 teaches OAL/(Img HT)=1.572 which is only a 4.8% difference from the endpoint of the claimed range and an F No. = 2.09 which is only a 4.5% difference from the endpoint of the claimed range and Park example 6 teaches OAL/(Img HT)=1.514 and F No. = 2.07 that are even closer to the claimed ranges.
Furthermore, the present record does not demonstrate any substantial difference in operation, or any superior and unexpected effect, attributable to the claimed ranges of OAL/(Img HT)< 1.5 and F No. < 2.0. In particular, the expressions are disclosed in the specification, however no discussion is provided that discusses the criticality or even the advantages of meeting these ranges.
Therefore, the rejection above finds that the values from Shin and Park are sufficiently close to the newly claimed ranges to render them obvious under the rubric of 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.").
From the last paragraph of page 9 of 11 through page 10 of 11 of the applicant’s remarks the applicant reproduces amended claim 8, emphasizing that the same newly presented expressions from claim 1 have also been added to claim 8, and argues that claim 8 is also allowable for at least the reasons argued above. These arguments have been addressed.
No further arguments are presented after page 10 of 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872
1 In light of the written description issues above (Img HT) < 1.5 is being construed as OAL/(Img HT) < 1.5 consistent with the specification as filed and the tables presented on page 9 of 11 of the remarks filed June 2, 2026.
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