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. 18/607,975 filed on March 18, 2024 is presented for examination by the examiner.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 7, 2026 has been entered.
The amended claims submitted July 7, 2026 in response to the office action mailed May 7, 2026 are under consideration. Claims 1-3, 7, 9-10, 12 and 15-16 are amended and pending. Claims 4-6, 8, 11 and 13-14 are cancelled.
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.
Claim Objections
The claim objection of the previous office action has been overcome by the amendments to the claims.
Claim Rejections - 35 USC § 112
The 35 USC §112 rejections of the previous office action have been overcome by the amendments to the claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dai et al. US 2022/0050268 A1 (hereafter Dai).
Regarding claim 9, Dai teaches (embodiment 1, Figs. 1 to 2D, Tables 1 and 25) “An optical imaging system (paragraph [0085]: “A camera lens group according to embodiment 1”) comprising:
a first lens (E1) having positive refractive power (paragraph [0087]: “first lens E1 has positive focal power”);
a second lens (E2) having negative refractive power (paragraph [0087]: “second lens E2 has negative focal power,”);
a third lens (E3) having positive refractive power (paragraph [0087]: “third lens E3 has positive focal power”);
a fourth lens (E4) having positive refractive power (paragraph [0087]: “fourth lens E4 has positive focal power”);
a fifth lens (E5) having negative refractive power (paragraph [0087]: “fifth lens E5 has negative focal power”);
a sixth lens (E6) having positive refractive power (paragraph [0087]: “sixth lens E6 has positive focal power”);
a seventh lens (E7) having positive refractive power (paragraph [0087]: “seventh lens E7 has positive focal power”); and
an eighth lens (E8) having negative refractive power (paragraph [0087]: “eighth lens E8 has negative focal power”),
wherein the optical imaging system has a total of eight lenses (there are eight and only eight lenses E1 to E8 in embodiment 1), sequentially arranged from an object side to an imaging plane side (paragraph [0086]: “from an object side to an image side along an optical axis”),
wherein the fourth lens has a concave object-side surface and a convex image-side surface (paragraph [0087]: “The fourth lens E4 has… an object-side surface S7 thereof is a concave surface, and an image-side surface S8 is a convex surface.”), and
wherein the optical imaging system satisfies:
10 < T56/T12, (given the values that follow T56/T12=0.5888/0.0305=19.3 which is in the claimed range)
where T12 is a distance from an image-side surface of the first lens to an object-side surface of the second lens (table 1, T12 is the thickness of surface S2, thus T12=0.0305), and T56 is a distance from an image-side surface of the fifth lens to an object-side surface of the sixth lens (table 1, T56 is the thickness of surface S10, thus T56=0.5888).”
Regarding claim 16, Dai teaches “The optical imaging system of claim 9, wherein the optical imaging system satisfies:
0.500 ≤ TTL/(2xIMG HT) < 0.620, (Table 25 TTL/ImgH=1.11, thus TTL/(2xIMG HT)=1.11/2=0.555 which is in the claimed range)
where TTL is a distance from an object-side surface of the first lens to an imaging plane (paragraph [0009]: “TTL is a Total Track Length from an object-side surface of the first lens to the imaging surface”), IMG HT is half a diagonal length of the imaging plane (paragraph [0009]: “ImgH is a half of a diagonal length of an effective pixel region on an imaging surface”).”
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 7 are rejected under 35 U.S.C. 103 as obvious over Lee et al. US 2023/0168467 A1 (hereafter Lee) as evidenced by Kimura US 2021/0096343 A1 (hereafter Kimura).
The applied reference, Lee, 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. 102(a)(2) 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.
However, although reference Lee could be excepted as prior art under 35 U.S.C. 102(a)(2), it is also 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. 102(a)(1) 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, Lee teaches (optical imaging system 1000 according to a tenth example embodiment, Fig. 19, Table 19) “An optical imaging system (optical imaging system 1000 according to a tenth example embodiment) comprising:
a first lens (first lens 1010) having positive refractive power (Table 19 and paragraph [0273]: “1010 may have positive refractive power”),
a second lens (second lens 1020) having negative refractive power (Table 19 and paragraph [0274]: “1020 may have negative refractive power”),
a third lens (third lens 1030) having positive refractive power (Table 19 and paragraph [0275]: “1030 may have positive refractive power”),
a fourth lens (fourth lens 1040) having positive refractive power (Table 19 and paragraph [0276]: “1040 may have positive refractive power”),
a fifth lens (fifth lens 1050) having negative refractive power (Table 19 and paragraph [0277]: “1050 may have negative refractive power”),
a sixth lens (sixth lens 1060/260) having positive refractive power (Table 19 and paragraph [0278]: “260 may have positive refractive power”),
a seventh lens (seventh lens 1070/270) having positive refractive power (Table 19 and paragraph [0280]: “the seventh lens 270 may have positive refractive power”), and
an eighth lens (eighth lens 1080/280) having negative refractive power (Table 19 and paragraph [0282]: “eighth lens 280 may have negative refractive power”) and having a convex object-side surface (see the positive radius of curvature of surface S15 in Table 19 indicating a convex object-side surface and paragraph [0282]: “the first surface of the eighth lens 180 may be convex in the paraxial region”)
wherein the optical imaging system has a total of eight lenses (lenses 1010 to 1080…
and 10< T56/T12 (given the values that follow T56/T12=0.445/0.025=17.8 which is in the claimed range),
where TTL is a distance from an object-side surface of the first lens to an imaging plane (Table 19, TTL is the sum of all of the thicknesses/distances therein thus TTL=7.839), IMG HT is half a diagonal length of the imaging plane (paragraph [0272] MGHT=7.145 mm), Fno is an F value of the optical imaging system (the Fno of a system is the effective focal length divided by the entrance pupil diameter, f/EPD. Although Lee does not list the numerical value of EPD, one of ordinary skill in the art would know that the Figures are the output of a lens design program and thus to scale. Therefor, one can use the fact that TTL=7.839 which is measured to be 3.64 inches, while EPD is measured to be 1.71 inches, to determine that EPD=7.839x1.71/3.64=3.6826. See examiner’s markup of Fig. 19 below. That this is a legitimate method for deducing EPD is evidenced by Kimura, paragraph [0040]: “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.” Then using EPD=3.6826 and f=7.24 from paragraph [0272] one can calculate Fno=f/EPD=7.24/3.6826=1.966), where T12 is a distance from an image-side surface of the first lens to an object-side surface of the second lens (Table 19 the distance of surface S2 T12=0.025), and T56 is a distance from an image-side surface of the fifth lens to an object- side surface of the sixth lens (Table 19 the distance of surface S11 T56=0.445).”
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However, the tenth example of Lee fails to teach “wherein the fourth lens has a concave object-side surface and a convex image-side surface.”
However, Lee paragraph [0091] teaches “Alternatively, the fourth lens may have a meniscus shape convex toward the image side. In greater detail, the first surface of the fourth lens may be concave, and the second surface of the fourth lens may be convex.”
It is a well-established proposition that the substitution of one known element for another which obtains predictable results is within ordinary skill. See MPEP §2143(I)(B). To reject a claim based on this rationale, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
In the instant case:
(1) the prior art, Lee, teaches an 8-lens imaging system which differs from the claimed imaging system by the substitution of the component, a meniscus fourth lens having a convex image side, with another component, a biconvex fourth lens,
(2) the component of a meniscus fourth lens having a convex image side and its function were known in the art in view of paragraph [0091] of Lee,
(3) one of ordinary skill in the art could have substituted a meniscus fourth lens having a convex image side for a biconvex fourth lens, and the results of the substitution would have predictably been a need to re-optimize the lens parameters to re-obtain a lens system that falls within the desired constraints for Petzval curvature, spherical and chromatic aberrations, etc.
(4) the Graham factual inquiries have been discussed above.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a meniscus fourth lens having a convex image side as taught by Lee paragraph [0091] for the biconvex fourth lens in the device of the tenth embodiment of Lee and the results thereof would have been predictable.
Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Lee specifically suggests making such a change and because an ordinary skilled artisan would know that the change of shape of the fourth lens from bi-convex to meniscus can be performed without changing the focal length of the fourth lens.
However, Lee in the tenth example fails to teach “and
wherein the optical imaging system satisfies:
T
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2
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I
M
G
H
T
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F
n
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Given the values of TTL=7.839, Fno=1.966 and MGHT=7.145 explained above, the calculated value of [TTL/(2xIMG HT)]xFno is [7.839/(2x7.145)]x1.966=1.064, 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, Lee, value of 1.064 for TTL/(2xIMG HT)xFno is sufficiently close to the claimed range of TTL/(2xIMG HT)xFno < 1.000 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 1.064 and the endpoint of 1.000 is insubstantial, representing only a 6.4% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated TTL/(2xIMG HT)xFno 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 TTL/(2xIMG HT)xFno < 1.000.
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 1.064 for TTL/(2xIMG HT)xFno, calculated from the prior art disclosure, is sufficiently close to the claimed range of TTL/(2xIMG HT)xFno < 1.000 to render it obvious because the difference between 1.064 and the endpoint of 1.000 is insubstantial, a value of 1.064 is reasonably expected to have the same effect as if it were the endpoint of the range for TTL/(2xIMG HT)xFno, 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 3, Lee teaches “The optical imaging system of claim 1, wherein the second lens and the fifth lens have an Abbe number of less than 20 (Table 19 the Abbe numbers of the second and fifth lenses are both 18.2).”
Regarding claim 7, Lee teaches “The optical imaging system of claim 1,” and Lee further teaches “where f is a focal length of the optical imaging system (paragraph [0272] f is 7.24 mm). However, Lee fails to teach “wherein the optical imaging system satisfies: 1.100 ≤ TTL/f ≤ 1.200, instead teaching a value of TTL/f=7.839/7.24=1.083 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, Lee, value of 1.083 for TTL/f is sufficiently close to the claimed range of 1.100 ≤ TTL/f ≤ 1.200 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 1.083 and the endpoint of 1.100 is insubstantial, representing only a 1.6% difference while the difference in nickel content between the claimed invention and the prior art in Titanium Metals was 6.25%. Here, the calculated TTL/f 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 1.100 ≤ TTL/f ≤ 1.200.
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 1.083 for TTL/f, calculated from the prior art disclosure, is sufficiently close to the claimed range of 1.100 ≤ TTL/f ≤ 1.200 to render it obvious because the difference between 1.083 and the endpoint of 1.100 is insubstantial, a value of 1.083 is reasonably expected to have the same effect as if it were the endpoint of the range for TTL/f, 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. US 2023/0168467 A1 (hereafter Lee) as evidenced by Kimura US 2021/0096343 A1 (hereafter Kimura) as applied to claim 1 above, and further in view of Hsueh et al. US 2021/0149158 A1 (hereafter Hsueh).
Regarding claim 2, Lee teaches “The optical imaging system of claim 1” However, Lee fails to teach “further comprising a stop disposed between the third lens and the fourth lens.”
Hsueh teaches (claim 1) An optical imaging system (5th embodiment Figs. 9-10, Table 9 and paragraphs [0168]-[0180]) comprising:
a first lens (510 Lens 1) having a positive refractive power (paragraph [0169]: “first lens element 510 with positive refractive power”);
a second lens (520 Lens 2) having a negative refractive power (paragraph [0170]: “second lens element 520 with negative refractive power”);
a third lens (530 Lens 3) having a positive refractive power (paragraph [0171]: “third lens element 530 with positive refractive power”);
a fourth lens (540 Lens 4) having a refractive power (paragraph [0172]: “fourth lens element 540 with positive refractive power”);
a fifth lens (550 Lens 5) having a negative refractive power (paragraph [0173]: “fifth lens element 550 with negative refractive power”);
a sixth lens (560 Lens 6) having a refractive power (paragraph [0174]: “sixth lens element 560 with negative refractive power”);
a seventh lens (570 Lens 7) having a positive refractive power (paragraph [0175]: “seventh lens element 570 with positive refractive power”); and
an eighth lens (580 Lens 8) having a negative refractive power (paragraph [0176]: “eighth lens element 580 with negative refractive power”),
wherein the first to eighth lenses are sequentially arranged from an object side to an imaging plane side (from left to right in Fig. 9 and from Object to Image in Table 9), and
wherein the optical imaging system satisfies:
TTL/(2*IMG HT)*Fno < 1.000 (given the values that follow {TTL/(2*IMG HT)}*Fno={1.37/2}*1.40=0.96)…
where TTL is a distance from an object-side surface of the first lens to an imaging plane (paragraph [0054]: “an axial distance between the object-side surface of the first lens element and the image surface is TL” the value of TL is the sum of the thicknesses of surfaces 2-22 in Table 9 which is 7.745, also TL/IMGH is explicitly listed in paragraph [0180] as TL/ImgH=1.37), IMG HT is half a diagonal length of the imaging plane (paragraph [0054]: “the maximum image height of the photographing lens assembly is ImgH” as shown in Fig. 10 ImgH=5.64 which is consistent with paragraph [0180] as TL/ImgH=1.37), and Fno is an F value of the optical imaging system (Table 9 Fno=1.40).”
(claim 2) The optical imaging system of claim 1, further comprising a stop (Fig. 9 stop 501, Table 9 surface 8 “Stop”) disposed between the third lens and the fourth lens (see Fig. 9, paragraph [0168] and Table 9).”
Hsueh further teaches (paragraphs [0075]-[0076]): “According to the present disclosure, the photographing lens assembly can include at least one stop, such as an aperture stop, a glare stop or a field stop. Said glare stop or said field stop is set for eliminating the stray light and thereby improving image quality thereof.
According to the present disclosure, an aperture stop can be configured as a front stop or a middle stop. A front stop disposed between an imaged object and the first lens element can provide a longer distance between an exit pupil of the photographing lens assembly and the image surface to produce a telecentric effect, and thereby improves the image-sensing efficiency of an image sensor (for example, CCD or CMOS). A middle stop disposed between the first lens element and the image surface is favorable for enlarging the viewing angle of the photographing lens assembly and thereby provides a wider field of view for the same.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a middle stop between the third and fourth lenses as taught by Hsueh in the imaging system of Lee because Hsueh teaches the use of more than one stop including a middle stop which is favorable for enlarging the viewing angle of the photographing lens assembly and thereby provides a wider field of view for the same (Hsueh paragraph [0076]).
Claims 9, 12 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. US 2023/0168467 A1 (hereafter Lee).
The applied reference 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. 102(a)(2) 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.
However, although reference Lee could be excepted as prior art under 35 U.S.C. 102(a)(2), it is also 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. 102(a)(1) 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 9, Lee teaches (optical imaging system 1000 according to a tenth example embodiment, Fig. 19, Table 19) “An optical imaging system (optical imaging system 1000 according to a tenth example embodiment) comprising:
a first lens (first lens 1010) having positive refractive power (Table 19 and paragraph [0273]: “1010 may have positive refractive power”);
a second lens (second lens 1020) having negative refractive power (Table 19 and paragraph [0274]: “1020 may have negative refractive power”);
a third lens (third lens 1030) having positive refractive power (Table 19 and paragraph [0275]: “1030 may have positive refractive power”);
a fourth lens (fourth lens 1040) having positive refractive power (Table 19 and paragraph [0276]: “1040 may have positive refractive power”);
a fifth lens (fifth lens 1050) having negative refractive power (Table 19 and paragraph [0277]: “1050 may have negative refractive power”);
a sixth lens (sixth lens 1060/260) having positive refractive power (Table 19 and paragraph [0278]: “260 may have positive refractive power”);
a seventh lens (seventh lens 1070/270) having positive refractive power (Table 19 and paragraph [0280]: “the seventh lens 270 may have positive refractive power”); and
an eighth lens (eighth lens 1080/280) having negative refractive power (Table 19 and paragraph [0282]: “eighth lens 280 may have negative refractive power”);
wherein the optical imaging system has a total of eight lenses (lenses 1010 to 1080) sequentially arranged from an object side to an imaging plane side (from left to right in Fig. 19 and from surface S1 to S19 in Table 19)…
and
wherein the optical imaging system satisfies:
10< T56/T12 (given the values that follow T56/T12=0.445/0.025=17.8 which is in the claimed range),
where T12 is a distance from an image-side surface of the first lens to an object-side surface of the second lens (Table 19 the distance of surface S2 T12=0.025), and T56 is a distance from an image-side surface of the fifth lens to an object- side surface of the sixth lens (Table 19 the distance of surface S11 T56=0.445).”
However, the tenth example of Lee fails to teach “wherein the fourth lens has a concave object-side surface and a convex image-side surface.”
However, Lee paragraph [0091] teaches “Alternatively, the fourth lens may have a meniscus shape convex toward the image side. In greater detail, the first surface of the fourth lens may be concave, and the second surface of the fourth lens may be convex.”
It is a well-established proposition that the substitution of one known element for another which obtains predictable results is within ordinary skill. See MPEP §2143(I)(B). To reject a claim based on this rationale, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
In the instant case:
(1) the prior art, Lee, teaches an 8-lens imaging system which differs from the claimed imaging system by the substitution of the component, a meniscus fourth lens having a convex image side, with another component, a biconvex fourth lens,
(2) the component of a meniscus fourth lens having a convex image side and its function were known in the art in view of paragraph [0091] of Lee,
(3) one of ordinary skill in the art could have substituted a meniscus fourth lens having a convex image side for a biconvex fourth lens, and the results of the substitution would have predictably been a need to re-optimize the lens parameters to re-obtain a lens system that falls within the desired constraints for Petzval curvature, spherical and chromatic aberrations, etc.
(4) the Graham factual inquiries have been discussed above.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a meniscus fourth lens having a convex image side as taught by Lee paragraph [0091] for the biconvex fourth lens in the device of the tenth embodiment of Lee and the results thereof would have been predictable.
Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Lee specifically suggests making such a change and because an ordinary skilled artisan would know that the change of shape of the fourth lens from bi-convex to meniscus can be performed without changing the focal length of the fourth lens.
Regarding claim 12, Lee teaches “The optical imaging system of claim 9, wherein the eighth lens has a convex object-side surface (paragraph [0282]: “the first surface of the eighth lens 180 may be convex in the paraxial region” see also surface S15 in Table 19).”
Regarding claim 15, Lee teaches “The optical imaging system of claim 9, wherein the sixth lens has a convex object-side surface and a concave image-side surface (paragraph [0278]: “the first surface of the sixth lens 260 may be convex, and the second surface of the sixth lens 260 may be concave.” see also surfaces S11 and S12 in Table 19).”
Regarding claim 16, Lee teaches “The optical imaging system of claim 9, wherein the optical imaging system satisfies:
0.500 ≤ TTL/(2xlMG HT) ≤ 0.620 (TTL is the sum of all of the thicknesses in Table 19, thus TTL=7.839, paragraph [0272] IMGHT=7.145, thus TTL/(2xIMG HT)=7.839/(2x7.145)=0.549 which is in the claimed range)”.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. US 2023/0168467 A1 (hereafter Lee) as applied to claim 9 above, and further in view of Hsueh et al. US 2021/0149158 A1 (hereafter Hsueh).
Regarding claim 10, Lee teaches “The optical imaging system of claim 9…
wherein the optical imaging system satisfies:
v2+v5 < 40, (given the values that follow v2+v5=18.2+18.2=36.4 which is in the claimed range)
where v2 is an Abbe number of the second lens (Table 19 the Abbe number of the second lens is 18.2), and v5 is an Abbe number of the fifth lens (Table 19 the Abbe number of the fifth lens is 18.2).”
However, Lee fails to teach “further comprising a stop disposed between the third lens and the fourth lens.”
Hsueh teaches (claim 9) “An optical imaging system (5th embodiment Figs. 9-10, Table 9 and paragraphs [0168]-[0180]) comprising:
a first lens (510 Lens 1) having a positive refractive power (paragraph [0169]: “first lens element 510 with positive refractive power”);
a second lens (520 Lens 2) having a negative refractive power (paragraph [0170]: “second lens element 520 with negative refractive power”);
a third lens (530 Lens 3) having a positive refractive power (paragraph [0171]: “third lens element 530 with positive refractive power”);
a fourth lens (540 Lens 4) having a refractive power (paragraph [0172]: “fourth lens element 540 with positive refractive power”);
a fifth lens (550 Lens 5) having a negative refractive power (paragraph [0173]: “fifth lens element 550 with negative refractive power”);
a sixth lens (560 Lens 6) having a refractive power (paragraph [0174]: “sixth lens element 560 with negative refractive power”);
a seventh lens (570 Lens 7) having a positive refractive power (paragraph [0175]: “seventh lens element 570 with positive refractive power”); and
an eighth lens (580 Lens 8) having a negative refractive power (paragraph [0176]: “eighth lens element 580 with negative refractive power”),
wherein the first to eighth lenses are sequentially arranged from an object side to an imaging plane side (from left to right in Fig. 9 and from Object to Image in Table 9)...”
(claim 10) The optical imaging system of claim 9, further comprising a stop (Fig. 9 stop 501, Table 9 surface 8 “Stop”) disposed between the third lens and the fourth lens (see Fig. 9, paragraph [0168] and Table 9).”
Hsueh further teaches (paragraphs [0075]-[0076]): “According to the present disclosure, the photographing lens assembly can include at least one stop, such as an aperture stop, a glare stop or a field stop. Said glare stop or said field stop is set for eliminating the stray light and thereby improving image quality thereof.
According to the present disclosure, an aperture stop can be configured as a front stop or a middle stop. A front stop disposed between an imaged object and the first lens element can provide a longer distance between an exit pupil of the photographing lens assembly and the image surface to produce a telecentric effect, and thereby improves the image-sensing efficiency of an image sensor (for example, CCD or CMOS). A middle stop disposed between the first lens element and the image surface is favorable for enlarging the viewing angle of the photographing lens assembly and thereby provides a wider field of view for the same.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a middle stop between the third and fourth lenses as taught by Hsueh in the imaging system of Lee because Hsueh teaches the use of more than one stop including a middle stop which is favorable for enlarging the viewing angle of the photographing lens assembly and thereby provides a wider field of view for the same (Hsueh paragraph [0076]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. US 2022/0050268 A1 (hereafter Dai) as applied to claim 9 above, and further in view of Hsueh et al. US 2021/0149158 A1 (hereafter Hsueh).
Regarding claim 10, Dai teaches “The optical imaging system of claim 9…
wherein the optical imaging system satisfies:
v2+v5 < 40, (given the values that follow v2+v5=20.4+20.4=40.8 which is in the claimed range)
where v2 is an Abbe number of the second lens (Table 1 Abbe number of surface S3 v2=20.4), and v5 is an Abbe number of the fifth lens (Table 1 Abbe number of surface S9 v5=20.4).”
However, Dai fails to teach “further comprising a stop disposed between the third lens and the fourth lens.”
Hsueh teaches (claim 9) “An optical imaging system (5th embodiment Figs. 9-10, Table 9 and paragraphs [0168]-[0180]) comprising:
a first lens (510 Lens 1) having a positive refractive power (paragraph [0169]: “first lens element 510 with positive refractive power”);
a second lens (520 Lens 2) having a negative refractive power (paragraph [0170]: “second lens element 520 with negative refractive power”);
a third lens (530 Lens 3) having a positive refractive power (paragraph [0171]: “third lens element 530 with positive refractive power”);
a fourth lens (540 Lens 4) having a refractive power (paragraph [0172]: “fourth lens element 540 with positive refractive power”);
a fifth lens (550 Lens 5) having a negative refractive power (paragraph [0173]: “fifth lens element 550 with negative refractive power”);
a sixth lens (560 Lens 6) having a refractive power (paragraph [0174]: “sixth lens element 560 with negative refractive power”);
a seventh lens (570 Lens 7) having a positive refractive power (paragraph [0175]: “seventh lens element 570 with positive refractive power”); and
an eighth lens (580 Lens 8) having a negative refractive power (paragraph [0176]: “eighth lens element 580 with negative refractive power”),
wherein the first to eighth lenses are sequentially arranged from an object side to an imaging plane side (from left to right in Fig. 9 and from Object to Image in Table 9)...”
(claim 10) The optical imaging system of claim 9, further comprising a stop (Fig. 9 stop 501, Table 9 surface 8 “Stop”) disposed between the third lens and the fourth lens (see Fig. 9, paragraph [0168] and Table 9).”
Hsueh further teaches (paragraphs [0075]-[0076]): “According to the present disclosure, the photographing lens assembly can include at least one stop, such as an aperture stop, a glare stop or a field stop. Said glare stop or said field stop is set for eliminating the stray light and thereby improving image quality thereof.
According to the present disclosure, an aperture stop can be configured as a front stop or a middle stop. A front stop disposed between an imaged object and the first lens element can provide a longer distance between an exit pupil of the photographing lens assembly and the image surface to produce a telecentric effect, and thereby improves the image-sensing efficiency of an image sensor (for example, CCD or CMOS). A middle stop disposed between the first lens element and the image surface is favorable for enlarging the viewing angle of the photographing lens assembly and thereby provides a wider field of view for the same.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a middle stop between the third and fourth lenses as taught by Hsueh in the imaging system of Dai because Hsueh teaches the use of more than one stop including a middle stop which is favorable for enlarging the viewing angle of the photographing lens assembly and thereby provides a wider field of view for the same (Hsueh paragraph [0076]).
Response to Arguments
Applicant’s arguments, see page 7 of 9 of the remarks, filed July 7, 2026, with respect to the prior art rejections over Zhu CN 115291363 have been fully considered and are persuasive. The rejections of claims 1-2, 5-7, 9, 11-12 and 15-16 over Zhu have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Dai et al. US 2022/0050268 A1.
Applicant's arguments filed July 7, 2026 with respect to Lee have been fully considered but they are not persuasive.
On page 7 of 9 of the applicant’s remarks the applicant notes that in all embodiments of Lee, the object-side surface of the fourth lens is convex, and thus Lee fails to teach the newly added limitations to claims 1 and 9 of “a sixth lens having positive refractive power… wherein the fourth lens has a concave object-side surface and a convex image-side surface.” This argument is not persuasive for at least the following reasons. First, it is worth noting that example 10 of Lee, previously relied upon for claim 9 for which a dependent claim recited a positive sixth lens, teaches all of the powers of the lenses now recited in claims 1 and 9 which are positive, negative, positive, positive, negative, positive, positive, negative. The previous rejection of claim 1, for which a dependent claim recited a negative sixth lens, had relied upon the eighth embodiment, but in light of the amendments to the claims, now also relies upon the tenth embodiment. Secondly, although Lee fails to teach wherein the fourth lens has a concave object-side surface and a convex image-side surface within a numeric embodiment, Lee paragraph [0091] specifically states: “Alternatively, the fourth lens may have a meniscus shape convex toward the image side. In greater detail, the first surface of the fourth lens may be concave, and the second surface of the fourth lens may be convex.” This is substantial evidence that the shape of the positive fourth lens could be modified to be meniscus, convex to the image-side and that an ordinary skill in the art would have a reasonable expectation of success when making this modification. Whether this rises to the standard of obviousness has been analyzed above under the rubric of substitution of one known element for another from MPEP §2143(I)(B).
From the last paragraph of page 7 of 9 through the second full paragraph of page 8 of 9 of the applicant’s remarks the applicant Kimura and Hsueh fail to remedy the alleged deficiencies of Zhu and Lee. This argument is moot, because neither Kimura nor Hsueh are relied upon for the limitations in question.
Under the heading “Dependent Claims 2, 3, 7, 10, 12, 15, and 16” on page 8 of 9 of the applicant’s remarks the applicant argues that the dependent claims are allowable at least based on their dependency from claims 1 and 9 and for the additional features they recite. The arguments regarding claim 1 and 9 have been addressed above. Applicant's argument with respect to the features of the dependent claims amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
The request for an interview with the examiner under the heading “Conclusion” of page 8 of 9 of the applicant’s remarks is denied. The nature and number of the outstanding issues of patentability are such that it does not appear that an interview would result in expediting allowance of the application at this time. See MPEP §713.01 (IV) “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application. … Where a complete reply to a first action includes a request for an interview, the examiner, after consideration of the reply, should grant such an interview request if it appears that the interview would result in expediting the allowance of the application.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hu et al. US 2021/0271053 “Optical Imaging Lens Assembly” example 6, table 11, pertinent to at least claims 9 and 10.
Sun et al. US 2023/0087761 A1 “Camera Optical Lens” embodiment 1, pertinent to at least claims 9, 10 and 16.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky L Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872
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