DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/31/2026 has been entered.
Response to Amendment
Claims 1-15 are pending. Claims 1 and 9 stand amended. Claim 3 was canceled.
Claim Rejections - 35 USC § 112
Claims 1, 2, and 4-15 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 9, the independent claims are similarly amended to require that the total number of lenses is six. Applicant’s originally filed claims are considered to disclose the optical imaging system as open ended, and nowhere in Applicant’s specification is the invention described as limited to six lenses. Accordingly, the amended language is not supported by the instant specification. For purposes of examination, and in view of the transitional phrase “comprising”, the recited optical imaging system(s) are considered to be open ended in the sense of MPEP 2111.03.
The dependent claims do not remedy the deficiencies of the parent claims and are therefore indefinite.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, and 4-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 9, the independent claims similarly require an optical imaging system comprising six lenses, and are each amended to recite that the total number of lenses is six. Per MPEP 2111.03, “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Thus the use of “comprising” and limiting the total number of lenses renders the scope of the claim indefinite. For purposes of examination, and in view of the presence of ”comprising”, the instant claims are presumed to be open ended in the sense of MPEP 2111.03.
The dependent claims do not remedy the deficiencies of the parent claims and are therefore indefinite.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 6, 7, 9-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao (US 10795125 B2, of record), evidenced by Kubota (US 20160313536 A1, of record).
Regarding claim 1, Zhao teaches an optical imaging system (Figs. 1, 5, 9), comprising:
a first lens having a refractive power (L1);
a second lens having a refractive power (L2);
a third lens having negative refractive power (L3, Table 13);
a fourth lens having a refractive power (L4);
a fifth lens having a refractive power (L5); and
a sixth lens having a refractive power (L6),
wherein the first to sixth lenses are sequentially arranged in numerical order from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Figs. 1, 5, 9),
wherein a radius of curvature of an object-side surface of the fourth lens is greater than a radius of curvature of an object-side surface of the first lens (e.g. Table 1, 7.395 > 2.032),
wherein the total optical length TTL of the optical imaging system is less than or equal to 6.01mm (C. 6, ll. 4-5), and that low TTL is desirable (C. 3, ll. 30).
wherein a refractive index of the second lens is 1.65 or greater (e.g. Table 1, nd2 = 1.651).
Zhao does not explicitly show wherein TTL/f < 1.0 (Table 13, 5.567/4.055 = 1.37), where TTL is a distance from the object-side surface of the first lens to the imaging plane and f is an overall focal length of the optical imaging system.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, the disclosed TTL range (TTL <6.01mm) overlaps values less than the disclosed focal length, and the disclosed desire for low TTL results motivates one of ordinary skill in the art to explore them such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed to have followed the express teachings of Zhao, e.g. further shortening the TTL, thereby achieving the claimed range.
The modified Zhao does not explicitly show wherein the second lens has a concave object-side surface.
However, Zhao discloses the second lens as having negative optical power (C. 3, ll. 49-52), and a positive object side radius of curvature (Table 1). It has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In this case, small variation of Zhao’s second lens object side curvature to negative would result in a biconcave lens and therefore be expected to have the same properties since biconcave lenses inherently exhibit negative optical power. Kubota drawn to an analogous lens system provides evidence that this modification lies within the level of ordinary skill (¶60).
Accordingly, modifying Zhao’s second lens to have a concave object-side surface would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the radius of curvature is close to negative, and minor variation would result in an optical imaging system of the same type, i.e. have a high expectation of success.
Regarding claim 2, the modified Zhao teaches the optical imaging system of claim 1, and further discloses wherein the first lens has a convex object-side surface (Table 1).
Regarding claim 4, the modified Zhao teaches the optical imaging system of claim 1, and further discloses show wherein the second lens has a concave image-side surface (Fig. 1, Table 1).
Regarding claim 6, the modified Zhao teaches the optical imaging system of claim 1, and further discloses wherein the fourth lens has a convex object-side surface (Fig. 1, Table 1).
Regarding claim 7, the modified Zhao teaches the optical imaging system of claim 1, and further discloses wherein the fifth lens has a concave object-side surface (Fig. 1, Table 1).
Regarding claim 9, Zhao discloses an optical imaging system (Figs. 1, 5, 9), comprising:
a first lens having a refractive power (L1);
a second lens having a refractive power (L2);
a third lens having negative refractive power (L3);
a fourth lens having a refractive power (L4);
a fifth lens (L5) having a refractive power and an inflection point formed on an object-side surface (Table 11); and
a sixth lens (L6) having a concave image side surface (Table 1), and an inflection point formed on each of an object-side surface and an image-side surface (Table 11),
wherein the first to sixth lenses are sequentially arranged in numerical order from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Figs. 1, 5, 9),
wherein a radius of curvature of an object-side surface of the fourth lens is greater than a radius of curvature of an object-side surface of the first lens (Tables 1, 7.395 > 2.032).
The modified Zhao does not explicitly show wherein the second lens has a concave object-side surface.
However, Zhao discloses the second lens as having negative optical power (C. 3, ll. 49-52), and a positive radius of curvature (Table 1). It has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In this case, small variation of Zhao’s second lens object side curvature to negative would result in a biconcave lens and therefore be expected to have the same properties since biconcave lenses inherently exhibit negative optical power. Kubota drawn to an analogous lens system provides evidence that this modification lies within the level of ordinary skill (¶60).
Accordingly, modifying Zhao’s second lens to have a concave object-side surface would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the radius of curvature is close to negative, and minor variation would result in an optical imaging system of the same type, i.e. have a high expectation of success.
Regarding claim 10, the modified Zhao teaches the optical imaging system of claim 9, and further discloses wherein the first lens has a convex object-side surface (Fig. 1, Table 1).
Regarding claim 11, the modified Zhao teaches the optical imaging system of claim 9, and further discloses wherein the second lens has a concave image-side surface (Fig. 1, Table 1).
Regarding claim 13, the modified Zhao teaches the optical imaging system of claim 9, and further discloses wherein the fourth lens has a convex object-side surface (Fig. 1, Table 1).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the modified Zhao as applied to claim 1 above, and further in view of Gross1.
Regarding claim 5, the modified Zhao teaches the optical imaging system of claim 1, and explicitly shows that the third lens is a negative lens (C. 4, ll. 12-14), but does not explicitly show wherein the third lens has a concave image-side surface.
However, Gross identifies radii of curvature as results effective variables for optimization (p. 347). 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). Benefit of optimizing results effective variables includes reducing optical aberration and improving quality of the image.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the radius of curvature of the image-side surface while maintaining the negative optical power, e.g. changing the third lens to a biconcave lens, for the purpose of reducing optical aberration, and thus achieving the claimed geometry.
Allowable Subject Matter
Claim 8, 12, 14, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLLIN X BEATTY whose telephone number is (571)270-1255. The examiner can normally be reached M - F, 10am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached on 5712701284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COLLIN X BEATTY/Primary Examiner, Art Unit 2872
1 Herbert Gross. Handbook of Optical Systems: Vol. 3. Aberration Theory and Correction of Optical Systems. WILEY-VCH Verlag GmbH & Co. 2007.
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