DETAILED ACTION
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
3. Claims 1-2 and 17-20 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for an eight-lens system having a power arrangement of -, +, +, (+/-), (+/-), +, -, does not reasonably provide enablement for any other power arrangement including +, +, +, +, +, +, +, + or other various power combinations within the scope of the applicant’s independent claim. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The factors considered when determining if the disclosure satisfies the enablement requirement and whether any necessary experimentation is undue include, but are not limited to: 1) nature of the invention, 2) state of the prior art, 3) relative skill of those in the art, 4) level of predictability, 5) existence of working samples, 6) breadth of claims, 7) amount of direction or guidance by the inventor, and 8) quantity of experimentation needed to make or use the invention. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The claims recite an optical system having eight lenses.
The state of the art discloses the majority of the power arrangement of an optical system.
The level of skill in the art is related to the areas of optical engineering. The skill level is high due to the large number of variables one must consider when inserting/modifying a single lens into/of an existing system.
The applicant has disclosed working models of the following eight lens arrangements:
-, +, +, +, -, +, +, - (embodiments 1-9),
-, +, +, -, -, +, +, - (embodiments 10-11 and 13), and
-, +, +, -, +, +, +, - (embodiments 12 and 14-15). Therefore, there is no specific guidance for the modification of the power of the first, seventh and eighth lenses.
Further, changing a single lens power normally results in breaking a lens system, please see the discussion below.
Applicant’s claims are excessively broad due, in part, to the complex and diverse nature of optical engineering requiring a minimum amount of information, ordinarily lens powers or specific shapes that can be used to determine a lens power, to create a working system.
Therefore, based on the discussions above concerning the art’s recognition that the process of lens design is complex, the specification fails to teach the skilled artisan how to use the claimed methods without resorting to undue experimentation to determine a functional lens power arrangement.
Due to the large quantity of experimentation necessary to determine the proper lens powers, the lack of direction/guidance presented in the specification regarding same, the absence of sufficient working examples directed to same, the complex nature of the invention, the state of the prior art establishing that the lens powers and quantity must be known, and the breadth of the claims which fail to recite a working lens system, undue experimentation would be required of the skilled artisan to make and/or use the claimed invention in its full scope.
The process of lens design requires some minimum amount of variables to be disclosed in order to be within the capability of one having ordinary skill to build. Applicant’s claims have overestimated the capability of one having ordinary skill. For example, if one could design a lens system based on the applicant’s claim using the applicant’s specification and the ordinary skill in the art, then that individual could also easily modify lens powers, shapes and other lens variables of the prior art to satisfy any similar optical invention. It is not reasonable that the applicant’s disclosure of one power arrangements of a five-lens system is enabling for the creation of every other power arrangement, or that it provides enablement for an optically useful four-lens system, unless the applicant has assumed one having ordinary skill in the art is capable of such designs from such a minimum amount of information (See MPEP 2141.03).
The Office does not agree with the applicant’s assessment of the level of ordinary skill in the art. Such a level of ordinary skill would lead to 103 rejections that would ordinarily not be considered proper. Changing the power of lenses in a known optical system may no longer be considered to break the system due to the level of ordinary skill being able to recreate entire systems based on the power of one or fewer lenses and/or the shape of a single lens. Modifying the applicant’s first lens to be positive, for example, would lead to a significant change in the overall focal length of the system, the introduction of various image aberrations that would be difficult or impossible to correct and a general loss of image quality that would render the system unusable. Similarly, removing any one of the lenses from applicant’s embodiments would require an artisan to fully redesign the optical system from scratch. However, applicant’s claims, if we consider them enabled, assume such modifications to be possible for one having ordinary skill. Further, such an interpretation of ordinary skill would also apply to the modification of the prior art so long as there was reasonable motivation (a biconcave lens typically has a smaller thickness than a biconvex lens, for example). The office does not agree, or think it reasonable to believe, that this is the standard level of skill for a typical artisan in this art.
For further guidance regarding this rejection please see MPEP 2164.08:
All questions of enablement are evaluated against the claimed subject matter. The focus of the examination inquiry is whether everything within the scope of the claim is enabled. Accordingly, the first analytical step requires that the examiner determine exactly what subject matter is encompassed by the claims. See, e.g., AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003)
The Federal Circuit has repeatedly held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’." In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003);In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (CCPA 1971).
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation.
The breadth of the claims was a factor considered in Amgen Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991), cert. denied, 502 U.S. 856 (1991). In Amgen, the patent claims were directed to a purified DNA sequence encoding polypeptide analogs of the protein erythropoietin (EPO). The court stated that:
Amgen has not enabled preparation of DNA sequences sufficient to support its all-encompassing claims. . . . [D]espite extensive statements in the specification concerning all the analogs of the EPO gene that can be made, there is little enabling disclosure of particular analogs and how to make them. Details for preparing only a few EPO analog genes are disclosed. . . . This disclosure might well justify a generic claim encompassing these and similar analogs, but it represents inadequate support for Amgen’s desire to claim all EPO gene analogs. There may be many other genetic sequences that code for EPO-type products. Amgen has told how to make and use only a few of them and is therefore not entitled to claim all of them.
Allowable Subject Matter
Claims 3-16 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. Claims 17-20 would be objected to but for the 112 rejection above.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (CN210199390).
Regarding claim 1, Zhang discloses a wide-angle lens assembly comprising:
a first lens which is with refractive power (Claim 2);
a second lens which is with positive refractive power (Claim 2);
a third lens which is with positive refractive power (Claim 2);
a fourth lens which is with refractive power (Claim 2);
a fifth lens which is with refractive power (Claim 2);
a sixth lens which is with positive refractive power (Claim 2);
a seventh lens which is with refractive power (Claim 2); and
an eighth lens which is with refractive power (Claim 2);
wherein the first lens, the second lens, the third lens, the fourth lens, the fifth lens, the sixth lens, the seventh lens, and the eighth lens are arranged in order from an object side to an image side along an optical axis;
wherein the wide-angle lens assembly satisfies at least one of following conditions:
0.8 ≤ f/D22 ≤ 3;
0.025 degrees-1≤ 1/α≤ 0.3 degrees-1;
0.03 degrees-1≤ 1/β≤ 0.35 degrees-1;
0.5 ≤α/β≤ 30 (lenses 4 and 5 are cemented and therefore α = β, which gives α/β = 1);
wherein f is an effective focal length of the wide-angle lens assembly, D22 is an effective optical diameter of an image side surface of the second lens, α is a maximum tangent angle of a first cemented surface, and β is a maximum tangent angle of a second cemented 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.
The factual inquiries 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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Yang et al. (CN112698498).
Regarding claim 2, Zhang discloses the first lens is a biconcave lens with negative refractive power and comprises a concave surface facing the object side and another concave surface facing the image side (for example [0071], claim 3); and
the sixth lens comprises a convex surface facing the image side ([0071]).
and the eighth lens is with negative refractive power (claim 2).
Zhang does not disclose wherein the third lens is a biconvex lens and comprises a convex surface facing the object side and another convex surface facing the image side; and the seventh lens is with positive refractive power and comprises a convex surface facing the object side.
However, Yang teaches a similar eight-lens optical system having the power arranged -, +, +, +, -, +, +, - (Claim 1) wherein the third lens is a biconvex lens and comprises a convex surface facing the object side and another convex surface facing the image side ([0149]); and the seventh lens is with positive refractive power and comprises a convex surface facing the object side ([0214], which details the aspheric shape of the seventh lens, which has an inflection point and therefore includes at least a convex portion on the object side surface).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVIS S FISSEL whose telephone number is (313)446-6573. The examiner can normally be reached 9AM-5PM.
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/TRAVIS S FISSEL/ Primary Examiner, Art Unit 2872