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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) filed on December 2, 2024 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
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 1-14 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.
As to claim 1, the claim is drawn to the genus of a 6-lens module wherein each of lenses 1-4, 6 includes either positive or negative refractive power. Such genus having thirty-two (32 = 25) power combinations, yet Applicant has disclosed only two (2) power combinations (- + - - + -), (- + - + + -) of four embodiments. As is consistent with the MPEP (MPEP 2163.II.A.3.a.ii) the written description is satisfied when a representative number of species are disclosed by Applicant (MPEP 2163 - A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG V. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014)).
Here Applicant's two species fall far short of the possible 32 species to show adequate possession of all possible 32 species of the claimed genus. For example, Applicant's specification provides no support for either all negative lenses or all positive lens, yet Applicant’s claims purport to possess such lens modules.
MPEP 2163 - Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation." Such correlations may be established "by the inventor as described in the specification," or they may be "known in the art at the time of the filing date." See AbbVie, 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91 (Fed. Cir. 2014).
Examiner suggests claiming the supported power combinations.
Claims 2-7 are rejected as dependent upon claim 1.
As to claim 8, the claim is drawn to the genus of a 6-lens module wherein each lens includes either positive or negative refractive power. Such genus having sixty-four (64 = 26) power combinations, yet Applicant has disclosed only two (2) power combinations (- + - - + -), (- + - + + -) of four embodiments. As is consistent with the MPEP (MPEP 2163.II.A.3.a.ii) the written description is satisfied when a representative number of species are disclosed by Applicant (MPEP 2163 - A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG V. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014)).
Here Applicant's two species fall far short of the possible 64 species to show adequate possession of all possible 64 species of the claimed genus. For example, Applicant's specification provides no support for either all negative lenses or all positive lens, yet Applicant’s claims purport to possess such lens modules.
Examiner suggests claiming the supported power combinations.
Claims 9-14 are rejected as dependent upon claim 8.
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 8, 10, 12-14 are rejected under 35 U.S.C. 102(a1),(a2) as being anticipated by Hsu et al. (US 2014/0092491 - Hsu).
As to claim 8, Hsu teaches a lens module (Hsu Fig. 1; Table 1), comprising
a first lens having a refractive power (Hsu Fig. 1 - 110);
a second lens having a refractive power (Hsu Fig. 1 - 120);
a third lens having a refractive power (Hsu Fig. 1 - 130);
a fourth lens having a concave image side surface in a paraxial region (Hsu Fig. 1 - 140, 142; Table 1);
a fifth lens having a concave object side surface in a paraxial region thereof (Hsu Fig. 1 - 150, 151; Table 1 - R10);
a sixth lens having a concave image side surface in a paraxial region thereof (Hsu Fig. 1 - 160, 162; Table 1);
the first to sixth lenses are sequentially disposed from an object side of the lens module to an image plane of the lens module (Hsu Fig. 1);
wherein a radius of curvature of an object side surface of the third lens is greater than a radius of curvature of an object side surface of the first lens (Hsu Table 1 - |R6| = 2.326; |R1| = 1.746);
a thickness along an optical axis of the third lens is greater than a thickness along the optical axis of the first lens (Hsu Table 1 - T3 = 0.260; T1 = 0.250);
and satisfying 0.6 < f5/f (Hsu Table 1 - f5 = 3.61; f = 3.59).
As to claim 10, Hsu teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Hsu further teaches the second lens has a convex object side surface (Hsu Fig. 1 - 121).
As to claim 12, Hsu teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Hsu further teaches the fourth lens has a convex object side surface (Hsu Fig. 1 - 141).
As to claim 13, Hsu teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Hsu further teaches the fifth lens has a convex image side surface (Hsu Fig. 1 - 152).
As to claim 14, Hsu teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Hsu further teaches the sixth lens has a convex object side surface (Hsu Fig. 1 - 161).
Claims 8-14 are rejected under 35 U.S.C. 102(a1) as being anticipated by Huang (US 2013/0003193).
As to claim 8, Huang teaches a lens module (Huang Fig. 8A; Table 21), comprising
a first lens having a refractive power (Huang Fig. 8A - 810);
a second lens having a refractive power (Huang Fig. 8A - 820);
a third lens having a refractive power (Huang Fig. 8A - 830);
a fourth lens having a concave image side surface in a paraxial region (Huang Fig. 8A - 840, 842; Table 21 - r9);
a fifth lens having a concave object side surface in a paraxial region thereof (Huang Fig. 8A - 850, 851; Table 21 - r10);
a sixth lens having a concave image side surface in a paraxial region thereof (Huang Fig. 8A - 860, 862; Table 21 - r13);
the first to sixth lenses are sequentially disposed from an object side of the lens module to an image plane of the lens module (Huang Fig. 8A);
wherein a radius of curvature of an object side surface of the third lens is greater than a radius of curvature of an object side surface of the first lens (Huang Table 21 - R6 = 8.665400; R1 = -62.500000);
a thickness along an optical axis of the third lens is greater than a thickness along the optical axis of the first lens (Huang Table 21 - T3 = 0.493; T1 = 0.477);
and satisfying 0.6 < f5/f (Huang Table 21 - f5 = 3.01; f = 3.22).
As to claim 9, Huang teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Huang further teaches the first lens has a concave object side surface (Huang Fig. 8A - 811; Table 21 - r1).
As to claim 10, Huang teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Huang further teaches the second lens has a convex object side surface (Huang Fig. 8A - 821).
As to claim 11, Huang teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Huang further teaches the third lens has a convex object side surface (Huang Fig. 8A - 831).
As to claim 12, Huang teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Huang further teaches the fourth lens has a convex object side surface (Huang Fig. 8A - 841).
As to claim 13, Huang teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Huang further teaches the fifth lens has a convex image side surface (Huang Fig. 8A - 852).
As to claim 14, Huang teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Huang further teaches the sixth lens has a convex object side surface (Huang Fig. 8A - 861).
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Liao (US 2015/0116572; cited by Applicant) in view of Lohmann (Scaling Laws for Lens Systems; cited by Applicant).
As to claim 1, Liao teaches a lens module (Liao Fig. 15; Fig. 34), comprising
a first lens having a refractive power (Liao Fig. 15 - 10);
a second lens having a refractive power (Liao Fig. 15 - 20);
a third lens having a refractive power (Liao Fig. 15 - 30);
a fourth lens having a concave image side surface in a paraxial region (Liao Fig. 15 - 46);
a fifth lens having a refractive power (Liao Fig. 15 - 50);
a sixth lens having a concave image side surface in a paraxial region thereof (Liao Fig. 15 - 66);
the first to sixth lenses are sequentially disposed from an object side of the lens module to an image plane of the lens module (Liao Fig. 15);
wherein a radius of curvature of an object side surface of the third lens is greater than a radius of curvature of an object side surface of the first lens (Liao Fig. 34 - Ro3 = 2.531; Ro1 = -80.000);
a thickness along an optical axis of the third lens is greater than a thickness along the optical axis of the first lens (Liao Fig. 34 - T3 = 1.140; T1 = 0.500);
satisfying 0.6 < f5/f (Liao Fig. 34 - f5 = 1.391; f = 1.444).
While Liao teaches f5 = 1.391mm and thus outside the range of 1.80mm < f5 < 2.40mm, such range represents a scaling up of Liao (e.g. 50%). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to scale the module of Liao (e.g. the module up by 50% thus f5 ≈ 2.1mm), since such a modification would involve only a mere change in size of a component. Scaling up or down which merely requires a change in size is generally considered as being within the ordinary skill in the art. In re Rinehart, 189 USPQ 143 (CCAP 1976).
As taught by Lohmann, scaling lens systems is trivial (Lohmann page 4996; section II). It would have been obvious to one of ordinary skill in the art to scale such lens system since scaling allows for the lens module to be used with different sized cameras, image sensors, etc.
As to claim 2, Liao in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Liao further teaches the first lens has a concave object side surface (Liao Fig. 15 - 11; Fig. 34 - R11).
As to claim 3, Liao in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Liao further teaches the second lens has a convex object side surface (Liao Fig. 15 - 23; Fig. 34 - R21).
As to claim 4, Liao in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Liao further teaches the third lens has a convex object side surface (Liao Fig. 15 - 33; Fig. 34 - R31).
As to claim 5, Liao in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Liao further teaches the fourth lens has a convex object side surface (Liao Fig. 15 - 43; Fig. 34 - R41).
As to claim 6, Liao in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Liao further teaches the fifth lens has a convex image side surface (Liao Fig. 15 - 56; Fig. 34 - R52).
As to claim 7, Liao in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Liao further teaches the sixth lens has a convex object side surface (Liao Fig. 15 -63; Fig. 34 - R61).
Claims 1, 3, 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu (cited above) in view of Lohmann (cited above).
As to claim 1, Hsu teaches a lens module (Hsu Fig. 1; Table 1), comprising
a first lens having a refractive power (Hsu Fig. 1 - 110);
a second lens having a refractive power (Hsu Fig. 1 - 120);
a third lens having a refractive power (Hsu Fig. 1 - 130);
a fourth lens having a concave image side surface in a paraxial region (Hsu Fig. 1 - 140, 142; Table 1);
a fifth lens having refractive power (Hsu Fig. 1 - 150);
a sixth lens having a concave image side surface in a paraxial region thereof (Hsu Fig. 1 - 160, 162; Table 1);
the first to sixth lenses are sequentially disposed from an object side of the lens module to an image plane of the lens module (Hsu Fig. 1);
wherein a radius of curvature of an object side surface of the third lens is greater than a radius of curvature of an object side surface of the first lens (Hsu Table 1 - |R6| = 2.326; |R1| = 1.746);
a thickness along an optical axis of the third lens is greater than a thickness along the optical axis of the first lens (Hsu Table 1 - T3 = 0.260; T1 = 0.250);
and satisfying 0.6 < f5/f (Hsu Table 1 - f5 = 3.61; f = 3.59).
While Hsu teaches f5 = 3.61mm, thus outside the range of 1.80mm < f5 < 2.40mm, such range represents a scaling down of Hsu (e.g. scaled to 60%). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to scale the module of Hsu (e.g. the module to 60% for f5 ≈ 2.2mm), since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art. In re Rinehart, 189 USPQ 143 (CCAP 1976).
As taught by Lohmann, scaling lens systems is trivial (Lohmann page 4996; section II). It would have been obvious to one of ordinary skill in the art to scale such lens system since scaling allows for the lens module to be used with different sized cameras, image sensors, etc.
As to claim 3, Hsu in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Hsu further teaches the second lens has a convex object side surface (Hsu Fig. 1 - 121).
As to claim 5, Hsu in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Hsu further teaches the fourth lens has a convex object side surface (Hsu Fig. 1 - 141).
As to claim 6, Hsu in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Hsu further teaches the fifth lens has a convex image side surface (Hsu Fig. 1 - 152).
As to claim 7, Hsu in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Hsu further teaches the sixth lens has a convex object side surface (Hsu Fig. 1 - 161).
Claims 8, 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US 2015/0098135 - Chung; cited by Applicant).
As to claim 8, Chung teaches a lens module (Chung Fig. 12A; Table 23) comprising
a first lens having a refractive power (Chung Fig. 12A - 1210);
a second lens having a refractive power (Chung Fig. 12A - 1220);
a third lens having a refractive power (Chung Fig. 12A - 1230);
a fourth lens having a concave image side surface in a paraxial region (Chung Fig. 12A - 1240, 1242);
a fifth lens having a concave object side surface in a paraxial region thereof (Chung Fig. 12A - 1250, 1251);
a sixth lens having a concave image side surface in a paraxial region thereof (Chung Fig. 12A - 1260, 1262);
the first to sixth lenses are sequentially disposed from an object side of the lens module to an image plane of the lens module (Chung Fig. 12A);
wherein a radius of curvature of an object side surface of the third lens is greater than a radius of curvature of an object side surface of the first lens (Chung Table 23 - R6 = 2.7415; R2 = 2.65871);
and satisfying 0.6 < f5/f (Chung Table 23 - f5 = 1.9623; f = 2.79).
Chung further teaches a thickness along the optical axis of the third lens is the same as the thickness along the optical axis of the first lens (Chung Table 23 - CT3 = 0.28; CT1 = 0.28) and therefore just outside the range of CT3 > CT1.
Chung teaches the thickness of the third lens is variable (Chung para. [0016]), thus it would have been obvious to one of ordinary skill in the art at the time of invention to provide CT3 > CT1, 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 220 F.2d 454, 456,105 USPQ 233, 235. As discussed by Chung, adjusting the thicknesses of the lenses allows for maintaining overall miniaturizing of the device (Chung para. [0016]).
Additionally, it would have been obvious to one of ordinary skill in the art at the time of invention to provide CT3 > CT1, since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close that one of ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner 227 USPQ 773 (Fed. Cir. 1985); MPEP 2144.05.
As to claim 10, Chung teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Chung further teaches the second lens has a convex object side surface (Chung Fig. 12A - 1221).
As to claim 11, Chung teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Chung further teaches the third lens has a convex object side surface (Chung Fig. 12A - 1231).
As to claim 12, Chung teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Chung further teaches the fourth lens has a convex object side surface (Chung Fig. 12A - 1241).
As to claim 13, Chung teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Chung further teaches the fifth lens has a convex image side surface (Chung Fig. 12A - 1252).
As to claim 14, Chung teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Chung further teaches the sixth lens has a convex object side surface (Chung Fig. 12A - 1261).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (cited above) in view of Lohmann (cited above).
As to claim 1, Huang teaches a lens module (Huang Fig. 8A; Table 21), comprising
a first lens having a refractive power (Huang Fig. 8A - 810);
a second lens having a refractive power (Huang Fig. 8A - 820);
a third lens having a refractive power (Huang Fig. 8A - 830);
a fourth lens having a concave image side surface in a paraxial region (Huang Fig. 8A - 840, 842; Table 21 - r9);
a fifth lens having refractive power (Huang Fig. 8A - 850);
a sixth lens having a concave image side surface in a paraxial region thereof (Huang Fig. 8A - 860, 862; Table 21 - r13);
the first to sixth lenses are sequentially disposed from an object side of the lens module to an image plane of the lens module (Huang Fig. 8A);
wherein a radius of curvature of an object side surface of the third lens is greater than a radius of curvature of an object side surface of the first lens (Huang Table 21 - R6 = 8.665400; R1 = -62.500000);
a thickness along an optical axis of the third lens is greater than a thickness along the optical axis of the first lens (Huang Table 21 - T3 = 0.493; T1 = 0.477);
and satisfying 0.6 < f5/f (Huang Table 21 - f5 = 3.01; f = 3.22).
While Huang teaches f5 = 3.01mm, thus outside the range of 1.80mm < f5 < 2.40mm, such range represents a scaling down of Huang (e.g. scaled to 75%). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to scale the module of Huang (e.g. the module to 75% for f5 ≈ 2.3mm), since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art. In re Rinehart, 189 USPQ 143 (CCAP 1976).
As taught by Lohmann, scaling lens systems is trivial (Lohmann page 4996; section II). It would have been obvious to one of ordinary skill in the art to scale such lens system since scaling allows for the lens module to be used with different sized cameras, image sensors, etc.
As to claim 2, Huang in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Huang further teaches the first lens has a concave object side surface (Huang Fig. 8A - 811; Table 21 - r1).
As to claim 3, Huang in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Huang further teaches the second lens has a convex object side surface (Huang Fig. 8A - 821).
As to claim 4, Huang in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Huang further teaches the third lens has a convex object side surface (Huang Fig. 8A - 831).
As to claim 5, Huang in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Huang further teaches the fourth lens has a convex object side surface (Huang Fig. 8A - 841).
As to claim 6, Huang in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Huang further teaches the fifth lens has a convex image side surface (Huang Fig. 8A - 852).
As to claim 7, Huang in view of Lohmann teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Huang further teaches the sixth lens has a convex object side surface (Huang Fig. 8A - 861).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,451,842 (herein US 842). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent applicant (claims 1-14) and the claims of US 842 each cover in scope the specific lens modules of embodiments 1 and 3.
The scope and content of the claims of US 842 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Claim 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,073,681 (herein US 681). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent applicant (claims 1-14) and the claims of US 681 each cover in scope the specific lens modules of embodiment 1.
The scope and content of the claims of US 681 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Claim 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,614,603 (herein US 603). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent applicant (claims 1-14) and the claims of US 603 each cover in scope the specific lens modules of embodiment 1.
The scope and content of the claims of US 603 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Claim 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,181,641 (herein US 641). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant patent applicant (claims 1-14) and the claims of US 641 each cover in scope the specific lens modules of embodiment 1.
The scope and content of the claims of US 641 render anticipated and/or obvious the scope and content of the claims of the instant application (MPEP 804.II.B.1; 804.II.B.2; 804.II.B.3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Documents - cited for showing various 6-lens modules with similar structure both claimed and disclosed - e.g. convexities, concavities, powers.
Son (US 9,791,667; 2014/0376107); Huang (US 8,472,128); Huang (US 8,432,619; 2012/0229917); Tang et al. (US 2016/0131873); Tsai et al. (US 2016/0033744); Chen et al. (US 2015/0346461); Chen et al. (US 2015/0346459); Chen et al. (US 2015/0350503); Huang et al. (US 2015/0212296); Suzuki (US 2006/0007561).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky 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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 July 28, 2026
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