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 .
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.
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 1-12 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for a lens system having a power arrangement of +, +, +, -, +, - as disclosed in the first through fourth embodiments, does not reasonably provide enablement for any other power arrangement including -, +, -, -, -, - or +, +, +, +, +, + or other various power combinations. 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 a six-lens system comprising a second positive lens and various shapes that do not limit the power of any other lens.
The nature of the invention is drawn to a six-lens optical system.
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 even a single lens into an existing system.
The Applicant has disclosed four working models using the power arrangement of +, +, +, -, +, -.
Applicants’ claims are excessively broad due, in part, to the complex and diverse nature of optical engineering.
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 put into practice optical systems within the scope of the claims without resorting to undue experimentation to determine a functional lens power arrangement.
Due to the large quantity of undue 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 are critical, 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 number of variables to be disclosed in order to be within the capability of one having ordinary skill to build. The scope of 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 just one power arrangements of a six-lens system is enabling for the creation of every other power arrangement within the scope of their claims 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 this 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 break the system due to the level of ordinary skill being able to recreate entire systems based on the power of one or two lenses and/or shape of a single lens. Modifying the applicant’s first lens to be negative, 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 loss of image quality that would render the system unusable. However, applicant’s claim, if we consider it enabled, would make such a modification possible for one having ordinary skill. Such an interpretation would also apply to all 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 that the level of ordinary skill in the art makes such things possible.
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.
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) 1-3 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noda et al. (PGPUB 20140368931).
Regarding claim 1, Noda discloses an optical imaging system comprising:
a first lens comprising a refractive power (L1);
a second lens comprising positive refractive power and a concave image-side surface in a paraxial region thereof (L2, claim 1 and embodiments 1-4);
a third lens comprising a convex object-side surface in a paraxial region thereof (L3, Tables 1-7);
a fourth lens comprising a concave image-side surface in a paraxial region thereof (L4, Tables 1-7);
a fifth lens comprising a refractive power (L5, Tables 1-7); and
a sixth lens comprising a concave image-side surface in a paraxial region thereof (L6, Tables 1-7),
wherein the first to sixth lenses are sequentially disposed from an object side of the optical imaging system toward an imaging plane (Tables 1-7),
wherein the optical imaging system has a total number of six lenses with refractive power (Tables 1-7), and
wherein a thickness of the fifth lens along an optical axis is greater than a thickness of the third lens along the optical axis (Tables 1-7).
Regarding claim 2, Noda discloses wherein the second lens has a convex object-side surface in a paraxial region thereof (Tables 1-7).
Regarding claim 3, Noda discloses wherein the third lens has a convex image-side surface in a paraxial region thereof (Tables 1-7).
Regarding claim 5, Noda discloses wherein the fifth lens has a concave object-side surface in a paraxial region thereof (Tables 1-7).
Regarding claim 6, Noda discloses wherein the fifth lens has a convex image-side surface in a paraxial region thereof (Tables 1-7).
Regarding claim 7, Noda discloses wherein the sixth lens has a convex object-side surface in a paraxial region thereof (Tables 1-7).
Claim(s) 8-9 and 12 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Tsai et al. (PGPUB 20130335834).
Regarding claim 8, Tsai discloses an optical imaging system comprising:
a first lens comprising a refractive power (L1);
a second lens comprising positive refractive power and a concave image-side surface in a paraxial region thereof (L2, Table 13);
a third lens comprising a convex object-side surface in a paraxial region thereof (L3, Table 13;
a fourth lens comprising a refractive power (L4);
a fifth lens comprising a refractive power (L5); and a
sixth lens comprising a concave image-side surface in a paraxial region thereof (L6, Table 13),
wherein the first to sixth lenses are sequentially disposed from an object side of the optical imaging system toward an imaging plane (Table 13),
wherein the optical imaging system has a total number of six lenses with refractive power (Table 13),
wherein a thickness of the second lens along an optical axis is greater than a thickness of the third lens along the optical axis (Table 13), and
wherein a thickness of the fifth lens along an optical axis is greater than a thickness of the third lens along the optical axis (Table 13).
Regarding claim 9, Tsai discloses wherein the second lens has a convex object-side surface in a paraxial region thereof (Table 13).
Regarding claim 12, Tsai discloses wherein the sixth lens has a convex object-side surface in a paraxial region thereof (Table 13).
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 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.
Claims 1 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (PGPUB 20150085135) in view of Matsusaka et al. (PGPUB 20130016278).
Regarding claim 1, Chen discloses an optical imaging system comprising:
a first lens comprising a refractive power (L1);
a second lens comprising positive refractive power and a concave image-side surface in a paraxial region thereof (L2, Fig. 7A);
a third lens (L3, Fig. 7A);
a fourth lens comprising a concave image-side surface in a paraxial region thereof (L4, , Fig. 7A);
a fifth lens comprising a refractive power (L5, , Fig. 7A); and
a sixth lens comprising a concave image-side surface in a paraxial region thereof (L6, Fig. 7A),
wherein the first to sixth lenses are sequentially disposed from an object side of the optical imaging system toward an imaging plane (Fig. 7A),
wherein the optical imaging system has a total number of six lenses with refractive power (Fig. 7A), and
wherein a thickness of the fifth lens along an optical axis is greater than a thickness of the third lens along the optical axis (Fig. 7A).
Chen does not disclose wherein the third lens comprises a convex object-side surface in a paraxial region thereof.
However, Matsusaka teaches an imaging lens whose powers are also arranged +, +, -, +, +, - wherein the third lens comprises a convex object-side surface in a paraxial region thereof ([0313]).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Chen and Matsusaka such that the third lens comprised a convex object-side surface motivated by making the system more compact.
Regarding claim 4, modified Chen discloses wherein the fourth lens has a convex object-side surface in a paraxial region thereof (Fig. 7A).
Claim 8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsusaka in view of Chen.
Regarding claim 8, Matsusaka discloses an optical imaging system comprising:
a first lens comprising a refractive power (Example 6, L1, [0313]);
a second lens comprising positive refractive power (L2, [0313]);
a third lens comprising a convex object-side surface in a paraxial region thereof (L3, [0313]);
a fourth lens comprising a refractive power (L4, [0313]);
a fifth lens comprising a refractive power (L5, [0313]); and a
sixth lens comprising a concave image-side surface in a paraxial region thereof (L6, [0313]),
wherein the first to sixth lenses are sequentially disposed from an object side of the optical imaging system toward an imaging plane ([0313]),
wherein the optical imaging system has a total number of six lenses with refractive power ([0313]),
wherein a thickness of the second lens along an optical axis is greater than a thickness of the third lens along the optical axis ([0313]), and
wherein a thickness of the fifth lens along an optical axis is greater than a thickness of the third lens along the optical axis ([0313]).
Matsusaka does not disclose wherein the second lens comprises a concave image-side surface in a paraxial region thereof.
However, Chen teaches an imaging lens whose powers are also arranged +, +, -, +, +, - wherein the second lens comprises a concave image-side surface in a paraxial region thereof (Fig. 7A).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Matsusaka and Chen such that the second lens was concave on the image-side paraxial region motivated by improving compactness of the optical system.
Regarding claim 10, modified Matsusaka discloses wherein the fifth lens has a concave object-side surface in a paraxial region thereof ([0313]).
Regarding claim 11, modified Matsusaka discloses wherein the fifth lens has a convex image-side surface in a paraxial region thereof ([0313]).
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.
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 on 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVIS S FISSEL/Primary Examiner, Art Unit 2872
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