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.
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 third 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 five-lens system comprising a positive fourth lens.
The nature of the invention is drawn to a five-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 two 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 arrangement of a five-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) 7-9 and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung et al. (PGPUB 20140063596).
Regarding claim 7, Jung discloses an optical imaging system comprising:
a first lens having a refractive power (I);
a second lens having a refractive power (II);
a third lens having a refractive power (III);
a fourth lens having a positive refractive power (IV, [0030] and Table 6); and
a fifth lens having a refractive power and a convex object-side surface in a paraxial region thereof (V and Table 6),
wherein the first to fifth lenses are sequentially disposed in ascending numerical order along an optical axis of the optical imaging system from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Table 6),
a radius of curvature of an image-side surface of the second lens at the optical axis is greater than a radius of curvature of an object-side surface of the first lens at the optical axis (Table 6),
a radius of curvature of an object-side surface of the second lens at the optical axis is greater than a radius of curvature of an image-side surface of the first lens at the optical axis (Table 6),
a radius of curvature of the image-side surface of the second lens at the optical axis is greater than a radius of curvature of an object-side surface of the fourth lens at the optical axis (Table 6), and
a thickness of the fourth lens along the optical axis is greater than a distance along the optical axis from the image-side surface of the second lens to an object-side surface of the third lens (Table 6).
Regarding claim 8, Jung discloses wherein the image-side surface of the first lens is convex in paraxial region thereof (Table 6).
Regarding claim 9, Jung discloses wherein the object-side surface of the second lens is convex in a paraxial region thereof (Table 6).
Regarding claim 11, Jung discloses wherein the third lens has a concave image-side surface in a paraxial region thereof (Table 6).
Regarding claim 12, Jung discloses wherein the object-side surface of the fourth lens is concave in a paraxial region thereof (Table 6).
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.
Claim 1-6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung in view of Matsusaka et al. (USPAT 8917457).
Regarding claim 1, Jung discloses an optical imaging system comprising:
a first lens having a refractive power (I);
a second lens (II) having a refractive power and a concave image-side surface in a paraxial region thereof (at least Table 6);
a third lens having a refractive power (III);
a fourth lens having a positive refractive power (IV, [0030] and Table 6); and
a fifth lens having a refractive power (V),
wherein the first to fifth lenses are sequentially disposed in ascending numerical order along an optical axis of the optical imaging system from an object side of the optical imaging system toward an imaging plane of the optical imaging system (Table 6),
a radius of curvature of an object-side surface of the third lens at the optical axis is greater than a radius of curvature of an image-side surface of the first lens at the optical axis (Table 6),
a radius of curvature of an object-side surface of the fifth lens at the optical axis is greater than a radius of curvature of an object-side surface of the fourth lens at the optical axis (Table 6), and
a thickness of the fourth lens along the optical axis is greater than a distance along the optical axis from the image-side surface of the second lens to the object-side surface of the third lens (Table 6).
Jung fails to disclose wherein a radius of curvature of an object-side surface of the second lens at the optical axis is greater than a radius of curvature of the object-side surface of the third lens at the optical axis.
However, Matsusaki teaches a similar five-lens system (arranged +, -, -, +, -, Col. 36, Example 1) wherein a radius of curvature of an object-side surface of the third lens at the optical axis is greater than a radius of curvature of an image-side surface of the first lens at the optical axis (Col. 36, Example 1),
a radius of curvature of an object-side surface of the fifth lens at the optical axis is greater than a radius of curvature of an object-side surface of the fourth lens at the optical axis (Col. 36, Example 1), and
a radius of curvature of an object-side surface of the second lens at the optical axis is greater than a radius of curvature of the object-side surface of the third lens at the optical axis (Col. 36, Example 1).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Jung and Matsusaka such that the object-side radius of the second lens was greater than that of the third lens motivated by improving image aberration correction.
Regarding claim 2, modified Jung discloses wherein the image-side surface of the first lens is convex in a paraxial region thereof (Table 6).
Regarding claim 3, modified Jung discloses wherein the object-side surface of the second lens is convex in a paraxial region thereof (Table 6).
Regarding claim 4, modified Jung discloses wherein the third lens has a concave image-side surface in a paraxial region thereof (Table 6).
Regarding claim 5, modified Jung discloses wherein the object-side surface of the fourth lens is concave in a paraxial region thereof (Table 6).
Regarding claim 6, modified Jung discloses wherein the object-side surface of the fifth lens is convex in a paraxial region thereof (Table 6).
Regarding claim 10, Jung does not disclose wherein the object-side surface of the third lens is concave in a paraxial region thereof.
However, Matsusaki teaches a similar five-lens system (arranged +, -, -, +, -, Cols. 55-56, Example 10) and wherein a second lens has a concave image-side surface in a paraxial region thereof (Col. 55),
a fifth lens having a refractive power and a convex object-side surface in a paraxial region (Col. 56),
a radius of curvature of the image-side surface of the second lens at the optical axis is greater than a radius of curvature of an object-side surface of the fourth lens at the optical axis (Col. 55) and
wherein the object-side surface of the third lens is concave in a paraxial region thereof (Col. 55).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Jung and Matsusaka such that the object-side radius of the second lens was greater than that of the third lens motivated by improving image aberration correction.
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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