Prosecution Insights
Last updated: October 01, 2026
Application No. 19/029,169

LENS ASSEMBLY

Non-Final OA §103§112
Filed
Jan 17, 2025
Priority
Dec 31, 2019 — RE 10-2019-0179878 +1 more
Examiner
EDENFIELD, KUEI-JEN L
Art Unit
Tech Center
Assignee
Samsung Electro-Mechanics Co., Ltd.
OA Round
1 (Non-Final)
78%
Grant Probability
Favorable
1-2
OA Rounds
1y 5m
Est. Remaining
92%
With Interview

Examiner Intelligence

Grants 78% — above average
78%
Career Allowance Rate
129 granted / 165 resolved
+18.2% vs TC avg
Moderate +14% lift
Without
With
+14.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
40 currently pending
Career history
210
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
58.9%
+18.9% vs TC avg
§102
18.2%
-21.8% vs TC avg
§112
20.7%
-19.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 165 resolved cases

Office Action

§103 §112
DETAILED ACTION The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Notice of Pre-AIA or AIA Status 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. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statement (IDS) submitted on 1/17/2025 and 12/4/2025 comply with the provisions of 37 CFR 1.97. Accordingly, the examiner considered the information disclosure statement. Claim Rejections - 35 USC § 112 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 2 and 10 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 claim 2, the term “the side surface of the lens” (line 1) lacks proper antecedent basis. Claim 2 depends from claim 1; claim 1 recites “a side of the lens” and subsequently recites “the side of the lens”, but does not recite “a side surface of the lens”. Therefore, it is unclear whether “the side surface of the lens” recited in claim 2 refers to the previously recited “side of the lens” or to a different surface of the lens. Regarding claim 10, the term “the optical unit” (line 1) lacks proper antecedent basis. Claim 10 depends from claim 1; however, claim 1 does not recite an optical unit. An optical unit is first introduced in claim 9, from which claim 10 does not depend. Accordingly, it is unclear what structure recited in claim 1 is intended to correspond to “the optical unit”. Therefore, proper amendments are required in order to clarify the scope of the claims and overcome the rejections. 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 should not be negated by the manner in which the invention was made. Claims 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shabtay et al. (US20190170965, of record, see IDS dated 1/17/2025). Regarding claim 1, Shabtay teaches a lens assembly (see Shabtay, Figs. 11A–11E and 13A–13C, optical lens modules 1100/1380), comprising: a lens (see Shabtay, Figs. 11A–11E and 13A–13C, lens L1/ lens element 1381) having a length (Fig. 13A, length HL) in a first direction (Shabtay, Fig. 13A, Y-axis), perpendicular to an optical axis (Fig. 13A, optical axis, Z-axis), shorter than a length (Fig. 13A, length WL) in a second direction (Fig. 13A, X-axis), perpendicular to both the optical axis and the first direction, on a plane (Figs. 11A–11E and 13A–13C, X-Y plane) perpendicular to the optical axis (see Shabtay, paragraph [0308], “in plane X-Y, which is orthogonal to the optical lens module and which generally coincides with the optical axis”; “in FIG. 13A, at least some of the lens elements can have a width WL, measured along axis X, which is greater than their height HL, measured along axis Y”); and a lens barrel (see Shabtay, Figs. 11A–11E and 13A–13C, lens barrel 1114/1314) accommodating the lens (lens L1/ lens element 1381). Although Shabtay does not explicitly disclose in the embodiment of Figs. 13A-13C, a lens barrel having an opening in a side of the lens barrel, wherein a side of the lens facing the first direction is disposed inside the opening in the side of the lens barrel, and wherein the side of the lens is disposed between an internal surface of the lens barrel and an external surface of the lens barrel in the first direction, Shabtay expressly teaches that features described with respect to earlier embodiments may be incorporated into the embodiment of Fig. 13B. Specifically, Shabtay states in paragraph [0314] that examples wherein a main portion of lens element L1 is located outside the barrel have been described with reference to Figs. 8–11E and that “at least part of the features described with reference to these examples can be used in the example of FIG. 13B”. Thus, Shabtay expressly contemplates incorporating at least part of the lens/barrel features of the embodiment of Figs. 8–11E into the Fig. 13B configuration, and Shabtay further teaches wherein a lens barrel having an opening in a side of the lens barrel (see Shabtay, Figs. 11A–11E, particularly annotated Fig. 11E, slot 1110, i.e., the claimed opening, formed in a side wall of lens barrel 1114; see paragraph [0302], Shabtay teaches that barrel 1114 comprises slots 1110 on two opposite walls 1111), wherein a side of the lens facing the first direction is disposed inside the opening in the side of the lens barrel (see annotated image, Shabtay, Fig. 11E and paragraph [0302], wherein a side portion of the lens facing the Y-direction is disposed in slot 1110 formed in the corresponding side wall of barrel 1114; when the Figs. 11A–11E features are applied to the Fig. 13B configuration pursuant to paragraph [0314], the claimed first direction corresponds to the Y-direction, and the Y-facing side portion of the shortened non-circular lens element 1381/L1 is received within the corresponding barrel-side opening/slot 1110), and wherein the side of the lens is disposed between an internal surface of the lens barrel and an external surface of the lens barrel in the first direction (see annotated image, Shabtay, Fig. 11E and paragraphs [0299], [0302], and [0305]–[0306], Shabtay expressly identifies external surfaces 1103 of opposite walls 1104 of barrel 1114, wherein the height of barrel 1114 is measured between external surfaces 1103 along the Y-axis, see Shabtay, paragraph [0299]; Shabtay further teaches that the lens element may be tangent to slot 1110 or may at least partially protrude through slot 1110 formed in the barrel wall; paragraph [0302]) and that the lens element may be fastened to the internal surfaces of the walls of the barrel, paragraphs [0305]–[0306]; accordingly, as illustrated in annotated Fig. 11E, the Y-facing side portion of the lens received in opening/slot 1110 is positioned within the thickness of the barrel wall, i.e., between the internal surface of the barrel wall and the external surface 1103 in the first direction, Y-axis). PNG media_image1.png 474 844 media_image1.png Greyscale Shabtay further provides a reason for incorporating the foregoing Figs. 11A–11E lens/barrel arrangement into the Fig. 13B configuration. In particular, Shabtay explains in paragraph [0313] that the configuration of Figs. 13A–13C permits an increased quantity of light to be received by the image sensor for a given barrel height. Shabtay also teaches with respect to the Figs. 11A–11E arrangement that the lens element may have a height substantially equal to, or greater than, the height of the barrel while still being supported within the optical lens module and fastened to the internal surfaces of the barrel walls, thereby providing structural and manufacturing advantages (see Shabtay, paragraphs [0299] and [0305]–[0306]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the opposed side slots 1110 and associated lens/barrel arrangement of Figs. 11A–11E into the Fig. 13B configuration, as expressly contemplated by Shabtay in paragraph [0314], such that the opposed Y-facing side portions of the shortened non-circular lens are received within the respective barrel-side slots and are positioned between the internal and external surfaces of the barrel walls in the Y-direction. One of ordinary skill in the art would have been motivated to make such a modification in order to accommodate the non-circular lens having a greater width WL in the X-direction while maintaining a reduced barrel dimension in the Y-direction, consistent with Shabtay's stated objective of increasing the quantity of light received by the image sensor for a given barrel height as discussed in paragraph [0313]. One of ordinary skill in the art would have had a reasonable expectation of success because Shabtay itself expressly teaches in paragraph [0314] that at least part of the features of the earlier Figs. 8–11E embodiments may be used in the Fig. 13B embodiment. Regarding claim 2, Shabtay discloses the invention as described in Claim 1 and further teaches wherein the side surface of the lens is disposed outer than the internal surface in the first direction (see annotated image, Shabtay, Fig. 11E and paragraphs [0302] and [0305]–[0306], wherein the Y-facing side surface of the lens extends from the interior of barrel 1114 into opening/slot 1110 and is therefore positioned outward of the internal surface of the corresponding barrel wall along the first direction, Y-axis; in particular, Shabtay teaches that the lens element may be tangent to slots 1110 or that at least part of the lens element may protrude through slots 1110, Shabtay further teaches that the lens element may be fastened to the internal surfaces of the barrel walls; thus, the side surface of the lens is disposed outer than the internal surface in the first direction), and is disposed inner than the external surface in the first direction (see annotated image, Shabtay, Fig. 11E and paragraphs [0299] and [0302], wherein external surface 1103 defines the external surface of wall 1104 of barrel 1114 and the side surface of the lens received within opening/slot 1110 is positioned within the barrel-wall thickness, inward of external surface 1103 along the first-direction, Y-axis; in particular, Shabtay expressly teaches that the height of barrel 1114 is measured between external surfaces 1103 of opposite walls 1104 along the Y-axis. Thus, the side surface of the lens is disposed outer than the internal surface in the first direction and disposed inner than the external surface in the first direction). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the Fig. 13B lens/barrel arrangement such that the Y-facing side surface of the shortened non-circular lens extends outward beyond the internal surface of the barrel wall into opening/slot 1110 while remaining inward of external surface 1103 of the barrel wall in the Y-direction. Such an arrangement is taught by the Figs. 11A–11E embodiment and is expressly contemplated for use with the Fig. 13B embodiment by Shabtay paragraph [0314]. The modification would predictably accommodate the shortened non-circular lens within the barrel while maintaining support and positioning of the lens, with a reasonable expectation of success. Regarding claim 3, Shabtay discloses the invention as described in Claim 1 and Shabtay further teaches wherein at least one of the lens and the lens barrel is provided with a stopper portion (Shabtay, Fig. 8, extremity 83) adjacent to the side of the lens (see Shabtay Fig. 8, extremity 83 is adjacent to the linear side of the lens L1), and the stopper portion is configured to prevent rotation of the lens relative to the lens barrel (Shabtay, paragraph [0285] extremity 83 of walls 82 is shaped so that extremity 83 of walls 82 acts a stop for at least a portion of lens element L1, paragraph [0286] lens element L1 is prevented from moving in the Y-Z plane by extremity 83 of the walls acting as a mechanical stop) in the plane (X-Y- axis) perpendicular to the optical axis (z-axis). Shabtay expressly connects the earlier embodiments to the Fig. 13B embodiment. Specifically, paragraph [0314] explains that features described in the earlier examples, expressly including Figs. 8–11E, may be used in the example of Fig. 13B. Thus, Shabtay expressly contemplates applying the mechanical-stop arrangement associated with extremity 83 to the Fig. 13B lens/barrel configuration. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the lens/barrel arrangement of Fig. 13B with the mechanical stopper arrangement taught by Fig. 8, as expressly contemplated by Shabtay in paragraph [0314], in order to constrain movement of the lens relative to the lens barrel and maintain the lens in its intended position. One of ordinary skill in the art would have had a reasonable expectation of success because Shabtay expressly teaches both the mechanical-stop function of extremity 83 and the incorporation of features of the earlier embodiments into the Fig. 13B embodiment. Regarding claim 4, Shabtay discloses the invention as described in Claim 1 and further teaches wherein at least one of the lens and the lens barrel is provided with a stopper portion (Shabtay, Fig. 8, extremity 83) adjacent to the side of the lens (see Shabtay Fig. 8, extremity 83 is adjacent to the linear side of the lens L1), and the stopper portion comprises a protrusion (Shabtay, Fig. 8, extremity 83) provided on one of the lens and the lens barrel (Shabtay, paragraph [0285] extremity 83 of walls 82 is shaped so that extremity 83 of walls 82 acts a stop for at least a portion of lens element L1; paragraph [0298], Fig. 11B, stops 1115 are useful for maintaining the lens elements at their required position), and a groove (see annotated image, Shabtay of Fig. 11A, groove) provided in the other of the lens and the lens barrel where the protrusion is not disposed (see annotated image, “Shabtay of Fig.11A,B”, and Fig. 8, extremity 83, slots/opening 1110 provided in the other of the lens and the lens barrel where the protrusion, and protrusion 1115 is not disposed). PNG media_image2.png 556 590 media_image2.png Greyscale Shabtay expressly connects the earlier embodiments to the Fig. 13B embodiment. Specifically, paragraph [0314] explains that features described in the earlier examples, expressly including Figs. 8–11E, may be used in the example of Fig. 13B. Thus, Shabtay expressly contemplates applying the mechanical-stop arrangement associated with extremity 83 to the Fig. 13B lens/barrel configuration. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the lens/barrel arrangement of Fig. 13B with the mechanical stopper arrangement taught by Fig. 8, as expressly contemplated by Shabtay in paragraph [0314], in order to constrain movement of the lens relative to the lens barrel and maintain the lens in its intended position. One of ordinary skill in the art would have had a reasonable expectation of success because Shabtay expressly teaches both the mechanical-stop function of extremity 83 and the incorporation of features of the earlier embodiments into the Fig. 13B embodiment Regarding claim 5, Shabtay discloses the invention as described in Claim 4 and further teaches wherein the protrusion and the groove comprise surfaces facing each other in a direction perpendicular to the optical axis (see annotated image, “Shabtay of Fig.11A,B”, the protrusion and the groove comprise surfaces facing each other in a direction perpendicular to the optical axis, Z-axis). Regarding claim 6, Shabtay discloses the invention as described in Claim 1 and further teaches wherein further comprising a plurality of lenses accommodated in the lens barrel to be disposed closer to an image sensor than the lens (see Shabtay Fig. 11B, having a plurality of lenses accommodated in the lens barrel 1114 to be disposed closer to the image sensor than the lens L1; paragraph [0034] “there is provided a digital camera comprising N lens elements L1 to LN having axial symmetry along a first optical axis, wherein N is equal to or greater than 3, an image sensor”), wherein the lens (Fig. 11B, lens L1) has a diameter greater than a diameter of each of the plurality of lenses (paragraph [0142] the closest lens element to the object side L1 has a height which is greater than the height of each of the other lens elements). Regarding claim 7, Shabtay discloses the invention as described in Claim 6 and further teaches wherein further comprising a spacer disposed between the lens and the plurality of lenses (see Shabtay, paragraph [0053], “spacers R1 to RN that separate respective lens elements from an image side of the barrel in an insertion order R1, L2 . . . RN−1, LN, and fixedly attaching lens element LN to the lens module”), wherein the spacer is exposed through the opening (see Shabtay, paragraph [0316] similar to lens 200, more of spacers R1 to RN−1 may be used as an aperture stop, opening, that means that spacer is exposed through the opening). Regarding claim 9, Shabtay discloses the invention as described in Claim 1 and further teaches wherein the lens has an optical unit (see Figs. 11A-E, paragraph [0300], optical part 1130) and a flange portion (Fig. 11A, mechanical part 1131) extending from the optical unit (optical part 1130), and the optical unit has a length (Fig. 13, length HL) in the first direction (Y-axis) shorter than a length (Fig. 13, length WL) in the second direction (X-axis). The rationale for combining the embodiments of Figs. 11A-13C is as set forth above with respect to claim 1 and is incorporated herein. Regarding claim 10, Shabtay discloses the invention as described in Claim 1 and further teaches wherein a side of the optical unit (see Shabtay, Fig. 11A, optical part 1130) facing the first direction is disposed inside the opening in the side of the lens barrel (see Shabtay, Fig. 11A, paragraph [0300] having a side of optical part 1130 facing the first direction, Y-axis, is disposed inside the opening 1110 in the side of the lens barrel 1114). The rationale for combining the embodiments of Figs. 11A-13C is as set forth above with respect to claim 1 and is incorporated herein. Regarding claim 11, Shabtay discloses the invention as described in Claim 9 and further teaches wherein the flange portion (see annotated image, Shabtay Fig. 13, flange portion) extends in the second direction (see annotated image, Shabtay Fig. 13, x-axis) along a circumference of a portion of the optical unit (Fig. 13A, lens elements 1381), and at least a portion of the flange portion is in contact with the internal surface of the lens barrel (see annotated image, Shabtay Fig. 13, the flange portion extends in the x-axis direction along a circumference of a portion of the optical unit, and at least a portion of the flange portion is in contact with an internal surface of the lens barrel 1314). The rationale for combining the embodiments of Figs. 11A-13C is as set forth above with respect to claim 1 and is incorporated herein. PNG media_image3.png 714 964 media_image3.png Greyscale Regarding claim 12, Shabtay discloses the invention as described in Claim 9 and further teaches wherein a side of the optical unit is not in contact with the internal surface of the lens barrel (see Shabtay, Fig. 11F, optical part 1130 surrounded by mechanical part 1131 such that the mechanical part, rather than the optical part, provides the peripheral mechanical interface). The rationale for combining the embodiments of Figs. 11A-13C is as set forth above with respect to claim 1 and is incorporated herein. Regarding claim 13, Shabtay discloses the invention as described in Claim 9 and further teaches wherein when viewed from an optical axis direction, the optical unit has a first edge having an arc shape (see Fig. 13A, first curved side 1351), a second edge opposing the first edge and having an arc shape (Fig. 13A, opposing curved side 1351), and a third edge and a fourth edge connecting the first edge and the second edge (Fig. 13A, opposing substantially straight sides 1350; see also described in paragraph [0310]). Regarding claim 14, Shabtay discloses the invention as described in Claim 13 and further teaches wherein the first edge and the second edge are disposed to face each other based on the optical axis (Fig. 13A, opposing curved sides 1351 disposed on opposite sides of the optical axis), and the third edge and the fourth edge are disposed to face each other based on the optical axis (Fig. 13A, opposing straight sides 1350 disposed on opposite sides of the optical axis; also described in paragraphs [0308]–[0310], including symmetry about the X-axis and/or Y-axis). Regarding claim 15, Shabtay discloses the invention as described in Claim 14 and further teaches wherein the flange portion extends from the first edge and the second edge (see annotated image, Shabtay Fig. 13, and described in claim 14, the flange portion extends from the first edge and the second edge). Regarding claim 16, Shabtay discloses the invention as described in Claim 14 and further teaches wherein the third edge and the fourth edge are disposed inside the opening in the side of the lens barrel (see Figs. 13A and 11A–11E, opposing straight sides 1350 corresponding to the Y-facing sides of the non-circular lens and disposed in opposing slots 1110 of the barrel). The rationale for providing the Fig. 13A non-circular lens in the slot configuration of Figs. 11A–11E is the same as set forth above with respect to claim 1 and is incorporated herein. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Shabtay et al. (US20190170965, of record, see IDS dated 1/17/2025), and further in view of Yedid et al. (US20200409020, of record, see IDS dated 1/17/2025). Regarding claim 8, Shabtay discloses the invention as described in Claim 7, Shabtay does not explicitly disclose wherein a length of the spacer in the first direction is greater than a length of a lens adjacent to the spacer in the first direction, among the plurality of lenses. However, in the similar lens assembly, Yedid teaches wherein the lens (Yedid, Figs. 1A-1D, lens L1) and the plurality of lenses (Yedid, Fig. 1B, lenses L2-L5) are provided with a spacer therebetween (see Yedid, Fig. 1A, spacers R1, R2, R3, R4), wherein the spacer is exposed through the opening (see Yedid, paragraph [0033], and Fig. 1C, each spacer is designed to have a perimeter and an opening 118 at its center for allowing light passage), wherein a length of the spacer in the first direction (Yedid, Fig. 1B, spacer R1 in x-axis) is greater than a length of a lens adjacent to the spacer in the first direction, among the plurality of lenses (see Yedid, Fig. 1B, a length of spacer R1 in x-axis is greater than a length of the lens adjacent to the spacer R1 in the x-axis, among the plurality of lenses). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the lens assembly of Shabtay with the spacer as taught by Yedid to reduce or mitigate stray light (Yedid, abstract). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUEI-JEN LEE EDENFIELD whose telephone number is (571) 272-3005. The examiner can normally be reached Mon. -Thurs 8:00 am - 5:30 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sun, Pinping can be reached on (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273- 8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published application may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Services Representative or access to the automated information system, call 800-786-9199 (In USA or Canada) or 571-272-1000. /KUEI-JEN L EDENFIELD/ Examiner, Art Unit 2872
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Prosecution Timeline

Jan 17, 2025
Application Filed
Sep 16, 2026
Non-Final Rejection mailed — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
78%
Grant Probability
92%
With Interview (+14.3%)
3y 2m (~1y 5m remaining)
Median Time to Grant
Low
PTA Risk
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