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 .
Examiner Notes
The calculated optical values are based on known first-order optical analysis, including the well-known Linemaker’s equation and matrix-based optical system equations, as would have been understood and routinely applied by a person of ordinary skill in the optical arts.
Response to Arguments
Applicant's arguments filed on 03/30/2026 have been fully considered but they are not persuasive.
On pages 5-6 of the remarks filed on 03/30/2026, applicant argues “At the outset,
Shabtay does not expressly teach the EFL2/TTL2 relationship now recited in claim 1. The Examiner asserts, for example, that "From Table 2: EFLT = 11.226, and TTLT = 12.664," and elsewhere that "From Table 4: EFLT = 11.23, and TTLT = 11.51, thusEFL2/TTL2 = 0.975.” However, this is not what Shabtay actually discloses. Shabtay's Tables 2, 4, and 6 are optical prescription tables. They provide radii, distances, refractive indices, diameters, and conic coefficients. They do not provide any value for effective focal length, and they do not expressly state that the Table 2 or Table 4 embodiments have EFL values of 11.226 mm or 11.23 mm. Thus, the exact EFL values now attributed to Shabtay are not teachings of the reference itself, but appear instead to be values derived independently by the Examiner. The Examiner does not disclose the calculation method, formula, assumptions, or derivation by which those exact EFL values were obtained. Accordingly, the present rejection relies not on what Shabtay teaches, but on unstated reverse engineering of Shabtay. This deficiency is material. Applicant amended claim 1 in the prior response to recite "0.9≤EFL2/TTL2≤1.1" and the entered response explained that this amendment is supported by Applicant's own folded Tele embodiments having EFL/TTL values between 0.9 and 1.1, characteristic of a compact folded Tele module. In response, the Examiner did not identify any express statement in Shabtay that its folded Tele embodiments satisfy this relationship. Instead, the Examiner simply asserted numerical EFL values allegedly "from Table 2" and "from Table 4," even though those tables do not disclose EFL. A prima facie case of obviousness cannot rest on numerical values that the prior art does not actually disclose and that the Examiner does not transparently derive. Accordingly, Shabtay has not been shown to teach the amended EFL2/TTL2 limitation, and absent that showing, there is no proper foundation for the § 103 rejection.”
Response: The argument has been considered but is not persuasive. Applicant contends that Shabtay does not teach the claimed EFL2/TTL2 limitation because the reference does not expressly recite a numerical effective focal length value in Tables 2 and 4. However, a prior art reference is not limited only to properties explicitly stated in the reference. A prior art reference may also teach properties that are inherent in, or necessarily result from, the structure that is expressly disclosed. Here, Shabtay expressly discloses the complete optical prescription for the relevant embodiments, including radii of curvature, axial distances, lens thicknesses, refractive indices, diameters and conic coefficients. Such prescription data defines the optical structure of the disclosed lens system and would have enabled a person of ordinary skill in the art to determine the corresponding effective focal length as a routine result of ordinary optical analysis. Accordingly, the absence of an express numerical EFL entry in Shabtay does not mean that the effective focal length is not taught by the prior art. Applicant’s argument improperly focus on whether the reference labels the value expressly, rather than on what the disclosed optical prescription necessarily conveys to a person of ordinary skill in the art. Because the claimed EFL2/TTL2 relationship is a necessarily present optical property of the Shabtay lens systems expressly disclosed in Tables 2 and 4, the limitation is fairly attributable to Shabtay even though the reference does not separately spell out the EFL value in words or as a standalone table entry. Therefore, Applicant has not persuasively shown error in the rejection.
Similarly, regarding “A prima facie case of obviousness cannot rest on numerical values that the prior art does not actually disclose and that the Examiner does not transparently derive”, Applicant’s argument is not persuasive because a prior art reference may be relied upon not only for its express disclosure, but also for properties that are implicit or inherent in the structure expressly disclosed. See MPEP 2112. Further, the Office action has set forth a prima facie case of obviousness supported by factual findings and technical reasoning, consistent with MPEP 2142. However, to the extent Applicant argues that the Office Action should provide an adequate factual and technical basis for concluding that the claimed optical property necessarily flows, from the expressly disclosed prescription, that principle is acknowledged. Here, Shabtay’s complete optical prescription provides such a basis because the effective focal length is a necessarily resulting first order property of the disclosed lens structure and is determinable by routine optical analysis by a person of ordinary skill in the art.
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.
Claim(s) 1, 3-16, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shabtay et al. US 2016/0044250 in view of Lai et al. US 2018/0011295.
Regarding claim 1, Shabtay teaches a mobile device (para [0007]), comprising:
a first camera (Fig. 2A and para [0087]: wide camera 202) having a first field-of-view (FOV1) (the field of view for the wide camera 202) and a first image sensor (the image sensor of 202); and
a second camera (Fig. 2A and para [0087]: 204) having a second field-of-view (FOV2) (the field of view for the wide camera 204),
a second effective focal length (EFL2) and a second total track length (TTL2) (From Table 2: EFLT = 11.226, and TTLT = 12.664),
an optical lens module including N lens elements L1-LN (Fig. 10A-10B: depicts L1 to L5, i.e., N = 5, N= 4), a first reflecting element (Fig. 2A and para [0088]: reflecting element 226), and a second image sensor (Fig. 2A: 224),
wherein FOV2<FOV1 (tele field of view < wide field of view or see para [0039]),
wherein the first image sensor is configured to receive a first light from a first direction through a first optical path between an object and the first image sensor (see Fig. 2A, camera 202 receives first light along optical axis 212 i.e., first direction),
wherein the second image sensor is configured to receive a second light from the first direction through a second optical path between the object and the second image sensor (see Fig. 2A, camera 204 receives second light along optical axis 222a i.e., second direction),
wherein the first reflecting element (Fig. 2A: 226) is disposed in the second optical path between the optical lens module (220) and the second image sensor (224),
wherein 0.9 ≤ EFL2/TTL2 ≤1.1 (From Table 4: EFLT = 11.23, and TTLT = 11.51, thus EFL2/TTL2 = 0.975, which satisfied claimed range),
wherein each lens element is denoted Li where 1 ≤ i ≤ N (Fig. 10A, 10B: depicts L1 to L4 or L5, i.e., N = 4, N = 5), wherein each lens element comprises a respective front surface S211 and a respective rear surface S21, the lens element surfaces marked Sk where 1≤k≤2N (as shown in Fig. 10B: each lens i.e., L1 to L4 have a front and rear surfaces or object and image side surfaces), wherein each lens element surface has a clear aperture value CA(Sk) (it is apparent that each lens has clear aperture), and
However, Shabtay et al. fails to teach:
wherein a clear aperture value CA(S1) of surface S1 is greater than a clear aperture value of each of surfaces S2 to S2N.
In the same field of endeavor, Lai teaches a camera module (at least in Fig. 1: lens system for a camera module is shown), wherein each lens element comprises a respective front surface S2i-1 (Fig. 1: 121, 131, 141, 151 and 161 represents the front surface of lenses 120 to 160) and a respective rear surface S2i, (Fig. 1: 112, 132, 142, 152 and 162 represents the rear surface of lenses 120 to 160) the lens element surfaces marked Sk where 1 ≤ k ≤ 2N (111, 121, 131, 141, 151 and 161, and 112, 122, 132, 142, 152, and 162 as shown in Fig. 1),
wherein each lens element surface Sk has a clear aperture value CA(Sk) (Examiner Notes: clear aperture is equivalent to two times of the effective radius or the effective diameter of the lens, in which in Fig. 1: the effective radius of each lens is shown), wherein clear aperture value CA(S1) of surface 111 of lens element L1 (110) is greater than CA(Sk) for 2 ≤ k ≤ 2N-1 and is substantially equal to, or greater than CA(S2N) (Fig. 1 shows that the clear aperture value of surface 111 of lens element L1 (110) is greater than, and clear aperture value of surface S2N of lens element LN (160) i.e., surface 161 of lens 160). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the mobile device of Shabtay by utilizing the claimed lens sizes as taught by Lai, because when the front surface has a greater clear aperture, is provides improved light collection and field of view as large entrance pupil allows more off-axis ray to enter the camera and also reduce vignetting.
Regarding claim 3, the combination of Shabtay and Son teaches the mobile device of claim 1, Shabtay further teaches wherein the N lens elements are arranged along an optical axis such that lens element LN is a last lens element facing the second image sensor (See Fig. 10A).
Regarding claim 4, the combination of Shabtay and Son teaches the mobile device of claim 1, further comprising a second reflecting element in the second optical path (Fig. 3 and Fig. 4 and para [0100] and [0103]).
Regarding claim 5, the combination of Shabtay and Son teaches mobile device of claim 1, and Shabtay further teaches wherein the second image sensor has a sensor diagonal SD, and wherein a ratio CA(S2N)/SD between a clear aperture value CA(S2N) of surface S2N and SD is smaller than 0.8 (From Table 4: CA(S2N) = 8 and SD = 8, thus CA(S2N)/SD = 4/8 = 0.5, which reads on the claimed limitation).
Regarding claim 6, the combination of Shabtay and Son teaches the mobile device of claim 5, Shabtay further teaches wherein CA(S2N)/SD < 0.7 (From Table 4: CA(S2N) = 8 and SD = 8, thus CA(S2N)/SD = 4/8 = 0.5, which reads on the claimed limitation).
Regarding claim 7, the combination of Shabtay and Son teaches the mobile device of claim 5, and Shabtay further teaches wherein CA(S2N)/SD < 0.65 (From Table 4: CA(S2N) = 8 and SD = 8, thus CA(S2N)/SD = 4/8 = 0.5, which reads on the claimed limitation).
Regarding claim 8, the combination of Shabtay teaches the mobile device of claim 1, and Son further teaches wherein 1.04 < CA(S1)/CA(S2) < 1.23 (Table 4: CA(S1) =EHD11 = 18.318, CA(S2) = 18.121, thus CA(S1)/CA(S2) = 1.01). However, 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, 105 USPQ 233 (C.C.P.A. 1955). More specifically, the court held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of Americav.Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the present case the range from the prior art i.e., 1.01 is merely close with the claimed range 1.04. Among the benefits of this modification includes avoiding resulting in excessive curvature in a peripheral region of the lens elements and miniaturization of the lens module. Also, one of ordinary skill in the art would have been led to the recited range (1.04 < CA(S1)/CA(S2) < 1.23) through routine experimentation and optimization. Applicant has not disclosed that the ranges are for particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the device would possess utility using another range. (MPEP 2144.05)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical lens of Shabtay by utilizing the claimed range 1.04, in order to avoiding resulting in excessive curvature in a peripheral region of the lens elements and for gradual miniaturization and lightening of the camera.
Regarding claim 9, the combination of Shabtay teaches the mobile device of claim 1, and Lai further teaches wherein CA(S2N)/CA(S1) = 1.58 (from Table 2: CA(S1) = EHD11 = 5.8, CA(S2N) = EHD62 = 3.363, thus 3.363/5.8 = 0.58. However, 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, 105 USPQ 233 (C.C.P.A. 1955). More specifically, the court held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of Americav.Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the present case the range from the prior art i.e., 0.58 is merely close with the claimed range 0.59. Among the benefits of this modification includes avoiding resulting in excessive curvature in a peripheral region of the lens elements and miniaturization of the lens module. Also, one of ordinary skill in the art would have been led to the recited range (0.59< CA(S2N)/CA(S1) < 0.76) through routine experimentation and optimization. Applicant has not disclosed that the ranges are for particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the device would possess utility using another range. (MPEP 2144.05)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical lens of Shabtay by utilizing the claimed range 0.59< CA(S2N)/CA(S1) < 0.76, in order to avoiding resulting in excessive curvature in a peripheral region of the lens elements and for gradual miniaturization and lightening of the camera.
Regarding claim 10, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein the second camera has an effective focal length EFL in the range of 8mm to 16mm (From Table 4: EFLT= 11.23).
Regarding claim 11, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein the second camera has an effective focal length EFL in the range of 11mm to 16mm (From Table 4: EFLT= 11.23).
Regarding claim 12, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein the second camera has a F-number ≤ 3 (see Table 1: F#T ranges between 2-5).
Regarding claim 13, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein the second camera has a F-number ≤ 2.76 (see Table 1: F#T ranges between 2-5).
Regarding claim 14, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein L1 has a positive refractive power (From Table 4, f1 = ~ +6).
Regarding claim 15, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein the second camera has a second back focal length (BFL2), and wherein BFL2 ≥ 0.3 x TTL2 (Table 4: BFLT = 4.561, and TTLT = 11.51, thus 0.3*11.51 = 3.453).
Regarding claim 16, Shabtay teaches the mobile device of claim 1, Shabtay further teaches wherein EFL2/TTL2 ≤ 1 (From Table 4: EFLT = 11.23, and TTLT = 11.51, thus EFL2/TTL2 = 0.975, which satisfied claimed range).
Regarding claim 19, the combination of Shabtay teaches the mobile device of claim 2, and Shabtay further teaches wherein N = 5 (see Fig. 10A: N = 5).
Regarding claim 20, the combination of Shabtay teaches the mobile device of claim 1, and Shabtay further teaches wherein the mobile device is a smartphone (para [0058]).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shabtay and Lai as applied to claim 1 above, and further in view of Wakai et al. US 2003/0117719.
Regarding claim 17, the combination of Shabtay teaches the mobile device of claim 1, except wherein rotation of the first reflecting element around one or two axes moves the position of FOV2.
Nevertheless, the use of scanning mechanism is well-known in camera arts. Wakai teaches folded camera including reflecting element (see Figs. 1 and 2), wherein rotation of the reflecting element around one or two axes the position of field-of-view (see para 0009, 353). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the camera module of Shabtay by utilizing the claimed rotation as taught by Wakai in order to adjust angular field steering for scanning multi-angle imaging.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shabtay and Lai as applied to claim 1 above, and further in view of Hosoya et al. US 2011/0157430.
Regarding claim 18, the combination of Shabtay teaches the mobile device of claim 1, except for wherein one or more of the lens elements are cut lens elements.
Nevertheless, the use of cut lens designs are well-known in camera arts. Hosoya teaches a folded camera including lens module having a folded tele lens (Fig. 6, para 0195, lens of unit G3 on tele side of stop with a cut lens design (Fig. 6A-6C), para 0187). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the camera module of Shabtay and Son by utilizing the claimed cut lens as taught by Hosoya in order to allow for magnification while reducing system size by reducing the lens edges.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shabtay et al. US 2016/0044250 in view of Huang et al. US 2018/0292628.
Regarding claim 1, Shabtay teaches a mobile device (para [0007]), comprising:
a first camera (Fig. 2A and para [0087]: wide camera 202) having a first field-of-view (FOV1) (the field of view for the wide camera 202) and a first image sensor (the image sensor of 202); and
a second camera (Fig. 2A and para [0087]: 204) having a second field-of-view (FOV2) (the field of view for the wide camera 204),
a second effective focal length (EFL2) and a second total track length (TTL2) (From Table 2: EFLT = 11.226, and TTLT = 12.664),
an optical lens module including N lens elements L1-LN (Fig. 10A-10B: depicts L1 to L5, i.e., N = 5, N= 4), a first reflecting element (Fig. 2A and para [0088]: reflecting element 226), and a second image sensor (Fig. 2A: 224),
wherein FOV2<FOV1 (tele field of view < wide field of view or see para [0039]),
wherein the first image sensor is configured to receive a first light from a first direction through a first optical path between an object and the first image sensor (see Fig. 2A, camera 202 receives first light along optical axis 212 i.e., first direction),
wherein the second image sensor is configured to receive a second light from the first direction through a second optical path between the object and the second image sensor (see Fig. 2A, camera 204 receives second light along optical axis 222a i.e., second direction),
wherein the first reflecting element (Fig. 2A: 226) is disposed in the second optical path between the optical lens module (220) and the second image sensor (224),
wherein 0.9 ≤ EFL2/TTL2 ≤1.1 (From Table 4: EFLT = 11.23, and TTLT = 11.51, thus EFL2/TTL2 = 0.975, which satisfied claimed range),
wherein each lens element is denoted Li where 1 ≤ i ≤ N (Fig. 10A, 10B: depicts L1 to L4 or L5, i.e., N = 4, N = 5), wherein each lens element comprises a respective front surface S211 and a respective rear surface S21, the lens element surfaces marked Sk where 1≤k≤2N (as shown in Fig. 10B: each lens i.e., L1 to L4 have a front and rear surfaces or object and image side surfaces), wherein each lens element surface has a clear aperture value CA(Sk) (it is apparent that each lens has clear aperture), and
However, Shabtay et al. fails to teach:
wherein a clear aperture value CA(S1) of surface S1 is greater than a clear aperture value of each of surfaces S2 to S2N.
In the same field of endeavor, Huang teaches a camera module (at least in Fig. 1: lens system for a camera module is shown), wherein each lens element comprises a respective front surface S2i-1 (Fig. 1: S1, S3, S5, S7, S9 represents the front surface of lenses E1 to E5) and a respective rear surface S2i, (Fig. 1: S2, S4, S6, S8, S10 represents the rear surface of lenses E1 and E5) the lens element surfaces marked Sk where 1 ≤ k ≤ 2N (S1-S10 as shown in Fig. 1),
wherein each lens element surface Sk has a clear aperture value CA(Sk) (Examiner Notes: clear aperture is equivalent to two times of the effective radius or the effective diameter of the lens, in which in Fig. 1: the effective radius of each lens is shown), wherein clear aperture value CA(S1) of surface S1 of lens element L1 (E1) is greater than CA(Sk) for 2 ≤ k ≤ 2N-1 and is substantially equal to, or greater than CA(S2N) (Fig. 1 shows that the clear aperture value of surface S1 of lens element (E1) is greater than, and clear aperture value of surface S2N of lens element LN (E5) i.e., surface S10 of lens E5). Similarly, as shown in Table 1, calculated EFL/TTL ratio for Huang is 0.997 (i.e., EFL = 10.70 and TTL = 10.73). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the mobile device of Shabtay by utilizing the claimed lens sizes as taught by Huang, because when the front surface has a greater clear aperture, is provides improved light collection and field of view as large entrance pupil allows more off-axis ray to enter the camera and also reduce vignetting.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EPHREM ZERU MEBRAHTU whose telephone number is (571)272-8386. The examiner can normally be reached 10 am -6 pm (M-F).
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/EPHREM Z MEBRAHTU/Primary Examiner, Art Unit 2872
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