Patent Application 17946520 - OPTICAL IMAGING SYSTEM - Rejection

Patent Application 17946520 - OPTICAL IMAGING SYSTEM

Title: OPTICAL IMAGING SYSTEM

Application Information

• Invention Title: OPTICAL IMAGING SYSTEM
• Application Number: 17946520
• Submission Date: 2025-05-14T00:00:00.000Z
• Effective Filing Date: 2022-09-16T00:00:00.000Z
• Filing Date: 2022-09-16T00:00:00.000Z
• National Class: 359
• National Sub-Class: 793000
• Examiner Employee Number: 92631
• Art Unit: 2872
• Tech Center: 2800

Rejection Summary

• 102 Rejections: 1
• 103 Rejections: 2

Cited Patents

No patents were cited in this rejection.

Office Action Text

    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
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in  Korea on 5/20/2022. It is noted, however, that applicant has not filed a certified copy of the Korean application as 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.

4.	Claims 1-20 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for a five-lens system having a power arrangement of +, -, +, -, (liquid lens 5) (Embodiment 8), a six-lens system having a power arrangement of +, -, +, -, +, (liquid lens 6) (embodiments 1-7), and a seven-lens system having a power arrangement of +, -, (+/-), (+/-), (+/-), (+/-), (liquid lens 7) (embodiments 9-12), does not reasonably provide enablement for any other power arrangement including +, -, -, - (claim 1), or -, -, -, -, - (claims 13 and 18) or other various power combinations within the scope of the applicant’s independent claims. 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 an optical system having 4 to 5 lenses. Independent claim 1 recites two lens groups where the first has 3 lenses, a first positive and a second negative lens, claims 13 and 18 recite first and second lens groups and conditional expressions.
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/modifying a single lens into/of an existing system.
The applicant has disclosed one working five lens model using a power arrangement of +, -, +, -, (liquid lens 5), seven working models of a six-lens system having a power arrangement of +, -, +, -, +, (liquid lens 6), one working model of a seven-lens system having a power arrangement of +, -, -,+, -, +, (liquid lens 7), one working model of a seven-lens system having a power arrangement of +, -, +, +, -, -, (liquid lens 7) and two working models of +, -, +, -, +, -, (liquid lens 7). Further, changing a single lens power normally results in breaking a lens system, please see the discussion below.
Applicant’s claims are excessively broad due, in part, to the complex and diverse nature of optical engineering requiring a minimum amount of information, ordinarily lens powers or specific shapes that can be used to determine a lens power, to create a working system. 
Further, applicant’s disclosure does not support a claim scope that includes fewer lenses than they have provided adequate support for in their specification (Claims 1 and 18). The removal of any lens in applicant’s 8th embodiment would render the optical system unusable. 
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 use the claimed methods without resorting to undue experimentation to determine a functional lens power arrangement.
Due to the large quantity of 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 and quantity must be known, 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 amount of variables to be disclosed in order to be within the capability of one having ordinary skill to build. 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 one power arrangements of a five-lens system is enabling for the creation of every other power arrangement, or that it provides enablement for an optically useful four-lens system, 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 the applicant’s 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 be considered to break the system due to the level of ordinary skill being able to recreate entire systems based on the power of one or fewer lenses and/or the 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 general loss of image quality that would render the system unusable. Similarly, removing any one of the lenses from applicant’s embodiments would require an artisan to fully redesign the optical system from scratch. However, applicant’s claims, if we consider them enabled, assume such modifications to be possible for one having ordinary skill. Further, such an interpretation of ordinary skill would also apply to the modification 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, or think it reasonable to believe, that this is the standard level of skill for a typical artisan in this art.
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) 1-4, 6, 8-12 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (PGPUB 20150138425).

Regarding claim 1, Lee discloses an optical imaging system, comprising: 
a fixed-focus lens group and a variable-focus lens group disposed in this order from an object side (at least [0082] where at least one of the first to sixth lenses moves for focusing and the rest of the lenses may remain fixed), 
wherein the fixed-focus lens group includes a first lens, a second lens, and a third lens disposed in this order from an object side ([0082]), 
wherein the first lens has positive refractive power (Table 13 - first to fifth embodiments), and 
wherein the second lens has negative refractive power (Table 13 - first to fifth embodiments).

Regarding claim 2, Lee discloses wherein the first lens has a convex object- side surface (Tables 1-12 - first to fifth embodiments).

Regarding claim 3, Lee discloses wherein the second lens has a concave image-side surface (Tables 1-12 - first to fifth embodiments).

Regarding claim 4, Lee discloses wherein the third lens has a convex object- side surface (at least Table 3).

Regarding claim 6, Lee discloses further comprising: a fourth lens disposed on an image side of the third lens (Tables 1-12 - first to fifth embodiments).

Regarding claim 8, Lee discloses further comprising: 
a fifth lens disposed on an image side of the fourth lens (Tables 1-12 - first to fifth embodiments).

Regarding claim 9, Lee discloses further comprising: 
a sixth lens disposed on an image side of the fifth lens (Tables 1-12 - first to fifth embodiments). 

Regarding claim 10, Lee discloses wherein at least one of conditional expressions as below is satisfied:
2.0 < TTL/f1 < 4.0, and
-5.0 < TTL/f2 < -0.2 (Table 13 at least embodiment 1 where TTL/f2 = -0.9),
where TTL is a distance from an object-side surface of the first lens to an imaging plane of the optical imaging system, f1 is a focal length of the first lens, and f2 is a focal length of the second lens.

Regarding claim 11, Lee discloses wherein a conditional expression as below is satisfied:
25 < V1-V2 (at least Table 1 where V1-V2 = 33.7)
where V1 is an Abbe number of the first lens, and V2 is an Abbe number of the second lens.

Regarding claim 12, Lee discloses a camera module comprising: 
a housing ([0005]-[0007] and [0116] cameras are typically housed in a protective enclosure); and 
the optical imaging system of claim 1 disposed in the housing (Abst.).

Regarding claim 18, Lee discloses an optical imaging system, comprising: 
a fixed-focus lens group and a variable-focus lens group disposed in this order from an object side (at least [0082] where at least one of the first to sixth lenses moves for focusing and the rest of the lenses may remain fixed), 
wherein the fixed-focus lens group includes a first lens, a second lens, and a third lens disposed in this order from an object side (Tables 1-13), and 
wherein at least one of conditional expressions as below is satisfied:
28.0 mm < f1 < 36.0 mm, and
-600 mm < fb < 20.0 mm (Table 13 where f5 and f6 both satisfy fb),
where fB is a focal length of the variable-focus lens group.
where fA is a focal length of the fixed-focus lens group and fB is a focal length of the variable-focus lens group.

Regarding claim 19, Lee discloses wherein the first lens has positive refractive power, and wherein the second lens has a negative refractive power (Table 13 - first to fifth embodiments).

Regarding claim 20, Lee discloses a camera module comprising: 
a housing ([0005]-[0007] and [0116] cameras are typically housed in a protective enclosure); 
the optical imaging system of claim 18 disposed in the housing (Abst.); and
an energy generator configured to supply energy to operate the variable-focus lens group ([0080] the movement of an object requires the application of some form of energy).


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.

Claim(s) 13, 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee.

Regarding claim 13, Lee discloses an optical imaging system, comprising: 
a fixed-focus lens group (at least [0082] where at least one of the first to sixth lenses moves for focusing and the rest of the lenses may remain fixed); and
a variable-focus lens group disposed on an image side of the fixed-lens group (at least [0082] where at least one of the first to sixth lenses moves for focusing and the rest of the lenses may remain fixed), 
wherein the fixed-focus lens group includes a first lens, a second lens, a third lens and a fourth lens disposed in this order from an object side ([0082]).
Lee does not disclose wherein a conditional expression as below is satisfied:
0.8 < TTL/f < 1.0,
where TTL is a distance from an object-side surface of the first lens to an imaging plane of the optical imaging system, and f is a focal length of the optical imaging system.
However, Lee teaches that the conditional expression 0.9 < TL/f < 2.0 should be satisfied ([0070]), which overlaps half of the applicant’s claimed range.
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to modify TL and/or f such that TL/f was within the range 0.9 to 1.0 motivated by improving aberration correction ([0072]).

Regarding claim 15, modified Lee discloses wherein a conditional expression as below is satisfied:
-600 mm < fb < 20.0 mm (Table 13 where f5 and f6 both satisfy fb),
where fB is a focal length of the variable-focus lens group.

Regarding claim 17, Lee discloses a camera module comprising: 
a housing ([0005]-[0007] and [0116] cameras are typically housed in a protective enclosure); and 
the optical imaging system of claim 1 disposed in the housing (Abst.).


Claim(s) 5, 7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Kuo et al. (PGPUB 20190391367).

Regarding claim 5 and 16, Lee does not disclose further comprising: an optical path changing element disposed on an object side of the fixed-focus lens group or between lenses of the fixed-focus lens group.
However, Kuo teaches a similar six-lens optical system wherein an optical path changing element may be disposed on the object side of the optical system ([0222]).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Lee and Kuo such that a prism was placed on the object side of the fixed-lens group motivated by more space flexibility ([0222]).
	
	Regarding claim 7, Lee does not disclose wherein the fourth lens has a concave image-side surface.
However, Kuo teaches a similar six-lens optical system wherein the powers are arranged +, -, +, -, +, - and the fourth lens is concave on the image-side surface (Table 9).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Lee and Kuo such that the fourth lens was concave on the image-side motivated by improving aberration corrections ([0042]).

Examiner’s Notes
An art rejection of claim 14 has not been made in this office action, but is rejected based on 112(a) as explained above. The examiner did not find a reasonable rejection based the current prior art and interpretation of the claims. However, the examiner cannot confidently comment on its allowability until the 112 rejection has been resolved. 
Also, the examiner would like to note that the language of the independent claims allows for a movable focusing group, which is specifically taught against in their specification. The applicant would greatly narrow the applicable prior art by addressing this issue in an amendment that makes it clear that the variable-focus group is also fixed. The breadth of prior art that includes two lens groups, one of which is fixed and the other moving for focusing, is significant. However, the prior does not include a wide variety of fixed-variable-focus lenses and it is not necessarily, or generally, reasonable to modify any given optical system with such a lens due to the amount of experimentation necessary to rediscover the optimal placement for all the other lenses of the system.
Finally, if the applicant amends claims 1 and 18 to include a fourth lens in the fixed-focus group (to overcome the 112 rejection), the variable-focus lens group is fixed and the conditional expression of claim 14 (require both expressions, or remove the fB expression, in claim 18), then the examiner would likely allow those claims. With respect to claim 13, applicant should include the first two lens powers of their fixed-focus lens group (these are the only powers consistent in every embodiment and the applicant has provided sufficient guidance in their specification for the other lens powers) to overcome the 112 rejection. 
If the applicant would like to discuss potential amendments to the claims prior to filing a response the examiner would be available for an interview.
 
Conclusion

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/TRAVIS S FISSEL/             Primary Examiner, Art Unit 2872