UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS P.O. Box 1450
Alexandria, Virginia 22313-1450 www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
17/010,832 09/03/2020 Jiayuan Zhang GSEP0094USA 1417
27765 7590 05/05/2025
NORTH AMERICA INTELLECTUAL PROPERTY CORPORATION
5F., NO.389, FUHE RD., YONGHE DIST.
NEW TAIPEI CITY, 234645
TAIWAN
EXAMINER
HUSTOFT, JUSTIN WAYNE
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
05/05/2025 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es):
Patent.admin.uspto.Rcv@naipo.com
mis.ap.uspto@naipo.com
PTOL-90A (Rev. 04/07)
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIAYUAN ZHANG, QINGZHI ZHU, and LANLAN ZHANG ——————
Appeal 2024-001434
Application 17/010,832
Technology Center 2800
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Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1appeals from the Examiner's decision to reject claims 1-20. See Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
1 "Appellant" refers to "applicant" as defined in 37 C.F.R. § 1 .42. Appellant identifies the real party in interest as Genius Electronic Optical. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1 and 8, reproduced below, illustrates the claimed subject matter:
1. An optical imaging lens, from an object side to an image side in order along an optical axis comprising:
a first lens element, a second lens element, a third lens element, a fourth lens element, a fifth lens element, and a sixth lens element, the first lens element to the sixth lens element each having an object-side surface facing toward the object side and allowing imaging rays to pass through as well as an image- side surface facing toward the image side and allowing the imaging rays to pass through, wherein:
a periphery region of the image-side surface of the first lens element is convex;
a periphery region of the object-side surface of the second lens element is convex;
a periphery region of the object-side surface of the fourth lens element is concave; and
an optical axis region of the image-side surface of the sixth lens element is convex;
wherein the lens elements included by the optical imaging lens are only the six lens elements described above, and wherein the optical imaging lens satisfies the relationship:
the sum of the five air gaps from the first lens element to the sixth lens element along the optical axis is greater than or equal to the sum of the thicknesses of the six lens elements from the first lens element to the sixth lens element along the optical axis, and the largest air gap in the optical imaging lens is between the first lens element and the fourth lens element, and TTL/EFL≤l.000, wherein TTL is the distance from the object- side surface of the first lens element to an image plane along the optical axis, EFL is an effective focal length of the optical imaging lens.
8. An optical imaging lens, from an object side to an image side in order along an optical axis comprising:
a first lens element, a second lens element, a third lens
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element, a fourth lens element, a fifth lens element, and a sixth lens element, the first lens element to the sixth lens element each having an object-side surface facing toward the object side and allowing imaging rays to pass through as well as an image- side surface facing toward the image side and allowing the imaging rays to pass through, wherein:
a periphery region of the object-side surface of the second lens element is convex;
a periphery region of the object-side surface of the third lens element is concave;
a periphery region of the object-side surface of the fourth lens element is concave; and
an optical axis region of the image-side surface of the sixth lens element is convex;
wherein the lens elements included by the optical imaging lens are only the six lens elements described above, and wherein the optical imaging lens satisfies the relationship:
the sum of the five air gaps from the first lens element to the sixth lens element along the optical axis is greater than or equal to the sum of the thicknesses of the six lens elements from the first lens element to the sixth lens element along the optical axis, and TTL/EFL≤l.000, wherein TTL is the distance from the object-side surface of the first lens element to an image plane along the optical axis, EFL is an effective focal length of the optical imaging lens.
REFERENCES
The Examiner relies on the following references to reject the claims:
Name Reference Date
Jhang '849 US 2017/0307849 A1 Oct. 26, 2017 Jhang '850 US 2017/0307850 A1 Oct. 26, 2017 Liao US 2019/0204540 A1 July 4, 2019
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REJECTION
The Examiner maintains the following rejection:
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
1-20 103 Jhang '850, Jhang '849, Liao
OPINION
We review the appealed rejections for error based upon the issues Appellant identifies and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, Appeal No. 2009-006013, 2010 WL 889747, at *4 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). Having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that Appellant has identified reversible error, and we affirm the Examiner's obviousness rejection of claims 1, 3, and 5-20 essentially for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis.
Claim 12
In rejecting claim 1 over Jhang '850, Jhang '849, and Liao, the Examiner finds, among other claim elements, that a skilled artisan "would have been motivated to combine the 1stand 8thembodiments of Jhang '850"
2 Appellant argues against the obviousness rejection of claims 1, 3, 5-7, 9- 14, and 16-20 as a group with claim 1 as the representative claim. See Appeal Br. 7-15. Claims 1, 3, 5-7, 9-14, and 16-20 stand or fall together. See id; see also 37 C.F.R. § 41.37(c)(1)(iv).
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to arrive at a lens having "the largest air gap in the optical imaging lens [] between the first lens element and the fourth lens element" as claim 1 requires. Final Act. 3-4; Ans. 5. The Examiner's rationale is based on paragraph 84 of Jhang '850 which provides: "Properly decreasing the thicknesses of the lens elements as well as the air gaps between the lens elements serves to shorten the length of the optical imaging lens and allow for the system to focus more easily, which raises image quality." Final Act.
4. The Examiner additionally reasons that paragraph 167 of Jhang '850 teaches that "the optical characteristics may be relatively better or worse for some aberrations compared between the two embodiments" and a skilled artisan would have found desirable to combine these embodiments. Ans. 5. Appellant argues that the Examiner reversibly erred because paragraph 84 of Jhang '850 discloses "that in order to shorten the lens length and improve the imaging quality, the above advantages can be achieved by satisfying the above conditional expressions" as shown in equation (2) in paragraph 84. Appeal Br. 7. Although Appellant acknowledges that "that the eighth embodiment discloses that the maximum air gap is between the first lens element and the fourth lens element," Appellant argues that "the surface shape of the optical axis region of the image-side surface of the sixth lens element in the eighth embodiment was changed from convex to concave."
Id. (emphasis removed). Appellant also argues that all embodiments in Jhang '850 have certain conflicting futures and cannot be combined. Reply Br. 2. Appellant argues that paragraph 167 of Jhang '850 "does not teach that the features in embodiments can be arbitrarily combined into features that are not supported by the specification." Id.
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Appellant's arguments are unpersuasive. All of the features of the first embodiment of Jhang '850 need not be bodily incorporated into the eighth embodiment and the skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, the record shows that all the structures are known in the art and the Examiner finds that it is within the ordinary skill to arrive at the claim element at issue. Appellant's arguments that Jhang '850 does not teach the Examiner's proposed combination is unpersuasive because "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. Moreover, we decline to limit the teaching in paragraph 84 of Jhang '850 to equation (2). The paragraph teaches various additional equations and Appellant does not provide sufficient reason as to why the teaching should be limited to equation (2).
Appellant next argues that the Examiner reversibly erred in finding that the combined prior art teaches a lens having "a periphery region of the image-side surface of the first lens element is convex" as claim 1 requires. Appeal Br. 8. Appellant quotes various portions of paragraph 80 of Jhang 850 and argues that "it is unreasonable for the examiner to think that Jhang '850 teaches that the periphery region of the image-side surface of L1 (the first lens element) is convex and can gather edge image light to focus more easily, which raises image quality." Id.
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Appellant's argument is unpersuasive because the argument does not address the Examiner's findings with regard to Liao - which together with the relevant portions of Jhang '850 - forms the basis of the rejection. See Final Act. 4. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).3
Appellant next argues that the Examiner reversibly erred in finding that the combined prior art teaches a lens having "the sum of the five air gaps from the first lens element to the sixth lens element along the optical axis is greater than or equal to the sum of the thicknesses of the six lens elements from the first lens element to the sixth lens element along the optical axis" as claim 1 requires. Appeal Br. 8-9. Appellant argues that such correlation is not taught in Jhang '850 paragraph 3, and as such Jhang '850 does not disclose the relationship between AAG and ALT recited in claim 1. Id. at 9.
3 Appellant raises, for the first time on appeal, an argument in the Reply Brief with regard to Liao. Reply 3-4. An argument raised for the first time in a Reply Brief can be considered waived if Appellants do not explain why it could not have been raised previously. 37 C.F.R. § 41.41(b)(2); see Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause."). Appellant does not explain why this argument could not have been raised in the opening brief to afford the Examiner an opportunity to respond. We therefore decline to consider this argument.
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Appellant's argument is unpersuasive because the argument does not address the Examiner's findings with regard to Figure 50 of Jhang '850 as well as Jhang '849 - which together with paragraph 3 of Jhang '850 - form the basis of the rejection. See Final Act. 4; Ans. 6. Appellant's argument based solely on paragraph 3 of Jhang '850 also does not address the Examiner's reasoning that a skilled artisan would have arrived at the claim element at issue through routine optimization. See id. No reversible error has therefore been identified in this aspect of the obviousness analysis. Appellant also provides certain simulation to show that the field of art is unpredictable. Appeal Br. 9-15. Appellant argues that the simulation is performed "in line with the teaching of ZEMAX optical design program User's Manual July 8, 2011.: Reply Br. 5. When determining obviousness, however, "[t]he teachings are to be viewed as they would have been viewed by one of ordinary skill." In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). The record before us does not clearly show the simulation was conducted by a skilled artisan. Appellant does not present evidence supporting the simulation such as the "ZEMAX optical design program User's Manual July 8, 2011" cited on page 5 of the Reply Brief. "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Moreover, as the Examiner points out, the simulation does no more than bodily incorporate all the features of the references without applying a skilled artisan's knowledge. Ans. 6. Appellant's arguments are unpersuasive because the arguments lack evidentiary support.
The rejection of claim 1 is sustained.
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Claims 2 & 4 Appellant argues that the Examiner reversibly erred in the calculations in support of the rejection of claims 2 and 4. Appeal Br. 15. In rejecting claim 2, the Examiner finds that a ratio of 4.878 is less than 4.5. Final Act. 5. The rejection of claim 2 is not sustained as a result.
With regard to claim 4, Appellant provides Appellant's own calculation showing a result different from that of the Examiner. Appeal Br.
15. The Examiner does not respond to the Appellant's calculation. We do not sustain the rejection of claim 4.
Claims 8 & 15
Appellant argues against the rejection of independent claims 8 and 15 as a group. See Appeal Br. 15. Appellant first argues that claims 8 and 15 are patentable for the same reasons as provided with regard to claim 1. See id. These arguments are unpersuasive as we provide supra. Appellant's remaining arguments (Appeal Br. 15) are unpersuasive because they do not address the Examiner's factual findings in support of the rejection. Appellant does not address Liao paragraph 121 which - along with additional passages of Liao as well as Jhang '850 - form the relevant basis of the Examiner's rejection of claims 8 and 15. See Final Act. 7-8. Appellant's additional argument is unclear as to whether the argument is that Jhang '850 teaches away from claims 8 and 15. Appeal Br. 15. To the extent that Appellant presents such an argument, the argument is unpersuasive because Jhang '850's discussion of concavity "does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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A preponderance of the evidence supports the Examiner's rejection of claims 8 and 15.
CONCLUSION
The Examiner's rejection of claims 1, 3, 5-20 is affirmed. The Examiner's rejection of claims 2 and 4 is reversed.
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DECISION SUMMARY
The following table summarizes our decision:
Claim(s) Rejected
35 U.S.C.
§ Reference(s)/ Basis Affirmed Reversed
1-20 103 Jhang '850, Jhang '849, Liao
1, 3, 5-
20
2, 4
Overall Outcome
1, 3, 5-
20
2, 4
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART
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