95001450 (P.T.A.B. Dec. 9, 2015)

Ex Parte 7535658 et al

Patent Trial and Appeal BoardDec 9, 2015

95001450 (P.T.A.B. Dec. 9, 2015)

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. 95/001,450 10/07/2010 7535658 100252-0006-US 5913 24341 7590 12/10/2015 MORGAN, LEWIS & BOCKIUS LLP (PA) 2 PALO ALTO SQUARE 3000 EL CAMINO REAL, SUITE 700 PALO ALTO, CA 94306 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/10/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ LARGAN PRECISION CO., LTD., Requester, v. FUJIFILM, CORP., Patent Owner. ____________ Appeal 2015-007685 Reexamination Control 95/001,450 Patent 7,535,658 B2 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and DAVID M. KOHUT, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Largan Precision Co., Ltd. (“Requester”) submits a Request for Rehearing (Req. Reh’g.) under 37 C.F.R. § 41.79(b) from the Opinion of the Patent Trial and Appeal Board, dated June 6, 2012 (“Decision”). In the Decision, we affirmed the Examiner’s non-adoption of the rejection of claims 7 and 15 as unpatentable over Arai and various secondary references; claims 3, 6, 11, and 14 as unpatentable over Arai and various secondary references; and claims 3, 6, 7, 11, 14, and 15 as unpatentable over Appeal 2015-007685 Reexamination Control 95/001,450 Patent 7,535,658 B2 2 Yahagi and various secondary references. Decision 13–19. A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Requester “requests the Board to reconsider its decision on Issue 2.” Req. Reh’g. 8. In particular, Requester argues that the Examiner made a “mistake regarding a fundamental scientific aspect of aspheric lenses in relation to spherical lenses and spherical aberrations”1 and that the Examiner supposedly “contradict[ed] the well-established purpose of using aspheric lenses in imaging lens assemblies for achieving better lens performance.” Req. Reh’g. 7. Requester also argues that “the Board’s analysis relying on the. . . Examiner’s contention . . . is also incorrect.” Id. We are not persuaded by Requester’s argument. As previously discussed in the Decision, the “Lens Maker’s Equation” expresses the focal length of a lens as a function of the radii of curvature of the lens. Decision 7; ACP 8. Hence, according to the “Lens Maker’s Equation,” changes in the radii of curvature of the lens would result in corresponding changes in the focal length. Requester does not provide sufficient evidence to demonstrate how this observation is a “mistake regarding a fundamental scientific aspect of aspheric lenses.” 1 The Examiner stated that the “well-known Lens Maker’s Equation” demonstrates that focal length is a function of the “radii of curvatures” of the lens and that “modification [of the radii of curvatures of the lens] will produce a different value of [focal length] and consequently produce different conditional constraints than Arai’s disclosed values.” Req. Reh’g. 5 (citing Action Closing Prosecution (“ACP”) 8). Appeal 2015-007685 Reexamination Control 95/001,450 Patent 7,535,658 B2 3 Requester states that “the aspheric profile on the peripheral area of the aspheric lens does not change the focal length as described by the Lens Maker’s Equation” because, according to Requester, “the aspheric profile on the peripheral portion of the aspheric lens is designed to correct spherical aberrations by focusing light at the same focal length as the spherical lens near the optical axis.” Req. Reh’g. 7. Hence, Requester argues that an aspheric lens is designed to correct aberrations and, therefore, does not change the focal length of the lens. We are not persuaded by Requester’s argument at least because Requester does not provide sufficient evidence to support the contention that changes to the radii of curvature of a lens would not result in a corresponding change in the focal length of the lens — particularly in view of the Lens Maker’s Equation that explicitly demonstrates that focal length is proportional to the radii of curvature of a lens (among other factors). Nor does Requester provide sufficient evidence to support the contention that a lens being “designed to correct spherical aberrations” would have the same focal length as another lens with different radii of curvature (when, as the Lens Maker’s Equation demonstrates, the focal length varies with corresponding changes to the radii of curvatures of a lens). Requester argues that Kamo discloses that “[i]t is thus preferable that the third positive lens is provided with an aspheric surface” because “it is desired that aberration correction capability be enhanced.” Req. Reh’g. 9 (citing Kamo 262) (emphasis omitted). Requester does not indicate that this argument was previously presented. A “request for rehearing must state with particularity the points believed to have been misapprehended or Appeal 2015-007685 Reexamination Control 95/001,450 Patent 7,535,658 B2 4 overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). We cannot have misapprehended or overlooked a point that was not before us. In any event, even assuming that Requester previously presented this argument and that the aberration correction capability of a lens assembly may be enhanced by the use of a third lens with an aspheric surface, as Requester contends, Requester does not also demonstrate persuasively that the use of a lens with an aspheric surface (as opposed to a lens with a spherical surface) would not change the radius of curvature of the lens. As previously discussed, a change in the radius of curvature of a lens results in a change in focal length, according to the Lens Maker’s Equation. Requester does not assert or demonstrate sufficiently that such a change in the focal length by replacing the spherical lens of Arai with an aspherical lens of Kamo would result in a lens assembly that satisfies conditional expression (5), as recited in claim 7, for example. Regarding the Examiner’s non-adoption of rejections of claims 1–8, 11, and 14–16 as unpatentable over Yahagi and any of Kamo, Aramai-1, Aramai-2, or Noda, Requester argues that Yahagi discloses that the “fourth lens” is a “composite lens 16” that includes “lens 12 and another lens 14” that are cemented together and that “lens 12 [is] in a meniscus shape.” Req. Reh’g 13 (citing Yahagi Fig. 1); see also Yahagi 3:23–25. This issue was previously raised by Requester and addressed in the Decision. Third Party Appeal Brief 27 (“3PR App. Br.”), Decision 18. We do not agree with Requester for at least the previously stated reasons. Id. Requester does not indicate any points that we misapprehended or overlooked. Appeal 2015-007685 Reexamination Control 95/001,450 Patent 7,535,658 B2 5 We affirmed the Examiner’s decision not to adopt the proposed rejections of claims 3, 6, 11, and 14 over the combination of Arai and Kamo. Decision 16–17 (“Issue 3”). Requester previously argued that it would have been obvious to one of ordinary skill in the art to “modify Arai’s imaging lens to achieve the same focal length ratio range . . . as taught by Kamo” because “[a] skilled artisan would understand that blindly substituting the 2nd lens in Arai with the 2nd lens [of Kamo] would not produce the claimed . . . ratio” and because “[s]ubstituting the focal length ratio[] range . . . is merely a substitution of a known element with another known element.” 3PR App. Br. 22. As we stated in the Decision, we are not persuaded by Requester’s argument. Decision 16–17. Requester now proposes for the first time new, additional theories as to why it allegedly would have been obvious to one of ordinary skill in the art to have modified the relative focal length of the second lens of Arai in view of Kamo. Req. Reh’g. 11–12. As stated above, a “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). We cannot have misapprehended or overlooked a point that was not before us. We have considered Patent Owner’s arguments but find no points that we have misapprehended or overlooked. Therefore, the Request for Rehearing is DENIED. DENIED mls Appeal 2015-007685 Reexamination Control 95/001,450 Patent 7,535,658 B2 6 PATENT OWNER: MORGAN, LEWIS & BOCKIUS LLP (PA) 2 Palo Alto Square 3000 El Camino Real, Suite 700 Palo Alto, CA 94306 THIRD PARTY REQUESTER: PERKINS COIE LLP P.O. Box 1247 Seattle, WA 98111-1247