Application of Cook

• Decision Date: 01 July 1971
• Docket Number: Patent Appeal No. 8446.
• Citation: 169 USPQ 298,439 F.2d 730
• Parties: Application of Gordon Henry COOK and Peter Arnold Merigold.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 298, 439 F.2d 730 (1971)

Application of Gordon Henry COOK and Peter Arnold Merigold.

Patent Appeal No. 8446.

United States Court of Customs and Patent Appeals.

April 8, 1971.

Rehearing Denied July 1, 1971.

Holcombe, Wetherill & Brisebois, Washington, D. C., attorneys of record, for appellant. Joseph F. Brisebois, John A. Feketis, Washington, D. C., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. R. V. Lupo, Washington, D. C., of counsel.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1-27 in appellants' application serial No. 309,208, filed September 16, 1963, for "Optical Objectives of Variable Equivalent Focal Length Having Two Divergent Members For Zooming Purposes." We affirm.

THE INVENTION

The rejected claims are for an allegedly improved version of a particular kind of "optical objective of the `zoom' type." In common parlance, an optical objective is called a lens. A "zoom" lens assembly is one in which the focal length, and consequently the image size as seen from a fixed position, can be varied continuously by movement of certain lens elements to vary the scale of the image without loss of focus. The zoom lenses involved here have four optical members, the outer one of which is axially movable for focusing purposes but stationary during zooming, the middle two of which are axially movable to produce the zooming effect, and the innermost one of which is stationary. Such lens assemblies are extremely complex from the optical design standpoint; the six examples set forth in appellants' specification are each characterized by over one hundred related parameters. The rejected claims recite certain relationships among a relatively small number of these parameters, the stated purpose of which is to extend the range over which the scale of the image provided by the lens assembly, i. e., the equivalent focal length, can be varied without experiencing an unacceptably high degree of image distortion at any point in the range.¹

Claim 1 is illustrative (subparagraphing and emphasis supplied):

1. An optical objective of the zoom type (that is of the type having relatively movable members whereby the equivalent focal length of the objective can be continuously varied throughout a range, whilst maintaining constant position of the image plane), corrected for spherical and chromatic aberrations, coma, astigmatism, field curvature and distortion, and

comprising

a convergent first member which for a given object distance remains stationary during the zooming relative movements,

an axially movable divergent second member behind the first member having equivalent focal length fBlying numerically between 4 and 8 times the minimum value of the ratio of the equivalent focal length of the complete objective to the f-number of the objective in the range of variation,

an axially movable divergent third member behind the second member having equivalent focal length fClying numerically between 5 and 10 times the minimum value of such ratio,

a stationary convergent fourth member behind the third member,

a zoom control element, and

means whereby operation of the zoom control element causes the zooming relative movements to be effected,

wherein

the total axial movement of the second member in the range of variation lies numerically between 1.5fB and 2.5fB and

the total axial movement of the third member in the range lies numerically between 0.25fC and 0.5fC the minimum axial separation between the second and third members occurring when the equivalent focal length of the objective is greater than half its maximum value in the range of variation,

the movable divergent second member consisting of a divergent simple meniscus component with its surfaces convex to the front and a divergent compound component behind such simple component, and

the movable divergent third member consisting of a doublet component having its front surface concave to the front with radius of curvature lying numerically between 0.5fC and 1.0fC.

THE REJECTION

There is no rejection on prior art. The examiner rejected all of appellants' claims under both the first and second paragraphs of 35 U.S.C. § 112. The board affirmed both rejections. However, at oral argument the solicitor for the Patent Office, noting that the rejections on the second paragraph of § 112 were "prior to the court's decisions in Robins In re Robins, 57 CCPA 1321, 429 F.2d 452, 166 USPQ 552 (1970) and predecessor cases presumably, In re Borkowski, 57 CCPA 946, 422 F.2d 904, 164 USPQ 642 (1970), In re Halleck, 57 CCPA 954, 422 F.2d 911, 164 USPQ 647 (1970), and In re Wakefield, 57 CCPA 959, 422 F.2d 897, 164 USPQ 636 (1970)," stated that "Today we may consider the Office's position * * * under paragraph one completely." In view of this statement, we reverse the rejection under the second paragraph of 35 U.S.C. § 112 on the basis of the above-cited cases.

Two distinct rationales are apparent in the rejection below under the first paragraph of § 112. First, appellants' disclosure was said to be insufficient because it would require many months for a skilled lens designer, working with the aid of a computer, to design, within the ambit of the claims, a satisfactory zoom lens assembly other than the six specifically disclosed. Second, appellants' disclosure was said not to support their claims because their six examples are not representative of the ranges recited in the claims and, when challenged, appellants did not give a satisfactory explanation of the origin of the range limitations in the claims. We will discuss these two rationales in turn.

OPINION

A. Difficulty of Designing an Operative Embodiment

It seems to have been agreed by all concerned that the design of commercially satisfactory zoom lenses of the kind involved here (i. e., four-member zoom lenses) is an extremely complex and time-consuming operation, even with the aid of modern computer techniques. Thus, quite apart from appellants' teachings, it would take a lens designer setting out to design a new zoom lens of this type many months, or even years, to come up with a marketable lens assembly possessing all the desired characteristics.

Appellants do not purport to have solved all of the time-consuming problems involved in the design of a new lens; indeed, to the extent that their relationships add new calculations to the design of zoom lenses, they may even have increased the time required. What they do claim to have done is to have discovered a simple set of relationships among some of the fundamental parameters involved in the design of zoom lenses which, if respected, will result in zoom lens assemblies which will be capable of zooming through a wider range than previous zoom lenses without experiencing an unacceptably high degree of image distortion at any point in their ranges of equivalent focal length variation. They are thus, it seems to us, somewhat in the position of a suspension-bridge builder who has discovered that maintaining certain relationships between the height above the roadway of the main piers and the distance between the piers will result in bridges of substantially increased strength. Disclosure by the bridge builder of this relationship would certainly not solve all the time-consuming problems of bridge designing or building, but it would, we think, enable any person skilled in the art to practice the invention. Similarly, we feel that, while appellants' disclosure has not taught those skilled in the art how to design an entire new zoom lens in short order, it has taught those skilled in the art how to design a new zoom lens of the type here claimed without undue effort. The rejection therefore cannot be sustained on this rationale.

B. Support for the Range Limitations in the Claims

The second problem, however, is more difficult. Appellants disclose six specific examples of lens assemblies embodying their invention, but they have claimed their invention in terms of broad ranges within which various parameters shall fall, which include but also go far beyond the specific examples. The examiner challenged the breadth of appellants' ranges, asking, "How could there be any lens design significance for all the values that can be chosen within the various broad ranges?" and demanding "Additional explanation * * * to explain the breadth of the ranges." As far as we can determine from the abbreviated record in this case, appellants never provided such "Additional explanation,"² contenting themselves with unsupported assertions, as quoted in the final action, that the range limitations

* * * "cooperate with one another to form a complete combination, such that sufficiently good results are achieved, for all values within the specified ranges of variation for individual parameters, to produce the desired improvement over known objectives, provided of course that the designer makes appropriate use where necessary of the store of common general knowledge which all experts have."

On that record, the board affirmed the examiner's rejection "for substantially the reasons stated by the Examiner," but made an additional point by noting that

We consider the reasons which prompt the denial of broad claims to a chemical compound or a chemical process that is based on a single disclosed example are more than applicable here since few chemical processes or compounds involve as many parameters or as a high degree as high a degree? of precision as are evidenced in the case of the design of a complex lens and the predictability of securing the wanted results are much less than would be present in most chemical reactions.

Appellants rely on this court's decision in In re Vickers, 141 F.2d 522, 31 CCPA 985 (1944), reversing the rejection of claims in a mechanical case reading on oil well pumping apparatus in which two valves were actuated by a single piston although appellants'...