ANALOG DEVICES, INC.

Patent Trials and Appeals Board

Jun 9, 2020

2019002194 (P.T.A.B. Jun. 9, 2020)

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.
14/276,238 05/13/2014 Dipak Sengupta ADINC.179A 7193
110833 7590 06/09/2020
KNOBBE, MARTENS, OLSON & BEAR, LLP
(ADIRE/ADINC/ADHIT)
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
EXAMINER
KARKI, PARAS D
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
06/09/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIPAK SENGUPTA,
SHRENIK DELIWALA, YING ZHAO, BRUCE FRIED,
WILLIAM SCHOPPEE, and WOODROW BECKFORD
Appeal 2019-002194
Application 14/276,238
Technology Center 2600
Before CARL W. WHITEHEAD JR., BARBARA A. BENOIT, and
MICHAEL J. ENGLE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
MICHAEL J. ENGLE, Administrative Patent Judge.

Opinion Dissenting in part filed by Administrative Patent Judge
CARL W. WHITEHEAD JR., Administrative Patent Judge.

Appeal 2019-002194
Application 14/276,238

2
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4, 6–8, 10, 12–20, 22–27, 29–36, 38, and 39,
which are all of the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
TECHNOLOGY
The application relates to the arrangement of components in a gesture
sensor module. Spec. ¶ 4.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A gesture sensor module comprising:
an optical emitter die having an emitter surface, the optical
emitter die mounted on a first mounting surface;
an optical sensor die having a sensor surface facing
upwards, the optical sensor die mounted on a second mounting
surface;
a package housing the optical emitter die disposed in a first
cavity of the package and the optical sensor die disposed in a
second cavity of the package, wherein the first mounting surface
is disposed at a first height relative to a bottom surface of the
package, the second mounting surface is disposed at a second
height relative to the bottom surface of the package, wherein the

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Analog Devices, Inc. as the real party
in interest. Appeal Br. 4.
Appeal 2019-002194
Application 14/276,238

3
first height is different from the second height, and wherein a
portion of an external surface of the package defines a surface
for detecting a gesture by the optical sensor die; and
an Application Specific Integrated Circuit (ASIC) die, the
optical sensor die stacked on the ASIC die such that the ASIC die
is disposed between the optical sensor die and the bottom surface
of the package, the ASIC die in electrical communication with
the optical sensor die.
REFERENCES
The Examiner relies upon the following prior art references:
Name Number Date
Coffy US 2013/0012276 A1 Jan. 10, 2013
Costello US 2013/0292706 A1 Nov. 7, 2013
Lee US 2011/0254763 A1 Oct. 20, 2011
Patel US 8,604,436 B1 Dec. 10, 2013
Tajul US 2007/0291490 A1 Dec. 20, 2007
Varaprasad US 2009/0075092 A1 Mar. 19, 2009
Wiese US 2010/0259766 A1 Oct. 14, 2010
REJECTIONS
All pending claims stand rejected under 35 U.S.C. § 103 as obvious
over the combinations of references listed in the chart below. The Examiner
withdrew the rejection under 35 U.S.C. § 112(b). Ans. 4.2

2 Citations to “Ans.” are to the Examiner’s Answer dated January 7, 2019.
Appeal 2019-002194
Application 14/276,238

4
Claims References Final Act.3
1, 2, 12, 14–16, 23–
25, 27, 29, 30, 36, 39 Wiese, Patel, Coffy 4
3, 4 Wiese, Patel, Coffy, Varaprasad 15
6, 31, 35, 38 Wiese, Patel, Coffy, Costello 16
17–20, 22 Wiese, Patel, Costello 19
7, 10, 13, 32 Wiese, Patel, Coffy, Lee 24
8 Wiese, Patel, Coffy, Lee, Tajul 27
26, 34 Wiese, Patel, Coffy, Tajul 27
33 Wiese, Patel, Costello, Tajul 29
ISSUES
1. Did the Examiner err in finding Coffy teaches or suggests “the
optical sensor die stacked on the ASIC die such that the ASIC die is
disposed between the optical sensor die and the bottom surface of the
package,” as recited in claim 1?
2. Did the Examiner err in finding Coffy teaches or suggests “the
different heights provided at least in part by an Application Specific
Integrated Circuit (ASIC) die disposed underneath the sensor die,” as recited
in claim 23?
3. Did the Examiner err in finding reason to modify Wiese’s
straight barrier with Costello’s tapered barrier with respect to the limitation
“the optical barrier tapers inwardly from a lower portion of the optical
barrier to an upper portion of the optical barrier such that an uppermost
portion of the first cavity is smaller than a lowermost portion of the first
cavity,” as recited in claim 17?

3 There are no page numbers on the Final Office Action itself. Our
references to specific pages start counting the “Office Action Summary” as
page 1 and the beginning of the “Detailed Action” as page 2.
Appeal 2019-002194
Application 14/276,238

5
ANALYSIS
Claims 1, 2, 12, 14–16, 29, 36, and 39
Claim 1 separately recites (A) “an optical sensor die” and (B) “an
Application Specific Integrated Circuit (ASIC) die.” Claim 1 further recites
“the optical sensor die stacked on the ASIC die such that the ASIC die is
disposed between the optical sensor die and the bottom surface of the
package.”
The Examiner relies on Coffy for teaching the claimed stacking of the
two dies, specifically the depiction in Figure 6 of the optical sensor 9 and
integrated circuit chip 6. Final Act. 7.
Appellant argues that in Coffy, “the optical sensor is integrated with,
and forms part of, the chip 6.” Appeal Br. 12. “In no sense does the optical
sensor 9 qualify as a ‘die’ separately mounted on an ASIC, as recited in
Claim 1.” Id.
The Examiner states Appellant “has not claimed for ‘separately
mounted’” and regardless, “separation and integration of parts are well
known and would be obvious to one of ordinary skill in the art.” Ans. 34.
Figure 6 of Coffy is reproduced below:

Appeal 2019-002194
Application 14/276,238

6
Figure 6 of Coffy depicts a cross-section of an electronic package
during fabrication. See Coffy ¶¶ 20–23, 49. According to Coffy, “[t]he
electronic package 1 comprises a receiving integrated circuit chip 6, . . . the
front face 8 of which comprises . . . a main integrated light radiation optical
sensor 9.” Id. ¶ 29. Thus, Coffy discloses the front face 8 of chip 6
comprises an integrated light radiation optical sensor 9.
We agree with Appellant that the Examiner fails to show how Coffy’s
chip comprising an integrated sensor teaches an “optical sensor die stacked
on the ASIC die,” as recited by claim 1. The sensor die cannot be “stacked
on” the ASIC die if the sensor and ASIC are integrated on the same die.
Unlike the legal precedent cited by the Examiner inquiring whether it would
have been obvious to make a cap on a tube of lipstick removable, see In re
Dulberg, 289 F.2d 522, 523 (CCPA 1961), here the Examiner has not
sufficiently explained whether or why a person of ordinary skill in the art
would have had reason to separate Coffy’s integrated chip into two separate
chips or dies. See Reply Br. 4.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and its dependent claims 2, 12, 14–16, 29, 36, and 39.
Claims 23–25, 27, and 30
Independent claim 23 recites “the different heights provided at least in
part by an Application Specific Integrated Circuit (ASIC) die disposed
underneath the sensor die.”
Appellant relies on substantially the same argument as claim 1, i.e.,
that Coffy does not teach separate dies for the sensor and ASIC. Appeal Br.
15. The Examiner likewise relies on the same findings. Ans. 41–43.
Appeal 2019-002194
Application 14/276,238

7
As with claim 1, an ASIC die cannot be “disposed underneath” a
sensor die if the ASIC and the sensor are on the same die.
Accordingly, we do not sustain the Examiner’s rejection of claim 23,
and its dependent claims 24, 25, 27, and 30.
Claims 17–20 and 22
Claim 17 recites “the optical barrier tapers inwardly from a lower
portion of the optical barrier to an upper portion of the optical barrier such
that an uppermost portion of the first cavity is smaller than a lowermost
portion of the first cavity.”
The Examiner determines that it would have been obvious to modify
Wiese’s straight barrier with Costello’s sloped barrier. Final Act. 22.
Appellant argues the Examiner’s reasoning “at most . . . merely
indicates that a skilled artisan could have combined the asserted teachings,
not that there was any objective reason for doing so.” Appeal Br. 17.
We agree with Appellant. Even in the Answer, the Examiner
addresses only what a person of ordinary skill could do, not what they would
have had reason to do. For example, the Examiner finds that “Costello’s
optical light barrier could be substituted for Wiese’s optical barrier as they
would both prevent transmission of light” and “the tapered optical barrier
could still be substituted for Wiese’s optical barrier as they both block light.”
Ans. 44 (emphasis added).
“However, rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted by
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Thus, “the PTAB
Appeal 2019-002194
Application 14/276,238

8
must make a finding of a motivation to combine when it is disputed.” In re
NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). “Although
identifying a motivation to combine need not become a rigid and mandatory
formula, the PTAB must articulate a reason why a PHOSITA would
combine the prior art references.” Id. (quotation omitted).
Here, the Examiner fails to provide any reason why a person of
ordinary skill would have combined the references as proposed.
Accordingly, we do not sustain the Examiner’s rejection of claim 17,
and its dependent claims 18–20 and 22.
Claims 3, 4, 6–8, 10, 13, 31–35, and 38
The remaining claims ultimately depend from the independent claims
discussed above (1, 17, or 23), and the Examiner does not rely on the
additional references to cure the deficiencies of the independent claims. We
therefore reverse the rejection of these dependent claims for the same
reasons as their respective independent claims.
Appeal 2019-002194
Application 14/276,238

9
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected
35
U.S.C. § References Aff’d Reversed
1, 2, 12, 14–16,
23–25, 27, 29,
30, 36, 39
103 Wiese, Patel,
Coffy
1, 2, 12, 14–16,
23–25, 27, 29,
30, 36, 39
3, 4 103 Wiese, Patel,
Coffy, Varaprasad
3, 4
6, 31, 35, 38 103 Wiese, Patel,
Coffy, Costello
6, 31, 35, 38
17–20, 22 103 Wiese, Patel,
Costello
17–20, 22
7, 10, 13, 32 103 Wiese, Patel,
Coffy, Lee
7, 10, 13, 32
8 103 Wiese, Patel,
Coffy, Lee, Tajul
8
26, 34 103 Wiese, Patel,
Coffy, Tajul
26, 34
33 103 Wiese, Patel,
Costello, Tajul
33
Overall
1–4, 6–8, 10,
12–20, 22–27,
29–36, 38, 39
REVERSED

Appeal 2019-002194
Application 14/276,238

10
WHITEHEAD, JR., Administrative Patent Judge, dissenting in part.

I respectfully disagree with the majority’s decision in regard to
reversing the Examiner’s obviousness rejection of independent claim 17.
Appellant indicates paragraph 47, element 711 provides support for
the “wherein the optical barrier tapers inwardly from a lower portion of the
optical barrier” limitation recited in claim 17. See Appeal Brief 6.
Appellant’s Figure 7 is reproduced below:

“FIG. 7 is a schematic illustration of a gesture sensor module having a
laminate substrate 702 and molding compound deposited thereover.”
Specification ¶ 46.
The Specification discloses in paragraph 47, “The opaque molding
compound 711 positioned laterally between the optical sensor die 703 and
the optical emitter die 723 serves as an optical barrier, reducing the potential
for cross-talk.” There is no mention of tapering the optical barrier, nor is
there any mention of the significance of tapering the optical barrier in
paragraph 47 of the Specification.
Appellant contends:
[T]he Examiner has not provided any reasoning or evidence to
support the Examiner’s assertions that the references are
functional equivalents. Moreover, the Examiner’s assertions
with respect to such equivalence is not a reason to combine; at
most, it merely indicates that a skilled artisan could have
Appeal 2019-002194
Application 14/276,238

11
combined the asserted teachings, not that there was any objective
reason for doing so.
Appeal Brief 17 (emphasis added).
Appellant further contends:
[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention. Personal Web Technologies LLC v. Apple Inc., [2016-
1174] (Fed. Cir. February 14, 2017). Therefore, there is no
reason or motivation to combine Costello’s blocking layer 33
that is angled with the opaque material 150 of Wiese and/or the
radiation blocking material 118 of Patel, nor are the optical
barriers “functional equivalents” as asserted by the Examiner.
Appeal Brief 17.
The Examiner finds Weise, as modified by Patel, fails to disclose
tapering the optical barrier. See Final Action 21-22. The Examiner finds
Costello discloses an optical barrier tapering inward and determines
modification to the Wiese/Patel combination’s straight optical barrier would
have been obvious to one of ordinary skill in the art. See Final Action 22.
I find the Examiner’s findings and determination sufficient to
establish a prima facie case of obviousness because the Examiner cites to
specific teachings in the references where optical barriers are deployed in the
technology. See Final Action 21-22; see also Personal Web Technologies
LLC v. Apple Inc., 848 F.3d 987, 994 (2017) (“[A] clear, evidence-supported
account of the contemplated workings of the combination is a prerequisite to
adequately explaining and supporting a conclusion that a relevant skilled
artisan would have been motivated to make the combination and reasonably
expect success in doing so.”). I find Appellant’s arguments are conclusory
because they do not provide any explanation as to why the prior art’s optical
barriers are not functional equivalents. See Appeal Brief 17; see also In re
Appeal 2019-002194
Application 14/276,238

12
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument is not the
kind of factual evidence required to rebut a prima facie case of obviousness).
Further, the claimed optical barrier tapering does not appear to have any
function other than providing the functions that a common optical barrier
would provide. See Specification ¶ 47.
Constrained by the record, I would sustain the Examiner’s
obviousness rejection of claim 17.