Ex Parte Hsu et alDownload PDFPatent Trial and Appeal BoardSep 24, 201310939894 (P.T.A.B. Sep. 24, 2013) Copy Citation 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. 10/939,894 09/13/2004 Tzu-Hsuan Hsu 24061.198 (2003-1548) 5236 42717 7590 09/25/2013 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER STARK, JARRETT J ART UNIT PAPER NUMBER 2823 MAIL DATE DELIVERY MODE 09/25/2013 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 ________________ Ex parte TZU-HSUAN HSU, DUN-NIAN YAUNG, and YEAN-KUEN FANG ________________ Appeal 2011-005348 Application 10/939,894 Technology Center 2800 ________________ Before SALLY G. LANE, JOHN G. NEW, and HUNG H. BUI, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005348 Application 10/939,894 2 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 12-15, 18, 21, 22, and 24-32 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Kondo et al. (US 2005/0045975 Al, March 3, 2005) (“Kondo”) and Fukusyo (US 6,066,511, May 23, 2000) (“Fukusyo”) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants’ invention is directed to a device includes an image sensing element. The device also includes a Silicon Dioxide (SiO2) layer, located over the image sensing element, exhibiting a first index of refraction. The device further includes a first lens, located over the SiO2 layer, exhibiting a second index of refraction greater than the first index of refraction. The device still further includes a color filter located over the first lens and a second lens located over the color filter. Abstract. GROUPING OF CLAIMS Appellants make the same arguments for claims 12-15, 18, 21, 22, and 24-32. App. Br. 14, 15, 18, 19, 22, 24. We consequently select claim 12 as representative of the claims on appeal. Claim 12 recites: 12. A device comprising: an image sensing element; Appeal 2011-005348 Application 10/939,894 3 a first Silicon Dioxide (SiO2) layer, located over the image sensing clement, exhibiting a first index of refraction and having a curved recess; a first lens, located over the first SiO2 layer, exhibiting a second index of refraction greater than the First index of refraction and including a first surface that conforms to the curved recess of the first SiO2 layer and a second surface that is planarized; a second SiO2 layer located directly on the second surface of the first lens; a color filter located over the second SiO2 layer; and a second lens located over the color filter. App. Br. 26. ISSUES AND ANALYSES Issue 1 Appellants argue that the Examiner erred in combining the teachings of the prior art because the modification of Kondo by Fukusyo would change the principle of operation of Kondo. App. Br. 12. We therefore address the issue of whether the Examiner so erred. Analysis Appellants argue that modifying Kondo’s lens 120 with Fukusyo’s teaching of a planarized convex first lens would change the principle of operation of Kondo’s lens. App. Br. 12. According to Appellants, Kondo teaches that “[t]he inner lens 120 of the solid state imaging device shown in FIG. 4[A] has an upward and downward convex shape” which “can realize Appeal 2011-005348 Application 10/939,894 4 a high converging efficiency” and “has no surface without the converging function.” App. Br. 12-13 (quoting Kondo, ¶¶ [0082]-[0084]). By contrast, argue Appellants, Fukusyo teaches a planarized convex first lens. App. Br. 13. Appellants argue that substituting the planarized convex first lens of Fukusyo would alter the principle of operation of Kondo’s lens because the lens taught by Fukusyo: (1) does not have an upward and downward convex shape; (2) has no surface without the converging function; and (3) does not have a high converging efficiency. The Examiner responds that the function of the lens taught in both Kondo and Fukusyo is to gather and focus light upon a sensor. Ans. 7. The Examiner finds that Kondo teaches that the upper surface is curved in order to achieve high convergence efficiency while focusing the gathered light upon the sensor, whereas Fukusyo teaches that the surface of an analogous lens can optionally be planar. Id. However, finds the Examiner, both lenses are performing the same operation of gathering and focusing incoming light upon the sensor. Id. Based on these findings, the Examiner concludes that, should an artisan of ordinary skill not require a “high convergence efficiency,” it would have been obvious to omit the upper curved surface and leave the upper surface planar, as demonstrated by Fukusyo, without destroying the primary function of the lens. Id. We agree with the Examiner. Both Kondo and Fukusyo teach the use of a lens to focus light upon a sensor. See Kondo, Figs. 1, 4; Fukusyo, Fig. 3. Although the convex lens taught by Fukusyo in Fig. 3 has a planarized surface, rather than the convex upper and lower surfaces of the lens taught by Kondo, the function of the lens, viz., to focus light upon the sensor, is the Appeal 2011-005348 Application 10/939,894 5 same in both references. We therefore determine that the Examiner did not err in combining the teachings of Kondo and Fukusyo. Issue 2 Appellants argue that the Examiner erred in combining Kondo and Fukusyo because Kondo teaches away from Appellants’ claimed invention. App. Br. 15. We therefore address the issue of whether the Examiner so erred. Analysis Appellants repeat the teachings of Kondo with respect to lens 120 related supra, and argue that Kondo therefore teaches away from having a surface that is planarized, as required by claim 12. App. Br. 15. The Examiner responds that, although not explicitly taught as a preferred embodiment, the combination of Kondo and Fukusyo nevertheless teaches the embodiment recited in claim 12. Ans. 8. The Examiner finds that examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. (citing In re Susi, 169 USPQ 423 (C.C.P.A. 1971). We are not persuaded by Appellants’ argument. A reference teaches away when “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants point to no teaching or suggestion of Kondo that would have discouraged or diverted an artisan of ordinary skill in the contemporary art from using a convex lens Appeal 2011-005348 Application 10/939,894 6 with a planarized surface, but argue only the fact that Kondo is silent with respect to this point. Such silence does not arise to the level of “teaching away.” See In re Dunn, 349 F.2d 433, 438 (C.C.P.A. 1965) (Teaching an alternative method does not teach away from the use of a claimed method). Issue 3 Appellants argue that the Examiner improperly employed hindsight in finding that the combination of Kondo and Fukusyo teaches or suggests the limitations of claim 1. App. Br. 17. We therefore address the issue of whether the Examiner so erred. Analysis Appellants argue that the Examiner failed to articulate a reasonable basis for combining the references in the same manner claimed to arrive at the claimed invention, but rather used the claimed invention as an instruction manual. App. Br. 17. Appellants repeat their argument, supra, that Kondo teaches away from their claimed invention. Id. According to Appellants, the Examiner’s proposed modification of Kondo’s lens 120 with Fukusyo’s alleged teachings is gleaned only from Appellants’ disclosure and not any disclosure of the cited references. App. Br. 16. Appellants argue further that none of the Examiner’s findings can be considered as a motivation disclosed or suggested by any of the cited prior art references, nor has the Examiner pointed to any extrinsic evidence that shows one skilled in the art would have been motivated to combine the cited references to arrive at the claimed invention. App. Br. 17. Rather, contend Appellants, the Examiner combined the components disclosed by Appeal 2011-005348 Application 10/939,894 7 the various cited references based solely on the Applicants’ claimed invention. Id. According to Appellants, the reasoning articulated by the Examiner is thus employed to arrive at the claimed invention and not because of any teaching or suggesting found within the various references. Id. Therefore, Appellants argue, the cited references on their own, or in combination, do not teach or suggest the various combinations found by the Examiner to arrive at the claimed invention. Id. The Examiner responds that it must be recognized that any judgment on obviousness is necessarily a reconstruction based, to a degree, upon hindsight reasoning. App. Br. 9. But, the Examiner finds, as long as such an analysis takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. Id. (citing In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971 ). We agree with the Examiner’s reasoning. We have explained supra why Kondo does not teach away from Appellants claimed invention, nor do Appellants argue that either Kondo or Fukusyo are improperly cited as non- analogous prior art references. Moreover, the Examiner concluded that should an artisan of ordinary skill “not require a ‘high convergence efficiency’ it would be obvious to omit the upper curved surface and leave the upper surface planar as demonstrated by Fukusyo without destroying the primary function of the lens.” Ans. 7. Therefore “one of ordinary skill in the art would have been motivated to look to alternative suitable methods of performing the disclosed lens shaping step of Kondo.” Ans. 6. We find that the Examiner has thus “articulated a rational underpinning to support Appeal 2011-005348 Application 10/939,894 8 the legal conclusion of obviousness” as required by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We consequently conclude that the Examiner did not improperly employ hindsight in combining the Kondo and Fukusyo references. Issue 4 Appellants argue that the Examiner erred because the Examiner failed to provide an objective reason to combine Kondo and Fukusyo to arrive at the claimed invention. App. Br. 19. We therefore address the issue of whether the Examiner so erred. Analysis Appellants argue that, because the Examiner concludes that the claimed invention is obvious because Kondo’s lens 120 and Fukusyo’s teaching of a planarized convex lens were well within the ordinary skill of the art at the time of the claimed invention, the Examiner’s obviousness conclusion is erroneously based solely upon the fact that individualized teachings or Kondo and Fukusyo were known in the art. App. Br. 19. Appellants contend that the Examiner therefore erred by failing to articulate some objective reason to combine the teachings of the references. Id. The Examiner responds that the rational for combining the references was provided along with the statement of obviousness. Ans. 9. We are not persuaded by Appellants’ argument. We have related supra that we find that the Examiner has articulated a rational underpinning to support the legal conclusion of obviousness. We therefore conclude that the Examiner did not err in this respect. Appeal 2011-005348 Application 10/939,894 9 Issue 5 Appellants argue that the Examiner erred because Fukusyo’s teaching of a planarized convex first lens would destroy the intended function of Kondo’s inner lens 120. App. Br. 19. We therefore address the issue of whether the Examiner so erred. Analysis Appellants essentially repeat their arguments with respect to Issue 1, supra. App. Br. 19-20. We have already related why the substitution of Fukusyo’s teaching of a planarized convex first lens would not alter the intended function of Kondo’s inner lens 120, i.e., to focus light on the sensor. Nor, based on the same reasoning, do we find that it would destroy the intended function of Kondo’s inner lens. We therefore conclude that the Examiner did not err in combining the teachings and suggestions of Kondo and Fukusyo. Issue 6 Appellants argue that the Examiner erred in finding that the combined cited prior art references teach or suggest the limitation of claim 12 reciting “a first Silicon Dioxide (SiO2) layer, located over the image sensing clement” and “a second SiO2 layer located directly on the second surface of the first lens.” App. Br. 22-23. We therefore address the issue of whether the Examiner so erred. App App Anal sepa App inter SiO2 seco prop 4a is imag (SiO a firs eal 2011-0 lication 10 ysis Appellan rate claim ellants arg layer insul layers loc nd surface er conside The Exa reproduce Schemat arrang The Exa e-sensing 2) layer [1 t index of 05348 /939,894 ts argue th elements t ue that, by ating laye ated over of the firs ration to a miner resp d below. ic cross se ed area of miner find element 6 05], locate refraction at the firs hat are po finding th r 105 corre the image t lens, resp ll the elem onds by p KOND ctional vie a solid sta second s that Kon 2, correspo d over the … and ha 10 t and seco sitively rec at Kondo’ sponds to sensing el ectively, t ents recite ointing to O FIG. 4 w showin te imaging embodim do’s SiO2 nds to cla image-se ving a cur nd silicon ited in cla s teaching claim 12’ ement and he Examin d in claim Figure 4A A g a partial device ac ent. layer 105, im 12’s fir nsing elem ved recess dioxide la im 12. Ap of a singl s first and directly o er failed t 12. Id. of Kondo area of a p cording to located o st “Silicon ent [62], e . Ans. 4. yers are p. Br. 23. e second n the o give . Figure ixel a ver the Dioxide xhibiting The App App Exam 12’s seco Kon layer requ Mor i.e., 1); a Mor disti 12. [105 of re eal 2011-0 lication 10 iner also limitation nd surface do’s layer s. We agre ires that th eover, laye (1) located nd (2) loca eover, Kon nct layers See, e.g., K Sche Figure 3 a], located fraction an 05348 /939,894 finds that reciting “a of the firs 105 meets e with the e two laye r 105 mee over the s ted directl do also te (105a and ondo’s Fi matic cro manufac G of Kon over the i d having layer 105 second S t lens.” Id claim 12’ Examiner rs be sepa ts the othe ensing ele y on the s aches emb 105b) that gure 3G. KOND ss sectiona turing a so do depicts mage sens a curved re 11 also meets iO2 layer [ . The Exa s requirem . Nothing rate, distin r requirem ment and urface of t odiments meet the o Figure 3G O FIG. 3 l views ill lid state im a “first Si ing clemen cess” and the requir 105] locat miner ther ents for fi in the lang ct, or disc ents of th having a c he first len in which la ther requ is reprodu G ustrating a aging de licon Diox t [62], ex a “a secon ements of ed directly efore find rst and sec uage of cl ontinuous. e two limit urved rece s (layer 2) yer 105 fo irements o ced below method o vice. ide (SiO2 hibiting a d SiO2 lay claim on the s that ond SiO2 aim 12 ations, ss (layer . rms two f claim : f ) layer first index er [105b] Appeal 2011-005348 Application 10/939,894 12 located directly on the second surface of the first lens [120]” as required by claim 12. We therefore conclude that the Examiner did not err in finding that the combination of Kondo and Fukusyo teach or suggest the limitations of claim 12. DECISION The Examiner’s rejection of claims 12-15, 18, 21, 22, and 24-32 under 35 U.S.C. § 103(a) is affirmed. 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ke Copy with citationCopy as parenthetical citation