Sensors Unlimited, Inc.

Patent Trials and Appeals Board

Oct 6, 2020

2019005541 (P.T.A.B. Oct. 6, 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.
14/198,923 03/06/2014 John Tagle 71866US02 (U380431US2) 9833
114172 7590 10/06/2020
Cantor Colburn LLP - Power Controls,
Sensing Systems
20 Church Street
22nd Floor
Hartford, CT 06103-3207
EXAMINER
LIU, BENJAMIN T
ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
10/06/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN TAGLE, DMITRY ZHILINSKY, and MICHAEL LILAND
Appeal 2019-005541
Application 14/198,923
Technology Center 2800

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
LILAN REN, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–5, 7–12, and 14–17.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed March 6, 2014 (“Spec.”); Final Office Action dated August 3, 2018
(“Final Act.”); Appeal Brief filed January 4, 2019 (“Appeal Br.”); and
Examiner’s Answer dated April 12, 2019 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Sensor
Unlimited Inc. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-005541
Application 14/198,923

2
CLAIMED SUBJECT MATTER
The invention relates “to packaging for a focal plane array device
including a photodiode array and a read out integrated circuit.” Spec. ¶ 2.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An image sensor, comprising:
a package substrate comprising a recess and a raised
pedestal of the package substrate within the recess extending
from a base of the recess;
a read out integrated circuit (ROIC) physically attached
to the raised pedestal;
a photodiode array (PDA) physically attached to the
ROIC and electrically coupled therewith;
a printed circuit board (PCB) within the recess in the
package substrate, wherein the PCB has an opening therein and
the raised pedestal at least partially extends through the opening
in the PCB; and
a plurality of bond wires that electrically couple the PCB
to the ROIC, wherein the PDA is flip chip mounted to the
ROIC and the plurality of bond wires are electrically coupled to
the PDA through the ROIC.
Appeal Br. 10 (Claims App.). Claim 8, the only other appealed, independent
claim, recites a method of forming an image sensor. Id. at 11.
REJECTIONS
1. Claims 1, 2, 7–9, 14, and 15 are rejected under 35 U.S.C. § 103
as unpatentable over Tokiwa (JP 2007-049369 (A), published February 22,
2007, English translation) in view of Kalliopuska (US 2014/0284752 A1,
published September 25, 2014).
Appeal 2019-005541
Application 14/198,923

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2. Claims 3 and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Tokiwa in view of Kalliopuska and Lee (US 5,379,187,
issued Jan. 3, 1995).
3. Claims 4, 5, 11, and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Tokiwa in view of Kalliopuska and Kinsman (US
2013/0221470 A1, published Aug. 29, 2013).
4. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable
over Tokiwa in view of Kalliopuska and Tseng (US 2005/0099532 A1,
published May 12, 2005).
5. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable
over Tokiwa in view of Kalliopuska and Shiu (US 2005/0156301 A1,
published July 21, 2005).
OPINION
As to independent claims 1 and 8, the Examiner found that Tokiwa
discloses an image sensor and a method of forming an image sensor as
claimed except for “a plurality of bond wires that electrically couple the
PCB to the ROIC, wherein the PDA is flip chip mounted to the ROIC and
the plurality of bond wires are electrically coupled to the PDA through the
ROIC.” Final Act. 2, 4. The Examiner determined that the ordinary artisan
would have formed Tokiwa’s image sensor with Kalliopuska’s flip chip
mount “to keep short the signal paths between the sensor volume and the
read-out element,” and would have replaced Tokiwa’s terminals with
Kalliopuska’s wirebond “to provide an electrical connection that is both
cost-effective and flexible.” Id. at 3, 5.
The Appellant argues that the Examiner reversibly erred in finding
that the ordinary artisan would have had a reason to combine Tokiwa and
Appeal 2019-005541
Application 14/198,923

4
Kalliopuska. The Appellant argues that “Tokiwa already teaches a wiring
layer connected to the solid state image pick up device 33,” and the ordinary
artisan would not have reworked and replaced Tokiwa’s wiring layer and
contacts with Kalliopuska’s bond wires as this would cause the signal paths
to lengthen. Appeal Br. 5 (internal quotation mark omitted). The Appellant’s
argument is not persuasive because it fails to address the Examiner’s fact
finding and reasoning. As explained by the Examiner, the rejection is based
on replacing Tokiwa’s solid state image pickup device 33 with a flip chip in
view of Kalliopuska’s disclosure that “[f]lip chip bonding may be generally
preferred as the signal paths between the sensor volume 202 and the read-out
element 204 are kept short therewith.” Ans. 3–4 (quoting Kalliopuska ¶ 46).
The Appellant also argues that adding Kalliopuska’s bond wires
would permanently connect Tokiwa’s sensor package 22 to contacts 41, 68
or wiring layer 24, thereby changing Tokiwa’s principle of operation by
eliminating the image sensor’s modular nature and structure. Id. at 5–6. This
argument is not persuasive because it is not supported by Tokiwa’s
disclosure. More specifically, the Appellant has not refuted the Examiner’s
finding that Tokiwa’s discussion of modularity relates to only the “freely
attachable/detachable” connection of lens unit 4 to camera body 3. Ans. 4
(quoting Tokiwa ¶ 13). The Appellant has not presented arguments or
evidence to refute the Examiner’s finding as to the advantages of wirebonds
over the pressed contact terminals used by Tokiwa. See Ans. 4–5 (citing
Tokiwa ¶ 29).
In sum, we are not convinced of reversible error in the Examiner’s
obviousness rejection as to claims 1 and 8.
Appeal 2019-005541
Application 14/198,923

5
Claim 2 depends from claim 1 and requires that the image sensor
comprise “an encapsulation layer that environmentally seals a surface of the
PCB within the package substrate.” Appeal Br. 10 (Claims App.). Claim 9
depends from claim 8 and includes a similar limitation. See id. at 12. The
Appellant argues that the Examiner reversibly erred in finding that Tokiwa
discloses or suggests an encapsulation layer as claimed. Appeal Br. 7.
As to the claim 2 and claim 9 limitations, the Specification describes
filling recess 12 with a dielectric encapsulation layer, such as resin
encapsulation layer 52, and that “[t]he encapsulation layer may
environmentally seal at least a surface of the PCB 20, the ROIC 42 and the
PDA 46 within the package substrate 10.” Spec. ¶ 46. The Specification
further discloses that encapsulation layer 52 may physically contact an
optically transparent window or lid 48 attached to the upper surface of PDA
46 using, for example, a glass frit or another optically transparent adhesive.
Id.
The Examiner found that Tokiwa describes covering mounting board
24 with attachment component 23. Ans. 6. The Examiner found that
attachment component 23 “is sealed at the outer edges with the mount base
50 and at the inner edges with the glass cover 30 in order to create a seal
enclosing the surface of the mounting board 24,” and “cover glass 30 of
figure 7 of Tokiwa joins with the frame member 29 in order to seal the solid
state image pickup device 33 to form the image sensor package 22.” Id.
(citing Tokiwa ¶ 20). The Examiner further found that Tokiwa describes
pressing image sensor package 22 toward attachment component 23 to
create a seal along peripheral edge part 40 in attachment component 23 (id.
(citing Tokiwa ¶ 21)), thereby “creat[ing] an enclosure that closes access to
Appeal 2019-005541
Application 14/198,923

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air or moisture coming from the direction of the lens and thus forms an
encapsulation layer environmentally sealing a surface of the mounting
board 24” (id.).
Although the Specification describes the encapsulation layer as filling
recess 12 (Spec. ¶ 46), the Appellant has not identified, nor do we find, any
Specification disclosure that supports limiting claims 2 and 9 to an
encapsulation layer having the specific structure described in Specification
paragraph 46. The Appellant has not explained sufficiently why it was
erroneous or unreasonable for the Examiner to find that Tokiwa’s Figure 7
and paragraphs 20 and 21 describe the claimed encapsulation layer that
environmentally seals a surface of a PCB. See Appeal Br. 7 (arguing that
Tokiwa’s attachment component 23 is not described as an encapsulation
layer and “is at best a board” and that glass cover 30 seals only sensor 33).
Accordingly, we are not persuaded of reversible error in the
Examiner’s rejection of claims 2 and 9.
Claim 3 depends from claim 2 and requires that the image sensor
comprise “an electrical connector electrically coupled to the PCB, wherein
the electrical connector extends from the circuit board through the
encapsulation layer to provide an external package electrical connection
to the PCB.” Appeal Br. 10 (Claims App.). Claim 10 depends from claim 9
and includes a similar limitation. See id. at 12. The Examiner determined
that the ordinary artisan would have “form[ed] the solid state pickup device
of Tokiwa with external leads extending from a leadframe as taught in Lee
in order to provide an external electrical connection to the integrated
circuit die.” Final Act. 6.
Appeal 2019-005541
Application 14/198,923

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The Appellant argues that “[t]he leads of a lead frame as cited in Lee
are not at all an electrical connector as the Applicant has claimed.” Appeal
Br. 8. The Appellant argues that “[i]t is well understood in the art that
electrical connections are not necessarily an electrical connector.
Furthermore, the leads of a lead frame as taught by Lee would not and could
not be reasonably combined with the other cited references to arrive at the
Applicant’s claims.” Id.
The Specification discloses that “external package electrical
connection to internal device electronics such as the PDA 46, the ROIC 42,
and the PCB 20 may be performed using either first connector 26, second
connector 30, or both.” Spec. ¶ 47. Figure 5 is described as depicting first
connector 26 electrically coupled to PCB 20 and extending from a first
device surface through encapsulation layer 52, thus providing an external
package electrical connection to PCB 20. Id. Given this disclosure, the
Examiner had a reasonable basis for finding that Lee teaches an electrical
connector as recited in claims 3 and 10 “because [Lee’s leads] provide an
electrical connection between the die and an external signal or power
sources.” Ans. 6. The Appellant’s arguments to the contrary are not
supported by persuasive evidence.
In sum, we are not convinced of reversible error in the Examiner’s
rejection of claims 3 and 10.
As to the rejections of the remaining appealed claims, the Appellant
contends that these claims are patentable for the same reasons argued in
support of patentability of independent claims 1 and 8. See Appeal Br. 8.
Because we do not find the Appellant’s arguments persuasive of reversible
error in the Examiner’s rejection of claims 1 and 8, we also are not
Appeal 2019-005541
Application 14/198,923

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persuaded of reversible error in the rejections of dependent claims 4, 5, 7,
11, 12, and 14–17.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 7–9,
14, 15
103 Tokiwa, Kalliopuska 1, 2, 7–9,
14, 15

3, 10 103 Tokiwa, Kalliopuska,
Lee
3, 10
4, 5, 11,
12
103 Tokiwa, Kalliopuska,
Kinsman
4, 5, 11,
12

16 103 Tokiwa, Kalliopuska,
Tseng
16
17 103 Tokiwa, Kalliopuska,
Shiu
17
Overall
Outcome

1–5, 7–
12, 14–17

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).
AFFIRMED