Ex Parte Lenoble et al

Patent Trial and Appeal Board

Sep 26, 2017

13379508 (P.T.A.B. Sep. 26, 2017)

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.
13/379,508 04/23/2012 Damien Lenoble 81384653US04 2889
65913 7590 09/28/2017
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAMIEN LENOBLE and RADU SURDEANU1
Appeal 2017-002523
Application 13/379,508
Technology Center 1700
Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision finally rejecting claims
13—20, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify NXP B.V. as the real party in interest. App. Br. 3.
2 In our Decision, we refer to the Specification filed December 20, 2011
(“Spec.”); Final Office Action dated March 2, 2016 (“Final Act.”); Advisory
Action dated May 10, 2016 (“Adv. Act.”); Appeal Brief dated August 2,
2016 (“App. Br.”); Examiner’s Answer to the Appeal Brief dated October 4,
2016 (“Ans.”); and Reply Brief dated December 2, 2016.
Appeal 2017-002523
Application 13/379,508
The Claimed Invention
Appellants’ disclosure relates to an illumination detection system and
method in which a detector provides two different signals based on
responses to incident light absorbed within the detector over different
depths. Abstract; Spec. 1, 2. Independent claim 13 is illustrative of the
claimed subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief (App. Br. 16) (key disputed claim language
italicized and bolded and indentation added):
13. An illumination detection system, comprising:
an excitation radiation source of a first frequency;
and
a detector for detecting light of a second frequency
collected from an analysis region of a sample resulting
from the excitation,
wherein the detector is for generating first and
second detector signals, which are responsive to incident
light absorbed within the detector over different depths,
and wherein the system further comprises:
a processing device for processing the first and
second detector signals to discriminate between incident
light of the first and second frequencies and thereby
determine an intensity of the light of the second
frequency,
wherein the detector comprises a detector element
and a biasing element for setting different operating
conditions for the detector element to change an
absorption depth to which the detector responds,
wherein the detector comprises a single p-n junction and
wherein setting different operating conditions
comprises biasing the detector element to increase the
depth of the p-n junction to change the absorbed
wavelength from the ultraviolet spectrum to the visible
spectrum, wherein the single p-n junction is at a depth,
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Application 13/379,508
without biasing applied to the p-n junction, that is
centered to the ultraviolet spectrum.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Hopper et al., US 7,105,906 B1 Sept. 12,2006
(hereinafter “Hopper”)
Shepard et al., US 2008/0037008 Al Feb. 14, 2008
(hereinafter “Shepard”)
Hirt et al., DE 10228309 Al Jan. 22,2004
(hereinafter “Hirt”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 13—16, 19, and 20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hirt3 in view of Hopper
(“Rejection 1”). Ans. 2; Final Act. 2.
2. Claims 17 and 18 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hirt in view of Hopper as
applied to claims 13—16, 19, and 20 above, and further in view of Shepard
(“Rejection 2”). Ans. 4; Final Act. 4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
3 For each of the rejections on appeal, the Examiner refers and cites to the
English machine translation of the Hirt reference, docketed December 20,
2011.
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Application 13/379,508
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action, which we adopt as our own. We highlight and address
specific findings and arguments below for emphasis.
Rejection 1
Appellants argue claims 13—20 as a group. App. Br. 4. We select
independent claim 13 as representative of this group and the remaining
claims subject to this rejection stand or fall with claim 13. 37 C.F.R.
§41.37(c)(l)(iv).
The Examiner determines that the combination of Flirt and Hopper
suggests a system satisfying all of the limitations of claim 13 and thus,
would have rendered the claim obvious. Ans. 2-4 (citing Hirt || 8, 27, 28,
34—36, Figs. 2a, 2b; Hopper, col. 2,11. 9—26).
The Examiner finds that Hirt teaches or suggests the majority of the
limitations of claim 13, but that the reference is “silent on a biasing element
for setting different operating conditions for the detector element to change
an absorption depth to which the detector responds.” Ans. 3.
The Examiner, however, relies on Hopper for teaching this missing
limitation. Ans. 3. In particular, the Examiner finds that Hopper discloses a
wavelength tunable detector having a biasing means for setting different
adsorption depth of the p-n junction. Id. at 3 (citing Hopper, col. 2,11. 9—
26).
Based on the above findings, the Examiner concludes that:
At time of the invention it would have been obvious to one of
ordinary skill in the art to replace a detector having a plurality
of detector elements each having a p-n junction at a different
depth as disclosed in Hirt by a wavelength tunable
semiconductor detector with biasing means to set different
absorption depth of the p-n junction as disclosed by Hopper, as
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Application 13/379,508
an obvious alternative. The advantage would be a single
wavelength tunable detector instead of plurality of wavelength
detectors.
Ans. 3. The Examiner further explains that because:
Hirt discloses that wherein the absorbed wavelength is from the
ultraviolet spectrum to the visible spectrum . . ., a person
skilled in the art would have been motivated to set the single p-
n junction at a depth, without biasing applied to the p-n
junction, that to be centered to the ultraviolet spectrum (the
shortest wavelength), so that when biasing is applied to the p-n
junction to increase the adsorption depth of the p-n junction, the
uv-light (the shortest wavelength) will be the first absorbed by
the increased adsorption depth of the p-n junction.
Id. at 3 (citing Hirt 18; Hopper, col. 2,11. 20-22).
Appellants argue that the Examiner’s rejection should be reversed
because a prima facie case of obviousness has not been established. App.
Br. 5. In particular, Appellants argue that Hirt in view of Hopper does not
teach or suggest biasing a p-n junction to increase the depth of the p-n
junction to change the absorbed wavelength from the ultraviolet spectrum to
the visible light spectrum, as recited in claim 13. Id. at 6, 9, 11—13; see also
Reply Br. 2-4.
Appellants further argue that the Examiner’s obviousness analysis is
“conclusory” and “appears to rely on hindsight.” App. Br. 7, 9, 10; see also
Reply Br. 4. In particular, Appellants contend that:
the Examiner fails to explain why one of ordinary skill in the
art would be motivated to set the single p-n junction at a depth,
without biasing applied to the p-n junction, that to be centered
to the ultraviolet spectrum (the shortest wavelength), so that the
absorbed wavelength would change from the ultraviolet
spectrum (shortest wavelength) to the visible spectrum (longer
wavelength), when biasing is applied to the p-n junction to
increase the depth of the p-n junction.
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Application 13/379,508
App. Br. 9 (internal quotations omitted).
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we conclude that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination that the combination of Hirt and
Hopper suggests all of the limitations of claim 13 and would have rendered
the claim obvious. Hirt || 8, 27, 28, 34—36, Figs. 2a, 2b; Hopper, col. 2,11.
9-26.
Regarding the “biasing element” limitations of claim 13, as the
Examiner finds (Ans. 3, 5), Hopper teaches a wavelength tunable detector
having a biasing means for setting different adsorption depths of the p-n
junction and applying a reverse-biased voltage to increase the absorption
depth of the p-n junction to absorb the blue portion of the light spectrum so
that wavelengths longer than the blue portion of the light spectrum are
detected. Hopper, col. 2,11. 6—9 (disclosing that “blue photodiode 300 is
first reset by placing a reset voltage on n-type region 312 that reverse biases
the pn junction”), col. 2,11. 9—12 (“The reverse-biased voltage, which sets up
an electric field across the junction, increases the width of depletion region
314 so that the blue portion of the electromagnetic spectrum can be absorbed
in depletion region 314.”).
As the Examiner further finds (Ans. 5), Hopper also teaches resetting
the reverse-biased voltage so that all wavelengths, including the blue portion
of the light spectrum, are detected. Hopper, col. 2,11. 13—26. In particular,
Hopper discloses that
Once photodiode 300 is reset, photodiode 300 is then exposed
to a source of electromagnetic radiation for an integration
period. When photodiode 300 is struck by electromagnetic
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Application 13/379,508
radiation during the integration period, the radiation penetrates
into the semiconductor material down to an absorption depth
that depends on the wavelength of the radiation.
Hopper, col. 2,11. 13—19; see also id. at col. 2,11. 20—22 (disclosing that
“blue light has an absorption depth of approximately 0.7 microns, while red
light has an absorption depth of approximately 1.2 microns”).
Appellants’ argument reveals no reversible error in the Examiner’s
factual findings and analysis in this regard.
Moreover, Appellants fail to present any evidence that Hopper’s
biasing element would not be capable of “biasing the detector element to
increase the depth of the p-n junction to change the absorbed wavelength
from the ultraviolet spectrum to the visible spectrum,” as recited in claim 13.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Contrary to what Appellants argue, the Examiner does provide a
reasonable basis and identifies a preponderance of the evidence in the record
to evince why one of ordinary skill would have combined the teachings of
the references to arrive at Appellants’ claimed invention. Ans. 3, 5—7; Hirt |
8; Hopper, col. 2,11. 20—22. See also KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007) (explaining that any need or problem known in the art
can provide a reason for combining the elements in the manner claimed).
As the Examiner explains (Ans. 7), because employing Hopper’s
wavelength tunable detector with biasing voltage to set different absorption
depth of a p-n junction was a known technique in the art and utilizing Hirt’s
illumination detection system with a p-n junction was a known device in the
art, it would have been obvious to combine the teachings of Hirt and Hopper
to arrive at the system recited in claim 13. KSR, 550 U.S. at 416 (“The
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Application 13/379,508
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
We do not find Appellants’ assertions that the Examiner’s
obviousness analysis is “conclusory” (App. Br. 7, 9) and “appears to rely on
hindsight” {id. at 10) persuasive because without more, such arguments are
insufficient to establish reversible error in the Examiner’s conclusion and
findings. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claims 13—16, 19,
and 20 under 35 U.S.C. § 103(a) as obvious over the combination of Hirt
and Hopper.
Rejection 2
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejection 2, stated above. Rather, Appellants
rely on the same arguments presented above in response to the Examiner’s
Rejection 1 regarding claim 13 and the combination of Hirt and Hopper. See
App. Br. 4, 14.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm Rejection 2.
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DECISION
The Examiner’s rejections of claims 13—20 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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
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