Ex Parte Nishi et al

Patent Trial and Appeal Board

Apr 27, 2017

12546725 (P.T.A.B. Apr. 27, 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.
12/546,725 08/25/2009 Kazuo Nishi 12732-0224002 3914
26171 7590 05/01/2017
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
TRAN, TONY
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUO NISHI, YU YAMAZAKI, TOMOYUKIIWABUCHI,
and KEISUKE MIYAGAWA
Appeal 2016-003286
Application 12/546,7251
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1—24.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
BACKGROUND
1 The Applicants (hereinafter “Appellants”) state that the real party in
interest is “Semiconductor Energy Laboratory Co., Ltd.” (Appeal Brief filed
on July 31, 2015, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 4—7; Reply Brief filed on February 4, 2016, hereinafter “Reply
Br.,” 1^4; Final Office Action (notice emailed on January 26, 2015),
hereinafter “Final Act.,” 2—12; Examiner’s Answer (notice emailed on
December 4, 2015), hereinafter “Ans.,” 2—5.
Appeal 2016-003286
Application 12/546,725
The subject matter on appeal relates to a photodetector, which may be
incorporated into a portable communication tool (e.g., a portable telephone),
for the purpose of adjusting the visibility of the tool’s display (Specification,
hereinafter “Spec.,” 1,11. 10—14; 2,11. 14—18; and 3,11. 16—21). Figure 1 of
the application is illustrative of the invention and is reproduced below:
Figure 1 above shows a photodetector including: a substrate 101; a first
transparent electrode 102; a wiring 103 connected to the first transparent
electrode; a first semiconductor film 104; a metal electrode (negative
polarity) 105; a wiring 106 connected to the metal electrode 105; a second
semiconductor film 107; a second transparent electrode (negative polarity)
108; a wiring 109 connected to the second transparent electrode 108; and
organic resin 110 (Spec. 17,1. 15—18,1. 6). According to the Appellants,
elements 102, 103, 104, 105, and 106 constitute a first detector element,
which detects the brightness of light 310 irradiated on a first display portion,
and elements 102, 103, 107, 108, and 109 constitute a second detector
element, which detects the brightness of light 311 irradiated on a second
display portion (id.; 18,1. 23—19,1. 2). Specifically, the Appellants explain
that “the metal electrode 105 has a function for shutting off the light” and
2
Appeal 2016-003286
Application 12/546,725
“[therefore, light (intensity of illumination) irradiated [on] one display
portion only is detected” {id. at 19,11. 2—4).
Representative claim 1 is reproduced from page 8 of the Appeal Brief
(Claims Appendix), with key disputed limitations highlighted in italicized
text and bracketed drawing reference numerals added, as follows:
1. A photodetector comprising:
a substrate [101];
a first electrode [105] over the substrate [101];
a first semiconductor film [107] over the first electrode
[105];
a second electrode [108] over the first semiconductor film
[107];
an insulating film [110] over the second electrode [108],
the insulating film comprising an organic resin;
a first wiring [106] over the insulating film [110], wherein
the first wiring [106] is in direct contact with the first electrode
[105]; and
a second wiring [109] over and in direct contact with a top
surface of the insulating film [110], wherein the second wiring
[109] is in direct contact with the second electrode [108],
wherein the first electrode [105] is capable of shielding
light, so that the photodetector does not detect light passing
through the first electrode [105].
The other independent claims on appeal (i.e., claims 2—4) recite similar
subject matter.
REJECTION ON APPEAL
On appeal, the Examiner maintained a rejection under pre-AIA 35
U.S.C. § 103(a) of claims 1—24 as unpatentable over Forrest et al.3
3 US 7,151,217 B2, issued on December 19, 2006.
3
Appeal 2016-003286
Application 12/546,725
(hereinafter “Forrest”) in view of Kuroda et al.4 (hereinafter “Kuroda”)
(Ans. 2—5; Final Act. 2—12).
DISCUSSION
A dispositive issue in this appeal is whether the Examiner’s finding
that Forrest describes the disputed limitation highlighted above in
representative claim 1 constituted reversible error.5 Specifically, the
Examiner’s position is based on the finding that Forrest’s element 702a (Fig.
7) or element 802a (Fig. 8A) describes the disputed limitation (Final Act. 3;
Ans. 3). For the reasons stated in the Appeal Brief and below, we agree with
the Appellants that the Examiner’s finding is not supported.
Forrest discloses a photosensitive optoelectronic device having at least
two transparent electrodes and one or more organic photoconductive layers
disposed between the transparent electrodes (Abstract; col. 10,11. 23—24).
According to Forrest, these devices containing transparent electrodes may
be used as a solar cell, a photodetector, or a photocell (col. 10,11. 44-46).
Contrary to the Examiner’s finding, neither element 702a nor element 802a
is disclosed or suggested as a material “capable of shielding light, so that the
photodetector does not detect light passing through the first electrode” as
required by claim 1. Rather, Forrest teaches plainly that these electrodes are
either transparent or semi-transparent (col. 21,11. 42-43; col. 22,1. 9-col. 23,
1. 44).
4 US 6,351,369 Bl, issued on February 26, 2002.
5 Compare the Examiner’s findings in the Final Office Action (Final Act. 3)
with the Appellants’ argument in the Appeal Brief (Appeal Br. 4—5).
4
Appeal 2016-003286
Application 12/546,725
In response to the Appellants’ argument, the Examiner states—
without citing to any description in Forrest—that Forrest’s Figures 7 and 8A
show devices that detect light from the top down but not from the bottom up
through the substrate 701 or 801 (Ans. 3). Even if we assume that the
Examiner’s statement is factually correct, it fails to establish that Forrest
describes the capability of the first electrode to shield light, as required by
claim l.6
For these reasons, we cannot sustain the Examiner’s rejection.
SUMMARY
The Examiner’s final decision to reject claims 1—24 is reversed.
REVERSED
6 The Examiner’s findings concerning the other independent claims are
flawed for the same or similar reasons.
5