Ex Parte Parks

Patent Trial and Appeal Board

Aug 27, 2018

14277144 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/277,144 05/14/2014 Christopher Parks
132167 7590 08/29/2018
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (PP)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TRU-llOUS 2119
EXAMINER
AKANBI, ISIAKA 0
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER PARKS 1
Appeal2018-001056
Application 14/277, 144
Technology Center 2800
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
DEBRA L. DENNETT, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
final rejection under 35 U.S.C. § 102(a)(l) of claims 1 and 3-21 as
anticipated by Kanai (US 2005/0117158 Al; publ. June 2, 2005). 2 We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant is the Applicant, Semiconductor Components Industries, LLC,
which is identified as the real party in interest (App. Br. 3).
2 The Examiner withdraws the final rejection of claims 1 and 16 under 35
U.S.C. § 112, second paragraph, as indefinite (Ans. 2).
Appeal2018-001056
Application 14/2 77, 144
Appellant claims an image sensor for measuring a refractive index of
a material 12 comprising a semiconductor substrate 14, an array 20 (see also
120) of pixels on a surface 18 of the substrate, a light source 24 configured
to emit light toward a substrate surface 16 exposed to (i.e., facing) the
material, wherein the array of pixels detects the light reflected by the
exposed surface for calculating the refractive index of the material
(independent claim 1, Fig. 1 (see also Fig. 6)). Appellant also claims a
corresponding method for measuring a refractive index of a material via an
array of pixels (remaining independent claim 16).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An image sensor for measuring a refractive index of a
material, said image sensor comprising:
a semiconductor substrate having an exposed surface for
facing the material and a second surface opposite said exposed
surface;
an array of pixels on said second surface of said
semiconductor substrate spaced from said exposed surface; and
a light source on said second surface of said
semiconductor substrate configured to emit light into said
semiconductor substrate toward said exposed surface to reflect
the light off said exposed surface toward said array of pixels
when the material is in contact with the exposed surface, wherein
said array of pixels detects the light reflected by said exposed
surface for calculating the refractive index of the material,
wherein said array of pixels is disposed on one side of said
semiconductor substrate and said exposed surface is disposed on
another side of said semiconductor substrate opposite the one
side.
Appellant does not present separate arguments specifically directed to
the dependent claims under rejection (App. Br. 16). As a consequence, the
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Appeal2018-001056
Application 14/2 77, 144
dependent claims will stand or fall with their parent independent claims, of
which claim 1 is representative.
In rejecting the independent claims as anticipated (Final Action 3-5),
the Examiner finds that the claimed array of pixels is satisfied by the
disclosures in either paragraphs 11 and 22 or paragraphs 6 and 7 of Kanai
(id. at 4).
The pivotal issue in this appeal as framed by Appellant's arguments is
whether the Examiner establishes a prima facie case for finding that Kanai
anticipatorily discloses a sensor having an array of pixels as required by the
independent claims.
Appellant argues that paragraphs 6 and 7 of Kanai refer to prior art
sensors constructed differently than the claimed sensor (App. Br. 13).
This argument is convincing particularly because the Examiner fails
to present findings that reveal how the prior art sensors of paragraphs 6 and
7 satisfy each of the sensor limitations required by the independent claims
(see generally Final Action and Ans.). See Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) ("[U]nless a reference discloses
within the four comers of the document not only all of the limitations
claimed but also all of the limitations arranged or combined in the same way
as recited in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.").
Appellant also contends that, "when describing the embodiment in
paragraphs [0011] and [0022], Kanai clearly refers to 'a photodiode' [rather
than the claimed array of pixels]" (App. Br. 13).
Appellant's contention is factually incorrect and unpersuasive. As
expressly found by the Examiner in the Final Office Action, "Kanai clearly
discloses [a] pixel array by [teaching] a receiving means as a photodiode
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Appeal2018-001056
Application 14/2 77, 144
array [par. 0022], and thus anticipates ... the array of pixels [as claimed]"
(Final Action 14; see also Kanai ,r 22 ("sensor 80 includes ... a receiving
means such as a photodiode array")). We emphasize that Appellant does not
address, and accordingly does not show error in, the Examiner's finding that
Kauai's paragraph 22 discloses a photodiode array, thereby, satisfying the
claim requirement for an array of pixels. We further emphasize that the
Examiner's finding is supported by the Specification disclosure "[t]he array
120 [of pixels] consists of photodiodes" (Spec. ,r 28).
In summary, Appellant fails to reveal error in the Examiner's finding
that paragraph 22 of Kanai discloses a photodiode array, which satisfies the
independent claim requirement for an array of pixels. For this reason alone,
the Examiner's§ 102(a)(l) rejection of the appealed claims is sustainable.
We add the additional comments for completeness and in the event of
further prosecution. In the Response to Argument section of the Answer, the
Examiner states that "each ... photodiode [ of Kanai] inherently includes
sensing areas that is [ sic, are] equivalent to pixels" (Ans. 6). Appellant does
not respond to this statement in the record before us (see generally Reply
Br.). If further prosecution occurs, this inherency issue should be addressed
and resolved by Appellant and the Examiner. The Examiner additionally
states that a photodiode array, and accordingly the claimed array of pixels,
"is considered as a combination of [photodiodes] 18 and 14 ... [ ofJ Kanai,
fig. 4" (Ans. 6). However, as correctly explained by Appellant, "the
combination ofphotodiodes 14 and 18 do[es] not form 'an array of pixels' as
recited in claim 1 ... because light received off [ sic, on] photodiode 18 is
received directly from EL element 12, not reflected off the exposed surface
[as claimed]" (Reply Br. 4).
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Appeal2018-001056
Application 14/2 77, 144
The decision of the Examiner 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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