Muriel Cohen et al.

Patent Trials and Appeals Board

Apr 8, 2020

14263630 - (D) (P.T.A.B. Apr. 8, 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.
14/263,630 04/28/2014 Muriel Cohen 880001-5748-US00 5342
134795 7590 04/08/2020
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
NADAV, ORI
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
DCipdocket@michaelbest.com
sbjames@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MURIEL COHEN, FRED BRADY, THOMAS R. AYERS, and
SUNGIN HWANG1
____________

Appeal 2019-000008
Application 14/263,630
Technology Center 2800
____________

Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to digital image sensors and
image sensing devices. E.g., Spec. ¶ 1; Claim 1. Claim 1 is reproduced

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real parties in interest as Sony
Corporation and Pixim, Inc. Appeal Br. 3.
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below from page 16 (Appendix A) of the Appeal Brief (some paragraph
breaks added):
1. An image sensing device comprising:
a photodiode including:
a contiguous photodiode region of a first dopant type, the
photodiode region configured to convert incident light into a
pixel signal and including
a shallow photodiode sub-region and
a first deep photodiode sub-region,
wherein a length of the shallow photodiode sub-region is
larger than a length of the first deep photodiode sub-region;
a shallow depleting region of a second dopant type; and
a deep depleting region of the second dopant type,
wherein the deep depleting region surrounds the first deep
photodiode sub-region on at least two opposite sides,
wherein the second dopant type is of opposite dopant type to the
first dopant type.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1–11 under 35 U.S.C. § 112(a) for lack of enablement.
Final Act. 2.
2. Claims 1–11 under 35 U.S.C. § 112(b) for indefiniteness. Final
Act. 3.
3. Claims 1, 2, and 6–10 under 35 U.S.C. § 103 as unpatentable over
Nagaraja (US 9,029,972 B2, issued May 12, 2015, and published Mar. 27,
2014) or Hynecek (US 8,274,587 B2, issued Sept. 25, 2012). Final Act. 4.
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4. Claims 3–5 under 35 U.S.C. § 103 as unpatentable over “Nagaraja
[] and Hynecek [], each in view of Abe [(US 2001/0054726 A1, published
Dec. 27, 2001)].” Final Act. 7.2
5. Claim 11 under 35 U.S.C. § 103 as unpatentable over “Nagaraja []
and Hynecek [], each in view of Rhodes [(US 2009/0173975 A1, published
July 9, 2009)].” Final Act. 9.
ANALYSIS
Rejection 1
“[E]nablement requires that the specification teach those in the art to
make and use the invention without undue experimentation.” In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner determines that claim 1 fails to comply with the
enablement requirement because it recites a “photodiode region of a first
dopant type, the photodiode region configured to convert incident light into
a pixel signal.” Final Act. 2–3 (emphasis added). The Examiner interprets
that language as requiring that the “photodiode region” is a single dopant
type, and that the photodiode region alone actually converts incident light
into signals. Id. The Examiner finds that it is impossible for such a
conversion to occur absent a PN junction and, therefore, that it is impossible
for such a conversion to occur in a region of a single dopant type, as
claimed. Id.

2 Notwithstanding the Examiner’s statement that Rejections 4 and 5 are over
“Nagaraja [] and Hynecek []” (emphasis added), we understand Rejections 4
and 5, like Rejection 3, to be relying on Nagaraja or Hynecek individually in
combination with Abe (Rejection 4) or Rhodes (Rejection 5), and that the
Examiner is not relying on Nagaraja in combination with Hynecek.
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The Examiner’s rationale is not persuasive essentially for reasons
stated by the Appellant. See Appeal Br. 7–8; Reply Br. 3–5. Namely, the
claims do not require that a photodiode region of a single dopant type alone
actually operate to convert incident light into a pixel signal; the claims
require only that the photodiode region of a first dopant type be “configured
to convert incident light into a pixel signal.” That language encompasses,
e.g., a photodiode region of a single dopant type that is configured to convert
incident light into a pixel signal when operating in combination with the
other elements of the image sensing device, such as the claimed depleting
regions of a second dopant type. The Examiner does not adequately
establish that undue experimentation would be required for a person of
ordinary skill in the art to “configure” a photodiode region of a first dopant
type, in combination with other elements of the imaging sensing device, to
convert incident light into a pixel signal. As the Appellant explains, “[i]f the
photodiode region, the shallow depleting region, and the deep depleting
region all convert incident light into a signal . . . then it necessarily follows
that the photodiode region is configured to convert incident light into a
signal.” Reply Br. 5.
We reverse the Examiner’s enablement rejection.
Rejection 2
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994).
The Examiner determines that the terms “shallow depleting region”
and “photodiode region” render the claims indefinite because the claims “are
unclear as to the structural relationship” between those regions and the
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claimed device. Final Act. 3. In the Examiner’s Answer, the Examiner
explains that because, in the claims, those regions are “not structurally
connected to any other element in the claimed device,” “claim 1 fails to
particularly point out the claimed subject matter.” Ans. 5.
The Examiner’s rationale is not persuasive essentially for reasons
stated by the Appellant. See Appeal Br. 8–9. Namely, “the structural
relationship is one of inclusion.” Id. at 9. In other words, claim 1 requires
that the photodiode include, inter alia, a photodiode region and a shallow
depleting region. The fact that claim 1 does not specify the precise
structural arrangement of the photodiode region and the shallow depleting
region renders the claim broad, not indefinite. See In re Miller, 441 F.2d
689, 693 (CCPA 1971) (“[B]readth is not to be equated with
indefiniteness . . . .”). On this record, the Examiner has not adequately
established that a person of ordinary skill in the art would have found the
claims unclear on the basis of the terms identified by the Examiner.
We reverse the Examiner’s indefiniteness rejection.
Rejection 3
The Appellant argues the claims subject to Rejection 3 as a group.
We select claim 1 as representative, and the remaining claims subject to
Rejection 3 will stand or fall with claim 1.
Rejection based on Nagaraja. Relying on Figure 3 of Nagaraja, the
Examiner finds that Nagaraja teaches an image sensing device comprising
each element of claim 1 except that (1) Nagaraja does not expressly state
that regions 48 and 42, which the Examiner identifies respectively as the
shallow and deep depleting regions, are “depleting” regions, and
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(2) Nagaraja does not expressly state that the photodiode region is
configured to convert incident light into a pixel signal. Final Act. 4–5.
In the Final Action, the Examiner states that it would have been
obvious “to form regions 48 and 42 as depletion regions and to configure the
photodiode region to convert incident light into a pixel signal in Nagaraja’s
device in order to operate the device in its intended use.” Final Act. 5. In
the Answer, the Examiner indicates that the Examiner is not actually
proposing a modification to Nagaraja because Nagaraja’s “shallow and deep
regions 48 and 42 are depleting regions,” (emphasis added), and at least
certain regions (e.g., region 50 or 54) of Nagaraja’s photodiode convert
incident light into a pixel signal, even if other regions (e.g., region 48) do
not. Ans. 7–10.
In view of those and other findings less material to the issues raised
by the Appellant, the Examiner concludes that the subject matter of claim 1
would have been obvious.
The Appellant argues that “configuring Nagaraja sub-regions 50 and
54 [to convert incident light into a signal] would destroy Nagaraja’s device
for its intended use.” Appeal Br. 10. More specifically, the Appellant
argues that Nagaraja includes both an anti-blooming diode and a photodiode,
and that configuring Nagaraja’s anti-blooming diode (which includes region
48) to convert incident light into a signal would destroy its purpose of
preventing blooming. Id. at 10–11.
That argument is not persuasive. The Appellant does not persuasively
dispute that Nagaraja’s Figure 3 depicts an image sensing device comprising
each structural element of claim 1; i.e., (1) a photodiode region of a first
dopant type that includes a shallow photodiode sub-region and a deep
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photodiode sub-region, (2) a shallow depleting region of a second dopant
type, and (3) a deep depleting region of a second dopant type. See Final
Act. 4 (identifying structural elements of Nagaraja’s image sensing device).
As the Examiner explains in the Answer, the mere fact that Nagaraja’s
region 48 may operate as an anti-blooming diode when a certain saturation
point is reached fails to show reversible error in the Examiner’s
determination that other portions of Nagaraja’s structure, including
photodiode region 50/54, are configured to convert incident light into a pixel
signal. See Ans. 8–10.
To the extent that the Appellant argues that Nagaraja’s region 48
(which the Examiner identifies as the shallow depleting region, see Final
Act. 4) is not part of Nagaraja’s photodiode, and therefore that Nagaraja
Figure 3 fails to disclose a photodiode that includes a shallow depleting
region, see Appeal Br. 10–11; Reply Br. 4 (noting that Nagaraja describes
the anti-blooming diode as “adjacent to the photodiode”), it is unclear how
Nagaraja’s structure differs from the Appellant’s structure in a way that
distinguishes Nagaraja’s structure from the structure of claim 1.
Notwithstanding Nagaraja’s description of the anti-blooming diode as being
“coupled to” or “adjacent to” a photodiode, e.g., Nagaraja at Abstract, 2:15–
17, 3:55–56, Nagaraja depicts the elements of anti-blooming drain 32 (i.e.,
regions 48 and 50) as having the same structural relationship to Nagaraja’s
photodiode as the Appellant claims and depicts. Compare Nagaraja Fig. 3,
with Spec. Fig. 5.
In particular, the Examiner identifies region 48 of Nagaraja’s Figure 3
as the shallow depleting region, which sits directly atop region 50, which the
Examiner identifies as the shallow photodiode sub-region. Final Act. 4. The
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Appellant likewise depicts shallow depleting region 501 as sitting directly
atop shallow photodiode sub-region 502. See Spec. Fig. 5. Nagaraja’s
shallow photodiode sub-region 50 is depicted as directly abutting both
region 42 (which the Examiner identifies as the deep depleting region) and
region 54 (which the Examiner identifies as the deep photodiode sub-
region), while the Appellant similarly depicts shallow photodiode sub-region
502 as directly abutting deep depleting region 505 and deep photodiode sub-
region 503. Compare Nagaraja Fig. 3, with Spec. Fig. 5. Thus, to the extent
Nagaraja describes region 48 as “coupled to” or “adjacent to” other aspects
of its structure, it appears that the structure of the Appellant’s Figure 5 could
be described in the same way. It is unclear why Nagaraja’s structure falls
beyond the scope of claim 1 merely because Nagaraja describes its anti-
blooming diode as being coupled to or adjacent to its photodiode. Cf.
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed.
Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device
does.”).
On this record, the structures appear to be the same in respects that are
relevant to the patentability of claim 1, and there does not appear to be a
meaningful dispute that at least some components of Nagaraja’s photodiode
region are configured to convert incident light into a pixel signal.
Accordingly, we are not persuaded of reversible error in the Examiner’s
rejection based on Nagaraja. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”).
Rejection based on Hynecek. Relying on Figure 2 of Hynecek, the
Examiner finds that Hynecek teaches an image sensing device comprising
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each element of claim 1 except that “Hynecek does not state that the
photodiode region is configured to convert incident light into a pixel signal.”
Act. 5–6. The Examiner finds, however, that it would have been obvious “to
configure the photodiode region to convert incident light into a pixel signal
in Hynecek’s device in order to operate the device in its intended use.” Id. at
6.
Of particular relevance to the issues raised by the Appellant in this
appeal, the Examiner finds that Hynecek’s element 224 (Fig. 2) constitutes
both the shallow photodiode sub-region and the deep photodiode sub-region
of claim 1. Id. at 5–6. In the Answer, the Examiner provides the following
cropped, annotated version of Hynecek’s Figure 2.

Ans. 16. The cropped, annotated version of Hynecek’s Figure 2, above,
which depicts n-type doped region 224, illustrates the Examiner’s finding
that, because element 224 is elliptical in shape, certain shallower sub-regions
(i.e., towards the middle of the elliptical figure) have lengths that are greater
than the lengths of the deeper sub-regions. Id. at 11–13, 15–16.
In the Appeal Brief, the Appellant argues that Hynecek’s element 224
is “a monolithic structure,” that Hynecek does not explicitly describe
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element 224 as having shallow and deep sub-regions, and that the elliptical
shape (i.e., “rounded corners”) of Hynecek are insufficient to show a
shallow sub-region with a length greater than a deeper sub-region because
“patent drawings do not define the precise proportions of the elements.”
Appeal Br. 12 (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1351
(Fed. Cir. 2013)).
Those arguments are not persuasive of reversible error. The
Appellant identifies no portion of claim 1 that might preclude the shallow
and deep photodiode sub-regions from being part of a monolithic structure.
On the contrary, the claim recites a “photodiode region” that
“includ[es] . . . sub-region[s].” Particularly under the claim construction
standard applicable to this proceeding (broadest reasonable construction
consistent with the specification, see In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007)), the Appellant provides no persuasive
reason that the Examiner’s identification of Hynecek’s element 224 as a
“photodiode region” having shallow and deep “sub-regions” constitutes
reversible error. See Jung, 637 F.3d at 1365.
As to the lengths of the sub-regions, in the Answer, the Examiner
explains that the Examiner’s reasoning is not inconsistent with case law
concerning drawings because the Examiner is not relying on the drawings to
show “precise” proportions, but, rather, is relying on the drawings “to teach
the general shape of element 224,” such as an “elliptical shape.” Ans. 13.
The Examiner explains that, even if a person of ordinary skill in the art
would not seek to ascertain precise proportions from Hynecek’s drawings, a
person of ordinary skill in the art would reasonably infer from the drawings
that an elliptical shape, or a shape in which “the middle part of element 224
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is larger than a length of the bottom part,” is suitable for the photodiode
region. Id. (citing In re Wright, 193 USPQ 332 (CCPA 1977)).
Although the Appellant files a Reply Brief, the Appellant does not
contest the Examiner’s additional findings in the Answer (and described
above) concerning Hynecek. On this record, we discern no basis to reject
those findings. See Jung, 637 F.3d at 1365. Accordingly, we are not
persuaded of reversible error in the Examiner’s rejection based on Hynecek.
Rejection 4
Claim 3. Claim 3 depends from claim 1 and recites “wherein a depth
of the first deep photodiode sub-region is substantially equal to a depth of
the deep depleting region.”
In the Final Action, the Examiner finds that Abe Figure 10 discloses a
first deep photodiode sub-region that is substantially equal in depth to a
depleting region. Final Act. 7–8. The Examiner finds that it would have
been obvious to modify Nagaraja and Hynecek to have regions with depths
falling within the scope of claim 3 “in order to simplify the processing steps
of making the device and in order to optimize the device characteristics.” Id.
at 8.
In the Appeal Brief, the entirety of the Appellant’s argument is as
follows: “The Examiner has made no finding as to which device
characteristics would be improved or optimized, how these characteristics
would be so improved or optimized, or why one of ordinary skill would have
reasonably expected this to be true.” Appeal Br. 13.
In the Answer, the Examiner finds that the thickness and depth of the
various layers of a semiconductor are well known to affect the
characteristics of a semiconductor, including its sensitivity to different
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wavelengths of light. Ans. 14–15 (citing Abe ¶¶ 66, 68). The Examiner
finds that it would have been obvious to optimize the thickness and depth of
the layers of Nagaraja and Hynecek, including to values taught by Abe and
that fall within the scope of claim 3, “in order to provide [a] more efficient
device.” Id. (citing In re Aller, 220 F.2d 454 (CCPA 1955)). The Examiner
observes that the Appellant does not allege that the claimed depths or
lengths of the various regions in claims 3–5 are critical to the operation of
the device. Id. at 15.
Although the Appellant files a Reply Brief, the Appellant does not
contest the Examiner’s findings that layer depth and thickness are result-
effective variables that affect at least the device’s sensitivity to different
wavelengths, and that a person of ordinary skill in the art would have been
motivated to optimize those variables (including to depths disclosed by Abe
and falling within the scope of claim 3) to achieve desired results. Those
findings are supported by the record. See Abe ¶¶ 66, 68. Nor does the
Appellant contest the Examiner’s finding that device manufacturing is
simplified when certain layers are at equal depths. See Final Act. 8. On this
record, we are not persuaded of reversible error in the Examiner’s rejection.
See Jung, 637 F.3d at 1365; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416–21 (2007) (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”); see also id. at 416 (“[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.”).
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Claim 4. Claim 4 depends from claim 1 and further recites “wherein
the photodiode region further includes a second deep photodiode sub-region,
wherein a length of the second deep photodiode sub-region is larger than the
length of the first deep photodiode sub-region.”
The Examiner finds that Abe Figure 10 discloses “a second deep
photodiode sub-region 2, wherein a length of the second deep photodiode
sub-region is larger than the length of the first deep photodiode sub-region.”
Final Act. 8. The Examiner finds that it would have been obvious to include
such a second deep photodiode sub-region “in the devices of Nagaraja and
Hynecek, in order to improve the device characteristics.” Id.
Additionally, and as explained above, in the Answer, the Examiner
provides a cropped, annotated version of Hynecek’s Figure 2 and finds that
Hynecek itself discloses first and second deep photodiode sub-regions.
Ans. 15–16. We observe that the layer identified by the Examiner as the
second deep sub-region is shallower than the layer identified by the
Examiner as the first deep sub-region, but claim 4 does not appear to require
(and the Appellant has not argued) that the second deep photodiode sub-
region be deeper than the first.
In the Appeal Brief, the Appellant groups claim 4 with claim 3 and
raises no separate argument beyond that quoted above with respect to claim
3. See Appeal Br. 13. In the Reply Brief, the Appellant raises no further
arguments and, in particular, does not contest the Examiner’s identification
in Hynecek of a photodiode region that includes a shallow sub-region and
first and second deep sub-regions. On this record, we discern no basis to
reject the Examiner’s findings concerning Hynecek’s disclosure of first and
second deep sub-regions. See Jung, 637 F.3d at 1365. Accordingly, we
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affirm the Examiner’s rejection of claim 4 as obvious over Hynecek and
Abe.
As to the Examiner’s rejection of claim 4 on the basis of primary
reference Nagaraja, however, the Examiner has not adequately established
that a person of ordinary skill in the art would have had reason to add a
second deep photodiode sub-region to the structure of Figure 3. Unlike
Hynecek, the Examiner does not assert that Nagaraja’s structure already
possesses a second deep photodiode sub-region, and the Examiner’s
assertion that a person of ordinary skill in the art would have included one
“to improve the device characteristics” fails to include a citation to any
evidence and is too conclusory and generic to support the Examiner’s
rejection. Moreover, in the Answer, and as noted above, although the
Examiner identifies sensitivity to different wavelengths as a property that is
affected by the depth and dimensions of dopant regions within a device,
Ans. 14, that does not adequately explain why a person of ordinary skill in
the art would have been motivated to affirmatively add a second deep
photodiode sub-region to a structure that does not have one, such as
Nagaraja Figure 3. Accordingly, we reverse the Examiner’s rejection of
claim 4 as obvious over Nagaraja and Abe.
Claim 5. Claim 5 depends from claim 4 and further recites “wherein
the second deep photodiode sub-region is deeper than the deep depleting
region.”
As set forth above, in the Answer, the Examiner finds that the
thickness and depth of the various layers of a semiconductor are well known
to affect the characteristics of a semiconductor, and that it would have been
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obvious to optimize depths and thicknesses to achieve desired results,
including to values that fall within the scope of claim 5. Ans. 14–15.
As noted above, although the Appellant files a Reply Brief, the
Appellant does not contest the Examiner’s findings that layer depth and
thickness are result-effective variables and that a person of ordinary skill in
the art would have been motivated to optimize those variables (including to
depths disclosed by Abe and falling within the scope of claim 5) to achieve
desired results. On this record, we are not persuaded of reversible error in
that rationale. See Jung, 637 F.3d at 1365. Accordingly, we affirm the
Examiner’s rejection of claim 5 as obvious over Hynecek and Abe.
As to the Examiner’s rejection of claim 5 on the basis of primary
reference Nagaraja, however, we reverse for the reason set forth above as to
claim 4. Namely, like claim 4, claim 5 requires a second deep photodiode
sub-region, and the Examiner has not persuasively explained why a person
of ordinary skill in the art would have added that structural element to the
structure of Nagaraja Figure 3.
Rejection 5
Claim 11, the only claim subject to Rejection 5, recites “[a]n
electronic apparatus” comprising, inter alia, the image sensing device of
claim 1. The Appellant argues that Rejection 5 should be reversed because
“the teachings of Rhodes fail to remedy the deficiencies of Nagaraja and
Hynecek.” Appeal Br. 14. The Appellant raises no other arguments
concerning Rejection 5. Id. Because we are not persuaded of reversible
error in the Examiner’s rejection of claim 1 as obvious over Nagaraja or
Hynecek, we affirm the Examiner’s rejection of claim 11.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 112(a) Written Description 1–11
1–11 112(b) Indefiniteness 1–11
1, 2, 6–10 103 Nagaraja 1, 2, 6–10
1, 2, 6–10 103 Hynecek 1, 2, 6–10
3–5 103 Nagaraja, Abe 3 4–5
3–5 103 Hynecek, Abe 3–5
11 103 Nagaraja, Rhodes 11
11 103 Hynecek, Rhodes 11
Overall
Outcome 1–11
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