Apple Inc.

Patent Trials and Appeals Board

Mar 30, 2021

2019006203 (P.T.A.B. Mar. 30, 2021)

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.
14/550,590 11/21/2014 Howell John Chua Toc 8888-46100 2950
81310 7590 03/30/2021
Kowert Hood Munyon Rankin & Goetzel (Apple)
1120 S. Capital of Texas Hwy
Building 2, Suite 300
Austin, TX 78746
EXAMINER
FLOHRE, JASON A
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
03/30/2021 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte HOWELL JOHN CHUA TOC,
PRAKASH VENKATESAPPA, ANNABELLE Q. YANG, and
MELVIN C. CABONEGRO
_______________

Appeal 2019-006203
Application 14/550,590
Technology Center 2600
_______________

Before JOHN A. EVANS, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–11, 21, 22, and 25–30.1 Appellant
previously canceled claims 12–20, 23, and 24. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Apple Inc. as the real party in interest.
Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relates generally to camera components.”
Spec. ¶ 1. Figure 1 is reproduced below.

Figure 1 depicts disassembled components of a camera, including parts and
tools for a process for bending the image sensor device’s circuit-bearing die.
Id. ¶¶ 23, 59. As shown in Figure 1, an image sensor device includes die
1020, which contains image sensor 1030. Id. ¶ 60. Die 1020 is to be
deposited onto adhesive layer 1040, and adhesive layer 1040 is to be
deposited onto substrate 1050. Id. Substrate 1050 is to be seated in stage
tool 1060. Also shown in Figure 1, bond tool 1010 is used for applying
pressure to die 1020 to create a curvature of die 1020 corresponding to
curved surface 1055 of substrate 1050. Id.
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Figure 7, reproduced below, depicts an exemplary bond tool for use in
the process for bending a circuit-bearing die.

Figure 7 depicts bond tool 7010, including body 7020, stem 7060 for
attachment to a machine used in the process, and pressure surface 7030
enclosed by ridges 7040a–b. Id. ¶ 98. As shown in Figure 7, a cavity exists
above pressure surface 7030 and between ridges 7040a–b. Id. ¶ 99. This
cavity prevents contact with critical areas of a die (such as image sensor
1030 of die 1020) when pressure is applied to the die using bond tool 7010.
Id.
Claims
Claims 1 and 6 are independent claims. Claim 1 is reproduced below:
1. A camera, the camera comprising:
one or more lenses for directing light to an image sensor
component of the camera; and
an image sensor device, wherein the image sensor device
comprises:
a substrate, wherein the substrate comprises a first
side having a curved surface; and
a die attached to the curved surface of the substrate,
the die comprising:
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a critical area that includes the image sensor
component; and
areas on opposing sides of the critical area
having sufficient surface area to make
contact with ridges of a bond tool to
create a curvature of the die and avoid
contact between the bond tool and
critical areas of the die;
wherein at least a portion of the die comprising the
image sensor component has a curved
surface.
Appeal Br. 32 (Claims App).
The Pending Rejections
The Examiner rejects claims 1–11, 21, 22, and 25–30 under the
following grounds of rejection:
Claims 35 U.S.C. § Reference(s) Citation
1–5, 26, 28 103 Kumagai,2 Kim3 Final Act. 2–5
27 103 Kumagai, Kim, Ikeda4 Final Act. 17
1–3, 5, 30 103 Prabhu,5 Kim Final Act. 5–8
1, 3–5 103 Guenter,6 Sekine,7 Kim Final Act. 17–20
7, 11, 29 103 Guenter, Sekine, Kim, McConnelee8
Final Act. 12–13,
21

2 US 2016/0099285 A1 (published Apr. 7, 2016, “Kumagai”).
3 US 2013/0333843 A1 (published Dec. 19, 2013, “Kim”).
4 US 2016/0340561 A1 (published Nov. 24, 2016, “Ikeda”).
5 US 6,791,072 B1 (issued Sept. 14, 2004, “Prabhu”).
6 US 2016/0086994 A1 (published Mar. 24, 2016, “Guenter”).
7 US 2012/0299140 A1 (published Nov. 29, 2012, “Sekine”).
8 US 2013/0334706 A1 (published Dec. 19, 2013, “McConnelee”).
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6, 8, 22, 25 103 Guenter, McConnelee, Kim Final Act. 8–12
9, 10 103 Guenter, McConnelee, Kim, Ikeda Final Act. 14–15
21 103 Guenter, McConnelee, Kim, Sekine, Kumagai Final Act. 16
ANALYSIS
Each of the independent claims requires “an image sensor device” that
has
a die . . . comprising: a critical area that includes the image
sensor component; and areas on opposing sides of the critical
area having sufficient surface area to make contact with ridges
of a bond tool to create a curvature of the die and avoid contact
between the bond tool and critical areas of the die.
Appeal Br. 32, 33 (Claims App).
The Examiner finds Kim, in combination with one or more of
Kumagai, Prabhu, Sekine, Guenter, and McConnelee, teaches or suggests
this limitation. Final Act. 3, 6–7, 10, 19–20. Appellant contends the
Examiner’s findings and reasoning for this limitation are erroneous. Appeal
Br. 2–11, 12–16, 18–21, 22, 24–29; Reply Br. 2–15, 16, 17–21. For the
reasons that follow, we agree with Appellant that the Examiner erred.
Rejections Based on Kim and Kumagai
In rejecting claim 1 for obviousness based on Kim and Kumagai, the
Examiner finds Kumagai’s description of a camera module, including a
solid-state imaging device to be manufactured, discloses “an image sensor
device, wherein the image sensor device comprises a substrate . . . , wherein
the substrate comprises: a first side having a curved surface,” and “a die
attached to the curved surface of the substrate, the die comprising a critical
area that includes the image sensor component . . . , wherein at least a
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portion of the die comprising the image sensor component has a curved
surface.” Final Act. 2–3 (citing Kumagai, Fig. 2, ¶¶ 39, 40); see also id. at 2
(citing Kumagai, Fig. 1). Figure 1 of Kumagai is reproduced below.

Figure 1 of Kumagai depicts a cross-sectional view of a camera module
according to one embodiment. Kumagai ¶ 34. As shown in Figure 1 of
Kumagai, camera module 10 includes solid-state imaging device 20, which
is fixed via adhesive 13 to a top surface of mounting substrate 12. Id. ¶ 35.
Solid-state imaging device 20 also includes thin sensor chip 21, which may
be fixed onto curved surface 22s of mounting body 22 by adhesive 25,
thereby causing thin sensor chip 21 to be curved. Id. ¶¶ 40, 44. In addition,
thin sensor chip 21 may be disposed on curved surface 22s of mounting
body 22 by being sucked thereon via one or more through holes 24. Id.
¶¶ 40, 42–43.
The Examiner acknowledges that Kumagai “fails to disclose areas on
opposing sides of the critical area having sufficient surface area to make
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contact with ridges of a bond tool to create a curvature of the die and avoid
contact between the bond tool and critical areas of the die.” Final Act. 3.
The Examiner finds, however, that
Kim teaches an image sensor wherein the design incentive of
ensuring that mounting levels between an image sensor part and
a substrate part remain equal would have prompted a
predictable variation of Kumagai by applying Kim’s known
principal of providing an image sensor with a critical area in the
center of the die and non-critical areas on the edge which make
contact with a bond tool in order to accurately place an image
sensor die on a substrate.
Id. (citing Kim, Figs. 7–9, ¶¶ 47, 48, 55). The Examiner explains that
“figures 7-9 exhibit wherein a bond tool 710 has ridges 710t which make
contact with edge areas of an image sensor die in order to place the die on a
substrate.” Id. Figures 7 and 8 of Kim are reproduced below.

Figures 7 and 8 of Kim depict an apparatus for manufacturing a camera
module according to an exemplary embodiment. Kim ¶ 47. As shown in
Figure 7 of Kim, rim tool 710 may be used to pick up image sensor 703 and
attach it onto printed circuit board (“PCB”) holding unit 702, which is held
from below by base jig 701. Id. ¶¶ 47–49. As shown in Figure 8 of Kim,
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rim tool 710 includes horizontal plane part 720 extending a predetermined
width toward the outside of image sensor pickup part 710p in all directions,
and vertical member 720v formed downwardly from an edge of horizontal
plane part 720h. Id. ¶ 49. Rim tool 710 may also have contact protrusions
710t having a square, circular, or discontinuous rod shape and extending
downward from image sensor pickup part 710p. Id. ¶ 55.
The Examiner reasons that
[w]hen applying this known technique [of Kim] to Kumagai it
is apparent that since Kumagai teaches that placing the die on
the substrate is a step in the process which creates a curvature
of the die, by modifying Kumagai to use a bond tool such as
taught by Kim to place an image sensor die on a substrate, the
use of the bond tool will also be part of the process to create a
curvature of the die.
Final Act. 3. The Examiner further reasons that “[i]n view of the design
incentives such as ensuring that mounting levels between an image sensor
part and a substrate part remain equal one of ordinary skill in the art would
have implemented the claimed variation of the prior art system of Kumagai.”
Id. (citing Kim ¶ 3).
Among other arguments, Appellant contends that “Kumagai combined
with Kim does not teach or suggest a curved die comprising . . . areas on
opposing sides of the critical area having sufficient surface area to make
contact with ridges of a bond tool to create a curvature of the die.” Reply
Br. 2–5; Appeal Br. 6–9; see also Reply Br. 5–8; Appeal Br. 9–10. In
particular, Appellant asserts that “Kim’s rim tool is specifically designed to
maintain verticality between a lens and the image sensor 703, without any
mention of introducing any curvature to the image sensor,” and “Kim’s rim
tool could not be used in Kumagai’s process to create ‘a curvature of the
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die.’” Reply Br. 4–5 (citing Kim ¶¶ 40–41), 8 (emphasis omitted).
Appellant also asserts that “[i]f [Kim’s] image sensor 703 were to be curved,
then the verticality emphasized in Kim would not be maintained,” as “the
primary design aspect of Kim’s tool is to keep the die flat and level.” Id. at
5, 8 (emphasis omitted). Appellant further asserts that “Kim’s contact
protrusions could not be used to force the image sensor into a curvature
because the vertical members, and thus the contact protrusions as part of the
same structure, cannot move relative to one another.” Id. at 8 (emphasis
omitted).
We agree with Appellant that the Examiner erred. As an initial
matter, the Examiner asserts that the use of a bond tool to create a curvature
is not required to meet the structure of claim 1. See Ans. 3–4. Even if this
were true, we determine that the structure of claim 1 still requires “areas on
opposing sides of the critical area [of the die] having sufficient surface area
to make contact with ridges of a bond tool to create a curvature of the die.”
See, e.g., Fig. 1 (item 1010), Fig. 7 (item 7010), Spec. ¶¶ 33, 50, 59–60, 99.
Accordingly, for the reasons discussed below, the Examiner has not
adequately shown that the proposed combination of prior art references
would have suggested “areas on opposing sides” of the die “to create a
curvature” as claimed.
More specifically, the Examiner has not adequately shown that
Kumagai’s thin sensor chip or Kim’s image sensor has “areas on opposing
sides” “to create a curvature of the die” when making contact with Kim’s
rim tool, or some obvious modification thereof. The Examiner asserts that
[T]he opposing areas of the image sensor die taught by Kim
which are sufficient for contacting ridges of the bond tool
taught by Kim would be similarly sufficient for making contact
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with “ridges of a bond tool to create a curvature of the die”
even if such a bond tool is not used to manufacture the camera
disclosed by Kumagai in view of Kim.
Ans. 5. But, the Examiner presents no persuasive evidence to support this
assertion. For example, the Examiner does not present any persuasive
evidence that the areas on opposing sides of Kumagai’s thin sensor chip or
Kim’s image sensor are structured such that upon contact with Kim’s non-
curved bond tool (rim tool 710), or some obvious modification thereof, it
would be operable “to create a curvature” of Kumagai’s thin sensor chip or
Kim’s image sensor. Nor does the Examiner’s proposed combination
persuasively explain the roles Kumagai’s adhesive or suction elements (for
curving a sensor chip) or the dimensions of Kim’s rim tool (for picking up
an image sensor) might play “to create a curvature” when the areas on
opposing sides of Kumagai’s thin sensor chip or Kim’s image sensor make
contact with Kim’s rim tool. The Examiner further asserts that
[A] modification of Kumagai which allows for an image sensor
and lens module to be placed in such a way as to preserve
verticality between the image sensor and the lens module is
applicable to the invention of Kumagai and would not render
Kumagai unsatisfactory for its intended purpose of correcting
lens aberration through the curvature of the image sensor.
Ans. 6–7 (citing Kumagai ¶ 44). But this does not address how the proposed
combination would have suggested “areas on opposing sides” of the die “to
create a curvature” as claimed.
Because the Examiner has not adequately shown that Kumagai or
Kim, alone or in combination, teaches or suggests “areas on opposing sides”
of the die “to create a curvature” as claimed, we are constrained by this
record to reverse the rejection of independent claim 1 under 35 U.S.C. § 103
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for obviousness based on Kumagai and Kim. Dependent claims 2–5 and 26–
28 include the same limitation via their ultimate dependency from claim 1,
and the Examiner does not make any other finding (for example, from Ikeda)
that cures the above deficiencies. See Final Act. 4–5, 17 (citing Ikeda
¶ 155); Ans. 8. Accordingly, we also reverse the rejections of dependent
claims 2–5 and 26–28 under 35 U.S.C. § 103 for obviousness based on
Kumagai and one or more of Kim and Ikeda for the same reasons.
Rejections Based on Kim and Prabhu, Guenter, Sekine, or McConnelee
The Examiner also rejects independent claims 1 and 6 for obviousness
based on Kim and one or more of Prabhu, Guenter, Sekine, and
McConnelee. Final Act. 5–7, 8–10, 17–20. Appellant argues the cited
disclosures of Kim are deficient for the same reasons as those advanced for
the rejection over Kumagai and Kim. Appeal Br. 12–16, 18–22, 24–29;
Reply Br. 8–12, 13–16, 17–21. To the extent the Examiner relies on the
same findings and reasoning from Kim as those discussed above for teaching
“areas on opposing sides” of the die “to create a curvature,” we agree with
Appellant that the Examiner’s findings from Kim are deficient for reasons
similar to those discussed above for the rejection over Kumagai and Kim.
See Final Act. 6–7, 10, 19–20; Kim, Figs. 7–9, ¶¶ 3, 47, 48, 55.
The Examiner also presents additional findings from Prabhu, Guenter,
Sekine, and McConnelee. Final Act. 6 (citing Prabhu, Figs. 5(a)–(b), 5:21–
25, 5:48–59, 5:51–55), 8–10 (citing Guenter, Figs. 3–6, ¶¶ 34, 46, 50, 53,
55; McConnelee, Figs. 10–13, ¶¶ 43–46), 18–19 (additionally citing
Guenter, Figs. 8, 9, 11, ¶¶ 74, 75; Sekine ¶ 117). Appellant argues these
additional findings also do not teach or suggest “areas on opposing sides” of
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the die “to create a curvature” as claimed. See, e.g., Appeal Br. 13–14, 15,
16, 18–22, 24–28; Reply Br. 10–12, 15–16, 20–21.
We agree with Appellant that the Examiner has not shown that
Prabhu, Guenter, Sekine, or McConnelee teaches or suggests “areas on
opposing sides” of the die “to create a curvature” as claimed. For example,
the Examiner cites Prabhu’s description of a flexible photoimager die
(substrate) and support curved into a contour that matches a focal surface of
a selected lens. See Final Act. 6 (citing Prabhu, Figs. 5(a)–(b), 5:21–25,
5:45–56). The Examiner cites Guenter’s description of an assembly
including a curved image sensor chip, a bending substrate, and a backside
substrate with a shaped surface, all of which may be forced together, for
example by a clamping or holding mechanism. See id. at 18 (citing Guenter,
Figs. 3–6, ¶¶ 50, 53). The Examiner cites Sekine’s description of a curved
imaging device for alleviating the lens load of an optical system of a camera.
See id. at 18–19 (citing Sekine ¶ 117). The Examiner also cites
McConnelee’s description of a method for manufacturing a circuit package
that includes a technique for bonding an adhesive layer to a silicon wafer,
which is later divided into a plurality of dies. See id. at 9 (citing
McConnelee, Figs. 10–13, ¶¶ 43–46). But, the Examiner has not adequately
shown that any of these additional disclosures, such as Prabhu’s flexible
photoimager die or Guenter’s curved image sensor chip, has “areas on
opposing sides” “to create a curvature of the die” when making contact with
Kim’s rim tool, or some obvious modification thereof. In other words, the
additional references as cited by the Examiner also fail to teach or suggest
“areas on opposing sides” of the die “to create a curvature” as claimed. In
addition, the Examiner does not present any additional reasoning (for
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example, in combining Prabhu, Guenter, Sekine, or McConnelee with Kim)
that fills the gaps in the Examiner’s respective rejections. See, e.g. Ans. 11–
13, 16–18, 22–24.
Therefore, because the Examiner has not adequately shown that
Prabhu, Guenter, Sekine, McConnelee, or Kim, alone or in combination,
teaches or suggests “areas on opposing sides” of the die “to create a
curvature” as claimed, we are constrained by this record to reverse the
rejections of independent claims 1 and 6 under 35 U.S.C. § 103 for
obviousness based on Kim and one or more of Prabhu, Guenter, Sekine, and
McConnelee. Dependent claims 2–5, 7–11, 21, 22, 25, 29, and 30 include
the same limitation via their ultimate dependency from one of claims 1 or 6,
and the Examiner does not make any other finding that cures the above
deficiencies. See Final Act. 7–8, 11–16, 20–21; Ans. 13, 18–20, 24–25.
Accordingly, we also reverse the rejections of dependent claims 2–5, 7–11,
21, 22, 25, 29, and 30 under 35 U.S.C. § 103 for obviousness based on Kim
and one or more of Prabhu, Guenter, Sekine, and McConnelee for the same
reasons.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–5, 26, 28 103 Kumagai, Kim 1–5, 26, 28
27 103 Kumagai, Kim, Ikeda 27
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Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–3, 5, 30 103 Prabhu, Kim 1–3, 5, 30
1, 3–5 103 Guenter, Sekine, Kim 1, 3–5
7, 11, 29 103 Guenter, Sekine, Kim, McConnelee 7, 11, 29
6, 8, 22, 25 103 Guenter, McConnelee, Kim 6, 8, 22, 25
9, 10 103
Guenter,
McConnelee, Kim,
Ikeda
9, 10
21 103
Guenter,
McConnelee, Kim,
Sekine, Kumagai
21
Overall
Outcome
1–11, 21, 22,
25–30

REVERSED