Ex Parte Costello et al

Patent Trial and Appeal Board

Mar 29, 2017

12623767 (P.T.A.B. Mar. 29, 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.
12/623,767 11/23/2009 James Costello 2009-030USORG 7020
144016 7590 03/31/2017
SheriHan Rnsis; P P
EXAMINER
1560 Broadway, Suite 1200
Denver, CO 80202
LEE, SHUN K
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
e-docket @ sheridanross. com
mreno @ sheridanross. com
mells worth @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES COSTELLO and WEE SIN TAN
Appeal 2016-002074
Application 12/623,767
Technology Center 2800
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 In this decision, we refer to the Final Office Action mailed September 25,
2014 (“Final Act.”), the Appeal Brief filed July 2, 2015 (“App. Br.”), the
Examiner’s Answer mailed October 6, 2015 (“Ans.”), and the Reply Brief
filed December 7, 2015 (“Reply Br.”).
2 Appellants identify the real party in interest as Avago Technologies
General IP (Singapore) Ptd. Ltd. App. Br. 2.
Appeal 2016-002074
Application 12/623,767
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. An infrared proximity sensor package, comprising:
an infrared transmitter;
an infrared receiver;
a shield disposed atop the package and having first and
second apertures disposed therethrough and positioned over the
infrared transmitter and the infrared receiver, respectively, such
that infrared light emitted by the transmitter passes through the
first aperture and infrared light reflected from an object to be
detected passes through the second aperture for detection by the
receiver, the shield comprising an infrared-absorbing material
disposed on at least a top surface thereof;
a housing comprising sidewalls, a first recess at least
partially aligned with the first aperture of the shield, a second
recess at least partially aligned with the second aperture, and a
partitioning divider disposed between the first and second
recesses, the partitioning divider comprising a first portion and
second portion, the first portion being of a first thickness and the
second portion being of a second thickness different from the
first thickness, the first portion substantially separating the
transmitter and receiver;
wherein the transmitter is disposed in the first recess, the
receiver is disposed in the second recess, and the partitioning
divider comprises liquid crystal polymer (LCP) such that the
partitioning divider and the infrared-absorbing material of the
shield cooperate together to substantially attenuate and absorb
undesired infrared light that may otherwise become internally-
reflected within the housing or incident upon the receiver as a
false signal.
App. Br. 20.
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Appeal 2016-002074
Application 12/623,767
REJECTIONS ON APPEAL
1. Claims 1, 5—15, and 21—23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Bich et al.
(WO 2006/045531 Al, published May 4, 2006; hereinafter “Bich”)
in view of Havens et al. (US 2008/0223934 Al, published
September 18, 2008; hereinafter “Havens”);
2. Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bich in view of Havens, and further in view of
Basoor et al. (US 2006/0016994 Al, published January 26, 2006;
hereinafter “Basoor”);
3. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bich in view of Havens, and further in view of
Fadell et al. (US 2007 /0085157 Al, published April 19, 2007;
hereinafter “Fadell”); and
4. Claims 18—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bich in view of Havens, and further in view of
Scheidle (US 6,635,955 B2, issued October 21, 2003; hereinafter
“Scheidle”).
DISCUSSION
Rejection 1
We will focus on representative independent claim 1 in discussing
Rejection 1 because it contains the argued limitations that also are present in
independent claim 23, directed to a method of making an infrared proximity
sensor package.
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Application 12/623,767
The Examiner maintains the rejection of claims 1, 5—15, and 21—23
under 35 U.S.C. § 103(a) as obvious over Bich in view of Havens. Final
Act. 3—11; Ans. 2.
The Examiner bears the initial burden of presenting a prima facie case
establishing the non-patentability of the rejected claims. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner’s findings regarding Bich are located on pages 3 to 11
of the Final Action. The Examiner finds, inter alia, that Bich teaches an
optical proximity sensor package comprising, inter alia, a shield (protective
means 17) disposed atop the package, the shield comprising an infrared-
absorbing material disposed on at least a top surface thereof. Final Act. 3^4
(quoting Bich 6,11. 9—15) (“ . . . the protective means comprise at least one
one-piece part, said one-piece part covering only those recesses which
receive light-emitting elements, or only those recesses which receive light­
receiving elements, thereby preventing transmission of light from the light-
emitting element to the light-receiving element upon multiple reflections
within the protective means;”) and (quoting Bich 11,11. 3—5) (“protective
means 17 can also be formed by a plurality of small transparent patches,
each of which is disposed in a corresponding recess 16a or 16b . . .”).
Appellants argue that the Examiner erred in finding that Bich
discloses or suggests “a shield disposed atop the package ... the shield
comprising an infrared-absorbing material disposed on at least a top surface
thereof.” See App. Br. 9.
In response to Appellants’ argument, the Examiner finds that Bich
teaches protective means 17 comprises a transparent plate 21 made of a
transparent rigid plastic material. Ans. 8 (citing Bich 15,11. 35—37).
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Application 12/623,767
Relying upon page 5, lines 15 through 31, page 10, lines 9 through 15,
page 17, lines 3 through 15, and page 18, lines 3 through 9, the Examiner
further finds that Bich teaches or suggests “that the zones/apertures 21c of
protective means 17 should transmit IR and the outside area of the
zones/apertures 21c should not transmit IR.” Ans. 8—9 (emphasis omitted).
We have reviewed the relied upon disclosure in Bich, but do not find that it
teaches or suggests that Bich’s protective means 17, which comprises a
transparent plate 21 made of a transparent rigid plastic material, includes an
infrared-absorbing material.
In addition, the Examiner finds in the Answer that Havens teaches that
an optical device’s housing preferably comprises commercially available IR
absorbing plastics such as liquid crystal polymers. Ans. 9. Because the
Examiner finds that Bich teaches a protective means 17 comprising a
transparent plate 21 made of a transparent rigid plastic material (citing Bich
15,11. 34—37), and further teaches that the outside of zones/apertures should
not transmit light, the Examiner determines that “it would have been obvious
to one of ordinary skill in the art to use a shield comprising infrared-
absorbing plastic material to block infrared light transmission in the outside
of the zones in the device of Bich.” Id. at 9—10. Thus, the Examiner
concludes that “a light-absorbing material on the protective means is not
inconsistent with the teachings of Bich.” Id. at 10.
As the Examiner correctly finds, Bich teaches that protective means
17 comprises a transparent plate 21 made of a transparent rigid plastic
material. Bich 15,11. 34—37. On this record, however, the Examiner has not
provided sufficient reasoning or explanation why one of ordinary skill in the
art at the time of the invention would have modified Bich to use a protective
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Appeal 2016-002074
Application 12/623,767
means comprising an infrared-absorbing plastic material, as disclosed in
Havens, “to block infrared light transmission.” In fact, a preponderance of
the evidence supports Appellants’ argument that modifying Bich in the
manner proposed by the Examiner would be contrary to the teachings of
Bich. App. Br. 9—10; Reply Br. 6.
We will not turn to impermissible speculation or unfounded
assumptions or rationales to cure the deficiencies in the rejections before us.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Thus, on this record, we are persuaded that the Examiner has failed to
meet the requisite burden of establishing that claims 1, 5—15, and 21—23 are
unpatentable for obviousness over Bich in view of Havens. Accordingly, we
do not sustain Rejection 1.
Rejections 2 through 4
The Examiner’s obviousness rejections of claims 2—4, and 16—20 rely
on the same erroneous findings and reasoning discussed above with respect
to claim 1. See Non-Final Act. 11—13. Accordingly, the Examiner has not
carried the burden to establish a prima facie case of obviousness as to
dependent claims 2-4, and 16—20. Thus, we do not sustain Rejections 2
through 4.
DECISION
For the above reasons, the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1, 5—15, and 21—23 over Bich in view of Havens,
claims 2-4 over Bich in view of Havens and Basoor, claims 16 and 17 over
Bich in view of Havens and Fadell, and claims 18—20 over Bich, Havens,
and Scheidle are reversed.
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Application 12/623,767
REVERSED
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