Ex Parte Hosier et al

Board of Patent Appeals and Interferences

Sep 29, 2005

09802792 (B.P.A.I. Sep. 29, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL A. HOSIER, THOMAS GRIMSLEY, and JOSEF E. JEDLICKA
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Appeal No. 2005-1057
Application No. 09/802,792
____________
ON BRIEF
____________
Before KRASS, CRAWFORD, and RUGGIERO, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 3
and 6 to 30, which are all of the claims pending in this application. Claims 4, 5 and 33
have been canceled, claims 11 to 19 are allowable and claims 31 to 32 and 34 to 37
have been withdrawn from consideration.
We affirm.
Appeal No. 2005-1057
Application No. 09/802,792
Page 2
BACKGROUND
The appellants' invention relates to a photosensitive chip for creating electrical
signals for an original image (specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellants' brief.
The prior art references
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Jedlicka et al. (Jedlicka) 5,604,362 Feb. 18, 1997
Koizumi et al. (Koizumi) 5,698,892 Dec. 16, 1997
The rejections
Claims 1, 6 to 10, 20, 22 to 24 and 26 to 30 stand rejected under U.S.C. § 102 as
being anticipated by Koizumi.
Claims 2 and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Koizumi.
Claims 3 and 25 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Koizumi in view of Jedlicka.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(mailed November 18, 2003) for the examiner's complete reasoning in support of the
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Application No. 09/802,792
Page 3
rejections, and to the brief (filed September 12, 2003) and reply brief (filed January 20,
2004) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the rejection of claims 1, 6 to 10, 20, 22 to 24 and 26 to 30 as
anticipated by Koizumi. We note that to support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is found, either expressly
described or under principles of inherency, in a single prior art reference. See Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
The examiner is of the view that Koizumi describes each element of claim 1 (see
answer at page 4).
The appellants argue that Koizumi does not describe a photosensitive chip
having a groove and a light-transmissive planar layer extending over the groove portion.
In appellants' view because Koizumi teaches that the light-transmissive planar layer
is removed before the chip is severed from the chip (col. 2, lines 64 to 68),
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Application No. 09/802,792
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Koizumi does not describe this feature of claim 1. In appellants' view, the structure prior
to the severing of the chip from the wafer is a wafer not a chip.
We do not find this argument persuasive because it is not commensurate with
the actual scope of claim 1. Claim 1 recites a chip but does not recited a severed chip.
Therefore, each of the chips of Koizumi prior to severance from the wafer is a chip that
meets the requirements of claim 1. As these chips are depicted in Figure 11B to 11E to
have a light transmissive planar layer in the groove 92, the requirements of claim 1 are
met.
In view of the foregoing, we will sustain the rejection of claim 1. We will also
sustain the rejection of claims 6 to 10, 20, 22 to 24 and 26 to 30 as these claims stand
or fall with claim 1 because the appellants have not separately argued the patentability
of these claims. Accordingly, we have determined that these claims must be treated as
falling with their respective independent claim. See In re Nielson, 816 F.2d 1567, 1572,
2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and 37 CFR §§ 1.192(c)(7) and 1.192(c)(8)(iv).
The appellants have not specifically argued the rejection of claims 2 , 12 and 21
under 35 U.S.C. § 103 as being unpatentable over Koizumi or the rejection of claims 3,
13 and 25 under 35 U.S.C. § 103 as being unpatentable over Koizumi in view of
Jedlicka. In regard to these rejections the appellants rely on the arguments made in
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regard to claim 1. Therefore, we will sustain these rejections for the reasons given
above for claim 1.
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 CFR § 1.136(a).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
Appeal No. 2005-1057
Application No. 09/802,792
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