Ex Parte Hsu et al

Patent Trial and Appeal Board

Sep 24, 2013

10939894 (P.T.A.B. Sep. 24, 2013)

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.
10/939,894 09/13/2004 Tzu-Hsuan Hsu 24061.198 (2003-1548) 5236
42717 7590 09/25/2013
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
STARK, JARRETT J
ART UNIT PAPER NUMBER
2823
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TZU-HSUAN HSU, DUN-NIAN YAUNG, and
YEAN-KUEN FANG
________________

Appeal 2011-005348
Application 10/939,894
Technology Center 2800
________________

Before SALLY G. LANE, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005348
Application 10/939,894

2
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 12-15, 18, 21, 22, and 24-32 as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Kondo et al. (US 2005/0045975 Al, March 3, 2005)
(“Kondo”) and Fukusyo (US 6,066,511, May 23, 2000) (“Fukusyo”)
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a device includes an image
sensing element. The device also includes a Silicon Dioxide (SiO2) layer,
located over the image sensing element, exhibiting a first index of
refraction. The device further includes a first lens, located over the SiO2
layer, exhibiting a second index of refraction greater than the first index of
refraction. The device still further includes a color filter located over the
first lens and a second lens located over the color filter. Abstract.

GROUPING OF CLAIMS

Appellants make the same arguments for claims 12-15, 18, 21, 22,
and 24-32. App. Br. 14, 15, 18, 19, 22, 24. We consequently select claim
12 as representative of the claims on appeal. Claim 12 recites:
12. A device comprising:

an image sensing element;

Appeal 2011-005348
Application 10/939,894

3
a first Silicon Dioxide (SiO2) layer, located over the image
sensing clement, exhibiting a first index of refraction and having a
curved recess;

a first lens, located over the first SiO2 layer, exhibiting a
second index of refraction greater than the First index of refraction
and including a first surface that conforms to the curved recess of the
first SiO2 layer and a second surface that is planarized;

a second SiO2 layer located directly on the second surface of
the first lens;

a color filter located over the second SiO2 layer; and

a second lens located over the color filter.

App. Br. 26.

ISSUES AND ANALYSES
Issue 1
Appellants argue that the Examiner erred in combining the teachings
of the prior art because the modification of Kondo by Fukusyo would
change the principle of operation of Kondo. App. Br. 12. We therefore
address the issue of whether the Examiner so erred.

Analysis
Appellants argue that modifying Kondo’s lens 120 with Fukusyo’s
teaching of a planarized convex first lens would change the principle of
operation of Kondo’s lens. App. Br. 12. According to Appellants, Kondo
teaches that “[t]he inner lens 120 of the solid state imaging device shown in
FIG. 4[A] has an upward and downward convex shape” which “can realize
Appeal 2011-005348
Application 10/939,894

4
a high converging efficiency” and “has no surface without the converging
function.” App. Br. 12-13 (quoting Kondo, ¶¶ [0082]-[0084]). By contrast,
argue Appellants, Fukusyo teaches a planarized convex first lens. App. Br.
13. Appellants argue that substituting the planarized convex first lens of
Fukusyo would alter the principle of operation of Kondo’s lens because the
lens taught by Fukusyo: (1) does not have an upward and downward convex
shape; (2) has no surface without the converging function; and (3) does not
have a high converging efficiency.
The Examiner responds that the function of the lens taught in both
Kondo and Fukusyo is to gather and focus light upon a sensor. Ans. 7. The
Examiner finds that Kondo teaches that the upper surface is curved in order
to achieve high convergence efficiency while focusing the gathered light
upon the sensor, whereas Fukusyo teaches that the surface of an analogous
lens can optionally be planar. Id. However, finds the Examiner, both
lenses are performing the same operation of gathering and focusing
incoming light upon the sensor. Id. Based on these findings, the Examiner
concludes that, should an artisan of ordinary skill not require a “high
convergence efficiency,” it would have been obvious to omit the upper
curved surface and leave the upper surface planar, as demonstrated by
Fukusyo, without destroying the primary function of the lens. Id.
We agree with the Examiner. Both Kondo and Fukusyo teach the use
of a lens to focus light upon a sensor. See Kondo, Figs. 1, 4; Fukusyo, Fig.
3. Although the convex lens taught by Fukusyo in Fig. 3 has a planarized
surface, rather than the convex upper and lower surfaces of the lens taught
by Kondo, the function of the lens, viz., to focus light upon the sensor, is the
Appeal 2011-005348
Application 10/939,894

5
same in both references. We therefore determine that the Examiner did not
err in combining the teachings of Kondo and Fukusyo.

Issue 2
Appellants argue that the Examiner erred in combining Kondo and
Fukusyo because Kondo teaches away from Appellants’ claimed invention.
App. Br. 15. We therefore address the issue of whether the Examiner so
erred.

Analysis
Appellants repeat the teachings of Kondo with respect to lens 120
related supra, and argue that Kondo therefore teaches away from having a
surface that is planarized, as required by claim 12. App. Br. 15.
The Examiner responds that, although not explicitly taught as a
preferred embodiment, the combination of Kondo and Fukusyo nevertheless
teaches the embodiment recited in claim 12. Ans. 8. The Examiner finds
that examples and preferred embodiments do not constitute a teaching away
from a broader disclosure or nonpreferred embodiments. Id. (citing In re
Susi, 169 USPQ 423 (C.C.P.A. 1971).
We are not persuaded by Appellants’ argument. A reference teaches
away when “a person of ordinary skill, upon reading the reference, would
be discouraged from following the path set out in the reference, or would be
led in a direction divergent from the path that was taken by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants point to no
teaching or suggestion of Kondo that would have discouraged or diverted
an artisan of ordinary skill in the contemporary art from using a convex lens
Appeal 2011-005348
Application 10/939,894

6
with a planarized surface, but argue only the fact that Kondo is silent with
respect to this point. Such silence does not arise to the level of “teaching
away.” See In re Dunn, 349 F.2d 433, 438 (C.C.P.A. 1965) (Teaching an
alternative method does not teach away from the use of a claimed method).

Issue 3
Appellants argue that the Examiner improperly employed hindsight
in finding that the combination of Kondo and Fukusyo teaches or suggests
the limitations of claim 1. App. Br. 17. We therefore address the issue of
whether the Examiner so erred.

Analysis
Appellants argue that the Examiner failed to articulate a reasonable
basis for combining the references in the same manner claimed to arrive at
the claimed invention, but rather used the claimed invention as an
instruction manual. App. Br. 17. Appellants repeat their argument, supra,
that Kondo teaches away from their claimed invention. Id. According to
Appellants, the Examiner’s proposed modification of Kondo’s lens 120
with Fukusyo’s alleged teachings is gleaned only from Appellants’
disclosure and not any disclosure of the cited references. App. Br. 16.
Appellants argue further that none of the Examiner’s findings can be
considered as a motivation disclosed or suggested by any of the cited prior
art references, nor has the Examiner pointed to any extrinsic evidence that
shows one skilled in the art would have been motivated to combine the
cited references to arrive at the claimed invention. App. Br. 17. Rather,
contend Appellants, the Examiner combined the components disclosed by
Appeal 2011-005348
Application 10/939,894

7
the various cited references based solely on the Applicants’ claimed
invention. Id. According to Appellants, the reasoning articulated by the
Examiner is thus employed to arrive at the claimed invention and not
because of any teaching or suggesting found within the various references.
Id. Therefore, Appellants argue, the cited references on their own, or in
combination, do not teach or suggest the various combinations found by the
Examiner to arrive at the claimed invention. Id.
The Examiner responds that it must be recognized that any judgment
on obviousness is necessarily a reconstruction based, to a degree, upon
hindsight reasoning. App. Br. 9. But, the Examiner finds, as long as such
an analysis takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made, and does not
include knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper. Id. (citing In re McLaughlin, 443 F.2d 1392,
1395 (C.C.P.A. 1971 ).
We agree with the Examiner’s reasoning. We have explained supra
why Kondo does not teach away from Appellants claimed invention, nor do
Appellants argue that either Kondo or Fukusyo are improperly cited as non-
analogous prior art references. Moreover, the Examiner concluded that
should an artisan of ordinary skill “not require a ‘high convergence
efficiency’ it would be obvious to omit the upper curved surface and leave
the upper surface planar as demonstrated by Fukusyo without destroying
the primary function of the lens.” Ans. 7. Therefore “one of ordinary skill
in the art would have been motivated to look to alternative suitable methods
of performing the disclosed lens shaping step of Kondo.” Ans. 6. We find
that the Examiner has thus “articulated a rational underpinning to support
Appeal 2011-005348
Application 10/939,894

8
the legal conclusion of obviousness” as required by KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). We consequently conclude that the
Examiner did not improperly employ hindsight in combining the Kondo
and Fukusyo references.

Issue 4
Appellants argue that the Examiner erred because the Examiner
failed to provide an objective reason to combine Kondo and Fukusyo to
arrive at the claimed invention. App. Br. 19. We therefore address the
issue of whether the Examiner so erred.

Analysis
Appellants argue that, because the Examiner concludes that the
claimed invention is obvious because Kondo’s lens 120 and Fukusyo’s
teaching of a planarized convex lens were well within the ordinary skill of
the art at the time of the claimed invention, the Examiner’s obviousness
conclusion is erroneously based solely upon the fact that individualized
teachings or Kondo and Fukusyo were known in the art. App. Br. 19.
Appellants contend that the Examiner therefore erred by failing to articulate
some objective reason to combine the teachings of the references. Id.
The Examiner responds that the rational for combining the references
was provided along with the statement of obviousness. Ans. 9.
We are not persuaded by Appellants’ argument. We have related
supra that we find that the Examiner has articulated a rational underpinning
to support the legal conclusion of obviousness. We therefore conclude that
the Examiner did not err in this respect.
Appeal 2011-005348
Application 10/939,894

9

Issue 5
Appellants argue that the Examiner erred because Fukusyo’s teaching
of a planarized convex first lens would destroy the intended function of
Kondo’s inner lens 120. App. Br. 19. We therefore address the issue of
whether the Examiner so erred.

Analysis
Appellants essentially repeat their arguments with respect to Issue 1,
supra. App. Br. 19-20. We have already related why the substitution of
Fukusyo’s teaching of a planarized convex first lens would not alter the
intended function of Kondo’s inner lens 120, i.e., to focus light on the
sensor. Nor, based on the same reasoning, do we find that it would destroy
the intended function of Kondo’s inner lens. We therefore conclude that the
Examiner did not err in combining the teachings and suggestions of Kondo
and Fukusyo.

Issue 6
Appellants argue that the Examiner erred in finding that the
combined cited prior art references teach or suggest the limitation of claim
12 reciting “a first Silicon Dioxide (SiO2) layer, located over the image
sensing clement” and “a second SiO2 layer located directly on the second
surface of the first lens.” App. Br. 22-23. We therefore address the issue of
whether the Examiner so erred.

App
App

Anal

sepa
App
inter
SiO2
seco
prop

4a is

imag
(SiO
a firs
eal 2011-0
lication 10
ysis
Appellan
rate claim
ellants arg
layer insul
layers loc
nd surface
er conside
The Exa
reproduce
Schemat
arrang
The Exa
e-sensing
2) layer [1
t index of
05348
/939,894
ts argue th
elements t
ue that, by
ating laye
ated over
of the firs
ration to a
miner resp
d below.
ic cross se
ed area of
miner find
element 6
05], locate
refraction
at the firs
hat are po
finding th
r 105 corre
the image
t lens, resp
ll the elem
onds by p

KOND
ctional vie
a solid sta
second
s that Kon
2, correspo
d over the
… and ha
10
t and seco
sitively rec
at Kondo’
sponds to
sensing el
ectively, t
ents recite
ointing to
O FIG. 4
w showin
te imaging
embodim

do’s SiO2
nds to cla
image-se
ving a cur
nd silicon
ited in cla
s teaching
claim 12’
ement and
he Examin
d in claim
Figure 4A
A
g a partial
device ac
ent.
layer 105,
im 12’s fir
nsing elem
ved recess
dioxide la
im 12. Ap
of a singl
s first and
directly o
er failed t
12. Id.
of Kondo

area of a p
cording to
located o
st “Silicon
ent [62], e
. Ans. 4.
yers are
p. Br. 23.
e
second
n the
o give
. Figure
ixel
a
ver the
Dioxide
xhibiting
The

App
App

Exam
12’s
seco
Kon
layer

requ
Mor
i.e.,
1); a
Mor
disti
12.

[105
of re
eal 2011-0
lication 10
iner also
limitation
nd surface
do’s layer
s.
We agre
ires that th
eover, laye
(1) located
nd (2) loca
eover, Kon
nct layers
See, e.g., K
Sche
Figure 3
a], located
fraction an
05348
/939,894
finds that
reciting “a
of the firs
105 meets
e with the
e two laye
r 105 mee
over the s
ted directl
do also te
(105a and
ondo’s Fi
matic cro
manufac
G of Kon
over the i
d having
layer 105
second S
t lens.” Id
claim 12’
Examiner
rs be sepa
ts the othe
ensing ele
y on the s
aches emb
105b) that
gure 3G.
KOND
ss sectiona
turing a so
do depicts
mage sens
a curved re
11
also meets
iO2 layer [
. The Exa
s requirem
. Nothing
rate, distin
r requirem
ment and
urface of t
odiments
meet the o
Figure 3G
O FIG. 3
l views ill
lid state im
a “first Si
ing clemen
cess” and
the requir
105] locat
miner ther
ents for fi
in the lang
ct, or disc
ents of th
having a c
he first len
in which la
ther requ
is reprodu
G
ustrating a
aging de
licon Diox
t [62], ex
a “a secon
ements of
ed directly
efore find
rst and sec
uage of cl
ontinuous.
e two limit
urved rece
s (layer 2)
yer 105 fo
irements o
ced below

method o
vice.
ide (SiO2
hibiting a
d SiO2 lay
claim
on the
s that
ond SiO2
aim 12

ations,
ss (layer
.
rms two
f claim
:
f
) layer
first index
er [105b]

Appeal 2011-005348
Application 10/939,894

12
located directly on the second surface of the first lens [120]” as required by
claim 12. We therefore conclude that the Examiner did not err in finding
that the combination of Kondo and Fukusyo teach or suggest the limitations
of claim 12.

DECISION
The Examiner’s rejection of claims 12-15, 18, 21, 22, and 24-32
under 35 U.S.C. § 103(a) is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

ke