Ex Parte Hsu et alDownload PDFPatent Trial and Appeal BoardSep 17, 201311624568 (P.T.A.B. Sep. 17, 2013) Copy Citation 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. 11/624,568 01/18/2007 Tzu-Hsuan Hsu 2005-0253 / 24061.785 6867 42717 7590 09/18/2013 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER SKYLES, TIFNEY L ART UNIT PAPER NUMBER 2814 MAIL DATE DELIVERY MODE 09/18/2013 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 and DUN-NIAN YAUNG ____________ Appeal 2011-001475 Application 11/624,568 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001475 Application 11/624,568 2 STATEMENT OF THE CASE Appellants are appealing claims 1-12 and 21-25. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to “a backside illuminated semiconductor sensor.” Appeal Brief 7. Illustrative Claim 1. A backside illuminated sensor, comprising: a semiconductor substrate having a front surface and a back surface; a plurality of pixels formed on the front surface of the semiconductor substrate; a dielectric layer disposed above the front surface of the semiconductor substrate; a plurality of array regions arranged according to the plurality of pixels, wherein at least two of the array regions have a different radiation response characteristic from each other; and a plurality of color filters formed over the back surface, each being aligned with one of the plurality of pixels. Rejections on Appeal Claims 1-5, 8, 12, and 21-24 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Jastrzebski (U.S. Patent Number 4,481,522; issued November 6, 1984) and Dierickx (U.S. Patent Application Publication Number 2007/0052050 A1; published March 8, 2007). Answer 3-8. Appeal 2011-001475 Application 11/624,568 3 Claims 6 and 7 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Jastrzebski, Dierickx, and Augusto (U.S. Patent Application Publication Number 2005/0167709 A1; published August 4, 2005). Answer 9. Claims 9-11 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Jastrzebski, Dierickx, and Hong (U.S. Patent Application Publication Number 2005/0106872 A1; published May 19, 2005). Answer 9-10. Issue Do Jastrzebski and Dierickx, either alone or in combination, teach or suggest a backside illuminated semiconductor sensor having a plurality of color filters aligned with a plurality of pixels as set forth in claim 1? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief. However, we highlight and address specific findings and arguments for emphasis as follows. The Examiner finds that Jastrzebski fails to teach a plurality of color filters formed over the back surface with each filter aligned with one of the plurality of pixels. Answer 4. Examiner remedies Jastrzebski’s omission by combining the teachings of Dierickx. Id. Appeal 2011-001475 Application 11/624,568 4 Appellants argue Jastrzebski and Dierickx should not be combined because Dierickx’s color filter array would destroy Jastrzebski’s Charge- coupled Device (CCD) imager intended function. Appeal Brief 11. “Combining Jastrzebski’s CCD imager requiring a full visible light spectrum with Dierickx’s color filter array 414 that does not allow the full visible light spectrum to pass through the color filter array, would destroy the function of Jastrzebski’s CCD imager.” Appeal Brief 13. Appellants reason that because Jastrzebski outputs a continuous R+G+B signal, Jastrzebski receives a full visible light spectrum. Appeal Brief 12. Appellants’ reasoning is unsubstantiated by Jastrzebski and Appellants provide no evidence to support their reasoning. We do not find Appellants’ arguments to be persuasive. Attorney’s arguments or conclusory statements are insufficient to rebut a prima facie case. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (citations omitted). “Attorney’s argument . . . cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Even if Appellants are correct in their supposition that Jastrzebski’s device receives a full visible light spectrum, this does not compromise Jastrzebski’s combination with Dierickx because the combination of the references does not have to produce the same invention as Jastrezebski to be proper. In other words, “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968) (parallel citations omitted)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) Appeal 2011-001475 Application 11/624,568 5 (“Combining the teachings of references does not involve an ability to combine their specific structures.”). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Therefore, we sustain the Examiner’s rejection of independent claims 1 and 21, as well as, dependent claims 22-25 for the same reasons stated above. We do not find the combination of Jastrzebski and Dierickx to be deficient, therefore, the rejections combining Augusto and Hong, respectively, are also proper. DECISION The Examiner’s 35 U.S.C. §103 rejections of claims 1-12 and 21-25 are affirmed. 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)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED llw Copy with citationCopy as parenthetical citation