Ex Parte Hwang

Patent Trial and Appeal Board

Sep 26, 2012

11026182 (P.T.A.B. Sep. 26, 2012)

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.
11/026,182 12/29/2004 Joon Hwang OPP-GZ-2004-0097-US-00 5650
36872 7590 09/27/2012
THE LAW OFFICES OF ANDREW D. FORTNEY, PH.D., P.C.
1725 N FINE AVE SUITE 101
FRESNO, CA 93727
EXAMINER
POMPEY, RON EVERETT
ART UNIT PAPER NUMBER
2812
MAIL DATE DELIVERY MODE
09/27/2012 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 JOON HWANG
_____________

Appeal 2010-000720
Application 11/026,182
Technology Center 2800
______________

Before, MAHSHID D. SAADAT, DAVID M. KOHUT, and
TREVOR JEFFERSON, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 4-7, 9, 10, 12, and 14-27.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method for fabricating a complementary
metal-oxide semiconductor (CMOS) image sensor. Abstract. Claim 4 is
representative of the invention and is reproduced below:
4. A method for fabricating a complementary metal-oxide
semiconductor (CMOS) image sensor, the method comprising:
forming at least a first pad layer and a second pad layer
on a p-type semiconductor substrate having an active area and a
device dividing area defined thereon;
removing portions of the first pad layer and the second
pad layer on the device dividing area, so as to expose the p-type
semiconductor substrate and selectively removing the exposed
p-type semiconductor substrate, thereby forming a trench;
injecting first p-type impurity ions using a tilted ion
injection method on inner walls of the trench sufficiently to
form a first p-type impurity area at an interface of a
subsequently-formed photodiode and the device dividing area
and to thereby prevent leakage in the subsequently-formed
photodiode and/or enhance the light-receiving characteristics of
the subsequently-formed photodiode;
forming a device dividing insulating layer on an entire
surface of the p-type semiconductor substrate so as to fill the
trench;

1 Claims 1-3, 8, 11, and 13 were previously cancelled.
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removing the device dividing the insulating layer, so that
the device dividing the insulating layer remains only in the
trench, and removing the remaining second pad layer;
injecting impurity ions through the first pad layer into the
active area, thereby forming a well;
removing the remaining first pad layer after forming the
well; and
injecting n-type impurity ions into a photodiode area,
thereby forming the photodiode.

REFERENCES
Lin US 6,194,285 B1 Feb. 27, 2001

Wu US 6,605,506 B2 Aug. 12, 2003

REJECTION AT ISSUE
Claims 4-7, 9, 10, 12, and 14-27 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Appellant’s Admitted Prior
Art (AAPA), Wu, and Lin.2 Ans. 3-8.
ISSUES
Did the Examiner err in finding that Appellant’s disclosed
“BACKGROUND” section (referred to by the Examiner as AAPA) is prior
art?

2 The Examiner’s statement of rejection included cancelled claims 11 and
13. As these claims are not under appeal, we have not included them in the
statement of the rejection. Additionally, the Examiner’s statement of
rejection excluded claims 25-27, but included them under the rejection.
Thus, we have included them in the statement of the rejection.
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Did the Examiner err in finding that the combination of AAPA, Wu,
and Lin teaches or suggests injecting first p-type impurity ions using a tilted
ion injection method on inner walls of the trench sufficiently to form a first
p-type impurity area at an interface of a subsequently-formed photodiode
and/or enhance the light-receiving characteristics of the subsequently-
formed photodiode?
Did the Examiner err in finding it obvious to combine AAPA, Wu,
and Lin?

ANALYSIS
Appellant makes the following groupings:
Group I – Claims 26 and 27;
Group II – Claims 4, 5, 9, 10, 12, 14,3 15, 16, 21, 22, 24, and 25;
Group III – Claims 6, 7, and 19;
Group IV – Claim 17;
Group V – Claim 18;
Group VI – Claims 20 and 23. App. Br. 14.

Group I
Appellant’s Specification includes a section titled
“BACKGROUND.” Spec. 1. For the reasons set forth below, we must
determine whether disclosures within the Specification and Appellant’s
additional statements on the record can be reasonably interpreted as

3 Appellant has inadvertently left out claim 14 in the grouping of claims, but
includes claim 14 in the STATUS OF CLAIMS. App. Br. 5. As claim 14 is
dependent upon claim 4, we have included claim 14 in Group II.
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constituting an admission by Appellants that the BACKGROUND
discussion is prior art.
The BACKGROUND discussion describes the method of fabricating
a CMOS image sensor. Spec. 5-8. This section refers to the method as
being a “related art.” Spec. 5. This description discusses many of the steps
claimed in claim 26.4 The section concludes by stating that “the related art
CMOS image sensor and method for fabricating the same have . . .
disadvantages.” Spec. 8. The subsequent DETAILED DESCRIPTION OF
THE INVENTION section of Appellant’s Specification describes
modifications to the related art process that would prevent the disadvantages.
Spec. 9-15. Thus, the Specification implies that the related art CMOS image
sensor fabrication process is not part of Appellant’s invention. Rather, the
related art CMOS image sensor fabrication process constitutes prior art upon
which Appellant’s method improves upon. See In re Preda, 401 F.2d 825,
826 (CCPA 1968) (noting that “in considering the disclosure of a reference,
it is proper to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom”).
Additionally, Appellant has made additional statements during
prosecution that supports this interpretation. See In re Lopresti, 333 F.2d
932, 934 (CCPA 1964) (holding that statements made in Appellant’s Appeal
Brief constituted an admission that the invention of another was prior art).
In particular, on page 8 of Applicant’s Amendment/Request for

4 Appellant selects claim 26 as representative of the group comprising claims
26 and 27. App. Br. 14; Reply Br. 2.
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Reconsideration After Non-Final Rejection, filed January 5, 2007,
Appellants state
Nonetheless, Applicant’s discussion of the background
discloses technology generally considered to be conventional.
As such, Applicant does not intend to claim subject matter
disclosed in the discussion of the background of the present
application. The present invention represents an improvement
over the subject matter disclosed in the background discussion
of the present application.

See also Ans. 9. These facts strongly imply that the BACKGROUND
section of Appellant’s Specification constitutes prior art.
MPEP § 21295 states:
A statement by an applicant in the specification or made
during prosecution identifying the work of another as “prior
art” is an admission . . . .

. . . [T]he examiner must determine whether the subject
matter identified as “prior art” is applicant’s own work, or the
work of another. In the absence of another credible
explanation, examiners should treat such subject matter as the
work of another.

Appellant argues that Appellant has never made a statement that the
BACKGROUND discussion describes “work of another.” App. Br. 16.
However, the Examiner correctly treated the BACKGROUND discussion as
work of another because Appellant did not provide any explanation as to
whether it was Appellant’s own invention. Ans. 9. Instead, Appellant
indicates that “it is possible that Appellant’s Background Discussion
describes an approach that Appellant took, but did not disclose to the public,
before arriving at the present invention. Alternatively, it could have been an

5 MPEP § 2129 Admissions as Prior Art.
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approach that Appellant’s coworkers took and kept secret before the present
invention.” App. Br. 18. These conclusory statements are nothing more
than attorney argument, unsupported by factual evidence. Attorney’s
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
For the reasons stated supra, we agree with the Examiner that
Appellant’s BACKGROUND section of the Specification is prior art.
Appellant argues that, even if Appellant’s Background Discussion is
considered prior art, the Background discussion and the cited references fail
to teach or “suggest injecting first p-type impurity ions using a tilted ion
injection method on inner walls of the trench sufficiently to form a first p-
type impurity area at an interface of a subsequently-formed photodiode . . .
and/or enhance the light-receiving characteristics of the subsequently-
formed photodiode.” App. Br. 19-20. Specifically, Appellant argues that
neither Wu nor Lin teaches a photodiode or tilt implantation to prevent
current leakage. App. Br. 19-20. However, the Examiner only uses Wu to
teach tilt angle implantation into the walls of a trench (Ans. 10) and Lin to
teach “forming a well through a pad oxide” (Ans. 11). Additionally,
Appellant’s argument that the Background discussion does not teach the
disputed limitations is merely a restatement of the claim and an argument
that it is not taught. App. Br. 20. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
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assertion that the corresponding elements were not found in the prior art.”).
Thus, we do not find Appellant’s arguments to be persuasive.
Appellant also argues that the motivation to combine the references is
based on hindsight reasoning. App. Br. 22. We disagree and add the
following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
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 applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellant’s invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 3-8. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
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grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 3-8. Thus, we agree with the Examiner’s
findings and conclusions.
Lastly, Appellant argues that the invention creates unexpected results
because it would not have been obvious to combine the references. App. Br.
26. As indicated above, we agree with the Examiner that the combination of
the references is obvious. Thus, this argument is not persuasive.
Appellant also argues that the Hwang Declaration, paragraphs 12-15,
explains that claim 26 provides unexpected results. App. Br. 24. However,
the cited portion of the Hwang Declaration merely indicates the
disadvantages of the Background section, not the unexpected results of the
invention. Additionally, paragraph 6 of the Hwang Declaration describes
benefits to using the process described by claim 26. However, neither the
Specification nor the Declaration actually states that these benefits, i.e.,
results, were unexpected. Cf. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995)
(“[W]hen an applicant demonstrates substantially improved results . . . and
states that the results were unexpected, this should suffice to establish
unexpected results in the absence of evidence to the contrary.”). Here, the
only characterization of the results as unexpected is in the Appeal Brief, and
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attorney argument is not evidence. Additionally, no evidence in the form of
test results was presented to compare the device performance and establish
the results were in any way unexpected. Thus, the record is devoid of
evidence showing that the benefits in the Hwang Declaration would not have
been expected.
For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 26 and 27.
Groups II-VI
Regarding Groups II-VI, Appellant makes the same arguments with
respect to claim 26 and additionally restates the limitations of the
representative claim and argues that the references fail to teach or suggest
those limitations. App. Br. 26-31; Reply Br. 6. As noted above, these
conclusory statements will not be considered arguments for separate
patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we
sustain the Examiner’s rejection of the claims grouped in Groups II-VI for
the same reasons discussed supra with respect to claim 26.
CONCLUSIONS
The Examiner did not err in finding that Appellant’s disclosed
“BACKGROUND” section is prior art.
The Examiner did not err in finding that the combination of AAPA,
Wu, and Lin teaches or suggests injecting first p-type impurity ions using a
tilted ion injection method on inner walls of the trench sufficiently to form a
first p-type impurity area at an interface of a subsequently-formed
photodiode and/or enhance the light-receiving characteristics of the
subsequently-formed photodiode.
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The Examiner did not err in finding it obvious to combine AAPA,
Wu, and Lin.

SUMMARY
The Examiner’s decision to reject claims 4-7, 9, 10, 12, and 14-27 is
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).
AFFIRMED

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