Ex Parte Hynecek

Patent Trial and Appeal Board

Jan 23, 2013

11079801 (P.T.A.B. Jan. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAROSLAV HYNECEK
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Appeal 2011-013662
Application 11/079,801
Technology Center 2600
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013662
Application 11/079,801

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 8-13, 17, and 18 (App. Br. 4). Claims 3-7, 14-16, and 19 were
objected to as being dependent from a rejected base claim (id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. An image sensor pixel circuit, comprising:

a photodiode including a charge detection node
configured to convert impinging photons into electrons and to
provide a large detection node capacitance during sensing of the
charge detection node and a low detection node capacitance
during reset of the charge detection node.

Claims 1, 2, 8-13, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Oh (U.S. Patent No. 6,441,412 B2) in view of
Bencuya (U.S. Patent No. 6,911,640 B1) (Ans. 4-12).

ISSUE
Appellant’s responses to the Examiner’s positions present the
following issue:
Did the Examiner err in concluding that the combination of Oh and
Bencuya renders claims 1, 2, 8-13, 17, and 18 obvious because Bencuya
teaches away from the limitation “to provide a large detection node
capacitance during sensing of the charge detection node and a low detection
node capacitance during reset of the charge detection node,” as recited in
independent claim 1 and as similarly recited in independent claims 8 and 9?
Appeal 2011-013662
Application 11/079,801

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ANALYSIS
Appellant contends that the Examiner erred in concluding that the
combination of Oh and Bencuya renders claims 1, 2, 8-13, 17, and 18
obvious because Bencuya teaches away from the claim limitation
emphasized above (App. Br. 10-17). Appellant argues that “while Bencuya
teaches that reset noise can be reduced by reducing capacitance of the sense
node, Bencuya also clearly indicates that such a reduction is undesirable as it
also reduces the overall dynamic range in the camera system” (id. at 11).
Appellant also argues that Bencuya “does not teach a variable sense node
capacitance” (id. at 15). Appellant argues that Bencuya instead “teaches that
the capacitance in such conventional devices is also reduced during the
sensing period and most likely fixed” (id.).
We conclude with respect to the apparatus claims on appeal (i.e., 1, 2,
8, 13, 17, and 18), however, that the disputed limitation “to provide” a
certain capacitance is a statement of intended use or purpose regarding the
recited structure. “An ] intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Here,
the disputed functional limitation of “providing” is not positively recited as
actually being performed (see representative claim 1), but rather, the claim
merely recites a charge detection node that is capable of providing.
Accordingly, we find no error in the Examiner’s obviousness rejection of
claims 1, 2, 8, 13, 17, and 18.
Appeal 2011-013662
Application 11/079,801

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With respect to the method claims (i.e., claims 9-12), the Examiner
concluded that Bencuya does not teach away from the claimed invention but
instead, merely teaches that reducing the capacitance at the sense node may
have the undesirable effect of reducing “the overall dynamic range in the
camera system” (Ans. 9) (citing Bencuya, col.1, ll. 38-41). The Examiner
also concluded that the combination of Oh and Bencuya teaches a variable
capacitance at the sense node because “Oh teaches wanting relatively high
capacitance during sensing (providing an increase in dynamic range) . . .
while Bencuya teaches a decrease in capacitance of the photodiode reduces
reset noise” (id. at 12).
We agree with the Examiner’s conclusion. Oh discloses that “since a
maximum output signal is directly proportional to the number of electrons to
be extracted from the photodiode, the maximum output signal increases with
increased electron acceptability, i.e., an increased capacitance ] of the
photodiode” (col. 2, ll. 24-28). Bencuya discloses that “[r]educing the
capacitance of the sense node can reduce reset noise” (col. 1, ll. 38-39).
Thus, the claim limitation of increasing the capacitance after reset and
reducing the capacitance during reset is a combination of familiar elements
from Oh and Bencuya respectively that would have yielded predictable
results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We also
agree with the Examiner that there may be cameras in which the decrease in
the dynamic range as mentioned in Bencuya may be tolerable such as
cameras designed to be used in a uniform lighting environment (see Ans. 10-
11). That is, we conclude that Bencuya merely mentions a disadvantage of a
capacitance reduction and does not teach away from lowering capacitance
for all cameras used in all environments. Accordingly, we find no error in
Appeal 2011-013662
Application 11/079,801

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the Examiner’s obviousness rejection of the method claims (i.e., claims 9-
12).

DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 8-13, 17, and
18 as being unpatentable under 35 U.S.C. § 103(a).
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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