Ex Parte Kennedy et al

Patent Trial and Appeal Board

Sep 21, 2018

13164432 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/164,432 06/20/2011
84250 7590 09/25/2018
LANDO & ANASTASI, LLP
R2013
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Adam M. Kennedy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
R2041-709110(1 l-161 l) 1792
EXAMINER
SEGURA, CYNTHIA
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
09/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@LALaw.COM
CKent@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM M. KENNEDY, STEPHEN H. BLACK, and
STEP AN THEODOR ANTON BAUR
Appeal2016-006142
Application 13/164,432
Technology Center 2600
Before GREGG I. ANDERSON, MATTHEW R. CLEMENTS and
JOHN F. HORVATH Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ). We
affirm.
STATEMENT OF THE CASE
Appellants' invention is a camera with a multi-chip system formed in
a package ("MCSiP"). Spec. 3. The MCSiP includes a set of electronics,
an encapsulate, and a plurality of interconnects fabricated on a die of
semiconductor material. Id. Each die is operable to provide a functional
component of a computing system operable to receive a signal describing
Appeal 2016-006142
Application 13/164,432
electromagnetic radiation detected by an imaging sensor and facilitate
generating an image according to the signal. Id.
Claim 1 is representative:
1. A camera comprising:
a lens;
an image sensor configured to receive electromagnetic
radiation from the lens and generate a signal describing the
electromagnetic radiation;
a multi-chip system in a package (MCSiP), the MCSiP
compnsmg:
a set of electronics comprising a plurality of bare
integrated circuit dies and other passive or active electronic
components, each die operable to provide a functional
component of a computing system of the camera, the
computing system operable to:
receive the signal describing the
electromagnetic radiation detected by the imaging sensor; and
facilitate generating an image according to
the signal;
an encapsulate compnsmg an adhesive molding
compound deposited outwardly from the set of electronics
comprising the dies and the other passive or active electronic
components, wherein the set of electronics is embedded in the
adhesive molding, the adhesive molding is directly attached to
the set of electronics, and the encapsulate is operable to hold the
set of electronics in position; and
a plurality of interconnects operable to
communicatively couple each die to other dies, the other
electronic components associated with the MCSiP, or
components external to the MCSiP; and
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Application 13/164,432
a display coupled to the MCSiP,
wherein at least one of the dies comprises a processor for
image processing, the processor configured to receive the signal
from the imaging sensor and format the signal to facilitate
displaying the image, and
wherein the display is configured to receive the formatted
signal from the processor and display the image based on the
formatted signal.
THE REJECTIONS
1. The Examiner rejected claims 1-3, 5-12 and 14 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Frantz et al., (US 7,556,442
B2, issued July 7, 2009) ("Frantz"), Johnson, (US 2002/0140108 Al,
published Oct. 3, 2002) ("Johnson"), and Olsen et al., (US 2006/0054782
Al, published Mar. 16, 2006) ("Olsen"). Final Act. 3-9. 1
2. The Examiner rejected claims 4 and 13 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Frantz, Johnson, Olsen, and
Yang et al., (US 2008/0157250 Al, published July 3, 2008) ("Yang"). Id. at
9-11.
3. The Examiner rejected claims 15, 16, and 19-24 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Frantz, Johnson, (US
5,726,079, issued Mar. 10, 1998) ("Johnson '079"), and Olsen. Id. at 11-17.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed July 15,
2015 ("Final Act."); (2) the Appeal Brief filed December 15, 2015 ("App.
Br."); (3) the Examiner's Answer mailed April 18, 2016 ("Ans."); and (4)
the Reply Brief filed June 1, 2016 ("Reply Br.").
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Application 13/164,432
4. The Examiner rejected claims 17 and 18 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Frantz, Johnson '079, Olsen,
and Yang. Id. at 17-19.
ISSUES
1. Does Frantz suggest processing an image such that the
Examiner's rejection based on the combined teachings of Frantz, Johnson,
and Olsen has a reasonable basis supported by rational underpinnings?
2. Under§ 103, has the Examiner erred in rejecting claim 1 by
finding that Frantz, Johnson, and Olsen collectively would have taught or
suggested "a display coupled to the MCSiP, wherein at least one of the dies
comprises a processor for image processing, the processor configured to
receive the signal from the imaging sensor and format the signal to facilitate
displaying the image, and wherein the display is configured to receive the
formatted signal from the processor and display the image based on the
formatted signal" ("display limitation") as recited in claim 1?
ANALYSIS
ISSUE No. 1: Has the Examiner articulated a sufficient rationale for
combining the teachings of Frantz, Johnson, and Olsen?
The Examiner relies on Frantz for most of the limitations of claim 1.
Final Act. 3--4. The Examiner relies on Johnson to teach the "encapsulate
comprising an adhesive molding compound" limitation. Id. at 4. Appellants
do not dispute the preceding findings. The Examiner relies on Olsen,
combined with Frantz and Johnson, to teach the disputed display limitation.
Id. at 5---6, see id. at 6 (basis for combination includes "the display is
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Application 13/164,432
configured to receive the formatted signal from the processor and display the
image based on the formatted signal for the purpose of providing a compact
solid-state camera with multiple functionalities.)"; see also App. Br. 5
(Examiner relies on Olsen "to provide a display coupled to the MCSiP ... to
facilitate displaying the image.").
Appellants describe Frantz's technology as "compar[ing] a first image
and a second image, to detect a change between the first and second image,
and subsequently transmit an indication of the detected change instead of
transmitting an image." App. Br. 5 ( citing Frantz, 4:26-32, Abstract). In
addition, Appellants characterize Frantz as disclosing a monitoring unit
which is "designed not to transmit optical images (an energy-intensive
process), but instead to transmit a decision." Id. ( citing Frantz, 1: 11-17,
3:31--40).
Appellants characterize Frantz's monitoring unit as looking to two
successive images to detect a change beyond a certain magnitude, and
transmitting an indication that such a change has been detected instead of
transmitting an image. App. Br. 5 (citing Frantz, 3:41--47). Appellants
contrast Olsen's technology to that of Frantz, contending Olsen "is directed
to a digital camera that generates a composite image using data from
multiple arrays of photo detectors." Id. (citing Olsen, Abstract).
Appellants argue that Olsen's technology is "incompatible" with
Frantz. App. Br. 5. Based on the alleged technological differences,
Appellants conclude that one of ordinary skill "would not have been
motivated to combine the technology of Olsen, which is directed to
'generat[ing] a composite image,' (Abstract) with the technology of Frantz,
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which overtly teaches away from creating or displaying a processed image."
Id. at 6.
Prior to appeal, the Examiner responded to Appellants' "teaches
away" and lack of motivation arguments in an Advisory Action ("Advisory
Act.") dated September 17, 2015. In the Advisory Action, the Examiner
further specifies his basis for the combination of Olsen with Frantz, asserting
that "[t]he method claim 8 and the apparatus claims 5-7 of Frantz are not
limited in any form to just transmitting an indication of a change between
images." Advisory Act. 3. In his Answer, the Examiner repeats this
position and sets out claims 5 through 8 from Frantz in their entirety. Ans.
3---6. Frantz's claim 8 from the Answer is reproduced below.
Claim 8: A method for providing an optical image acquisition
and information transmission system having an image sensor
unit, a processor/memory unit, a wireless unit, and a power
unit, the method comprising:
fabricating at least an image sensor unit and a
processor/memory unit in a stack;
encapsulating at least the image sensor unit and
processor/memory unit with a transparent dielectric with a
lens formed in a portion of the transparent dielectric over the
image sensor unit; [ and]
coupling a wireless unit to the stack for transmitting
processed image data.
Ans. 3 (emphasis in original); see also Frantz 4:56---67. According to the
Examiner, claim 8 of"Frantz strongly supports and/or suggest[s] the
capability and functionality of transmitting any type of image data including
images." Id. (emphasis added).
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We agree, and on this record, we find no error in the Examiner's
rationale for combining Frantz, Johnson, and Olsen. It is proper to refer to
the claims as part of a reference's disclosure. See In re Mosher, 79 F.2d
911, 913 (C.C.P.A. 1935) (considering claims of prior art reference in
affirming rejection). Accordingly, the Examiner properly considered the
claims as part of the disclosure of Frantz. Consideration of the claims as
part of the disclosure of Frantz does not "improperly expand" Frantz's
disclosure as Appellants contend. See Reply Br. 2.
Appellants contend that claim 8 's recitation of "image data," when
considered in light of Frantz's specification, "does not include an image
itself." Reply Br. 3. We disagree. Rather, we agree with the Examiner that
claim 8 of "Frantz strongly supports and/or suggest[s] the capability and
functionality of transmitting any type of image data including images." See
Ans. 3 (emphasis added). For example, claim 12 of Frantz, which directly
depends from claim 8, discloses "transmitting processed image data that
does not include an image." Frantz, 6:4---6 (emphasis added). This implies
that the "processed image data" transmitted in claim 8 is broad enough to
encompass "an image."
We are not persuaded that there is such a technological difference
between Frantz and Olsen that a person of ordinary skill would not have
combined them because Frantz "teaches away from creating or displaying a
processed image." See App. Br. 6. As to "teaching away," Appellants do
not sufficiently demonstrate that a person of ordinary skill would be
discouraged from the claimed invention by following all of Frantz's
teachings or that the "combination would produce an inoperative result."
See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed.Cir.2007).
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Indeed, Frantz describes prior art intruder detection systems that
operate by sending "the captured image . . . to a monitor, the monitor
reproducing the captured image, and an observer would inspect the image to
determine whether an intruder was present." Frantz, 3:44--47 (emphasis
added). Although the preceding was not cited by the Examiner, it further
confirms the Examiner's finding that Frantz at least suggests a combination
with a technology that displays a captured image, like Olsen.
Accordingly, for the reasons discussed above, we find the Examiner
has shown sufficiently that Frantz teaches or suggests that processed images
may be transmitted in the context of capturing the images and, as such, a
person of ordinary skill would have been motivated to display the
transmitted images on a display based on the teachings of Olsen.
ISSUE No. 2: Does the combination of Frantz, Johnson, and Olsen
teach the display limitation?
Appellants argue that the display limitation has not been taught by the
combination of cited references because "[ e ]ven if the technology of Frantz
technology of Frantz was combined with the technology of Olsen, it is not
clear how the technology of Olsen would generate (and display) an optical
image based on the image extracted information ( e.g., an indication of
changing image conditions) generated by the technology of Frantz." App.
Br. 7-8. This argument is not persuasive because Frantz is not limited to
generating only an indication of changing image conditions. As discussed in
connection with Issue No. 1, the Examiner has identified teachings in Frantz
that "strongly supports and/or suggest[s] the capability and functionality of
transmitting any type of image data including images." Ans. 3. Thus, we
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find no error in the Examiner's finding that the combination of cited
references, specifically based on the teachings of Olsen, teach the display
limitation. See Final Act. 5 ( citing Olsen ,r,r 21, 26, 461, 599---600, 632, Figs.
22A, 76, 80 (unit 520 includes units 534, 536, 538).
SUMMARY AND CONCLUSION
Appellants argue that independent claim 15 is patentable for the same
reasons as independent claim 1, and that dependent claims 2-14 and 16-24
are patentable for the same reasons as the independent claims from which
they depend. App. Br. 8-11. Those arguments are not persuasive for the
same reasons stated above with respect to claim 1.
Accordingly, the Examiner did not err in rejecting claims 1-24 under
§ 103.
ORDER
The Examiner's decision rejecting claims 1-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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