Ex Parte Kim et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201713545623 (P.T.A.B. Feb. 24, 2017) 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. 13/545,623 07/10/2012 Young Kim 2557SI-001526/US/CPA 6731 30593 7590 02/28/2017 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER EURICE, MICHAEL ART UNIT PAPER NUMBER 2693 NOTIFICATION DATE DELIVERY MODE 02/28/2017 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): dcmailroom@hdp.com pshaddin@hdp.com j Castellano @hdp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOUNG KIM, I-HUN SONG, SEUNG-EON AHN, SANG-HUN JEON, CHANG-JUNG KIM, and SUNG-HO PARK Appeal 2016-006975 Application 13/545,6231 Technology Center 2600 Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—33. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application relates to “a light sensing circuit.” Spec. Abstract. Claim 1 is illustrative and reproduced below. 1 According to Appellants, the real party in interest is Samsung Electronics Co. Ltd. App. Br. 2. Appeal 2016-006975 Application 13/545,623 1. A light sensing circuit, comprising: an oxide semiconductor transistor including a channel layer including an oxide semiconductor material, wherein the oxide semiconductor transistor is configured to operate as both a light sensing device that senses light and a switch that outputs light sensing data in response to the sensed light without accumulating charges associated with the incident light in a capacitor. Rejection Claims 1—33 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Hirabayashi et al. (US 2009/0248344 Al; Oct. 1, 2009) and Tanaka et al. (US 8,194,469 B2; June 5, 2012). Final Act. 2. ISSUES Did the Examiner err in finding the combination of Hirabayashi and Tanaka teaches or suggests an oxide semiconductor transistor “including a channel layer including an oxide semiconductor material” and “configured to operate as both a light sensing device that senses light and a switch that outputs light sensing data . . . without accumulating charges ... in a capacitor,” as recited in claim 1 ? ANALYSIS Hirabayashi teaches “an optical detection device” that “has an optical detection transistor and outputs a signal corresponding to the amount of light irradiated to the optical detection transistor.” Hirabayashi 1 8. A certain amount of “optical degradation” occurs in the optical detection transistor, and in order to determine the amount of degradation and adjust for it, Hirabayashi teaches “a threshold value detection transistor that has the same electrical characteristics as those of the photo detection transistor and is in the same light-exposure state as that of the photo detection transistor is 2 Appeal 2016-006975 Application 13/545,623 provided.” Id. Thus, there are two light-detecting transistors. An example is shown in Figure 1 of Hirabayashi, which is reproduced below. “FIG. 1 is a diagram that schematically illustrates an example of the configuration of an optical detection device 100.” Hirabayashi 147. “The photo-sensor unit 10 includes a photo detection transistor 11, a capacitor 12, and a switch 13.” Id. 148. “The threshold voltage detection unit 20 includes a threshold value detection transistor 21.” Id. 150. However, unlike the photo-sensor unit 10, the threshold voltage detection unit 20 does not include a separate capacitor or switch. Appellants contend photo detection transistor 11 of photo-sensor unit 10 fails to meet the claimed negative limitation of “without accumulating charges ... in a capacitor” because capacitor 12 accumulates charges. App. Br. 8. However, the Examiner correctly finds “Hirabayashi discloses a light sensing transistor circuit providing a useful light-dependent output signal 3 Appeal 2016-006975 Application 13/545,623 without the need for charge accumulation” in “light-sensing circuit 20.” Ans. 8. Appellants further contend “the threshold value detection transistor 21 [of light-sensing circuit 20] does not correspond to the claimed oxide semiconductor transistor that is configured to operate as a light sensing device because Hirabayashi already teaches a photo detection transistor 11 App. Br. 8. But whether Hirabayashi also teaches other components is irrelevant as those components do not form a basis of the outstanding rejection. The only relevant inquiry is whether the relied-upon threshold value detection transistor 21 meets the claimed structural limitations. Here, we agree with the Examiner that threshold value detection transistor 21 “is configured to operate as ... a light sensing device that senses light.” For example, “the threshold value detection transistor 21 is manufactured in the same formation process as the formation process of the photo detection transistor 11” and “has the same electrical characteristics.” Hirabayashi 1 50. Because they “are arrayed adjacent to each other, the amount of illuminating radiation, that is irradiating light that enters as a beam of incident light into the threshold value detection transistor 21 is the same as the amount of irradiating light that enters as a beam of incident light into the photo detection transistor 11.” Id. Figure 1 depicts irradiating light moving toward both transistors 11 and 21. Thus, we find no error in the Examiner finding Hirabayashi teaches or suggests a transistor “configured to operate as ... a light sensing device that senses light.” We are not persuaded by Appellants’ argument regarding “a switch” for similar reasons. App. Br. 6—8. Whether Hirabayashi or Tanaka also teach other switches external to the transistor fails to rebut the Examiner’s 4 Appeal 2016-006975 Application 13/545,623 findings that the transistors themselves provide a function of a switch. Ans. 4—6; Final Act. 3. Appellants’ mere assertion that “Hirabayashi does not teach that the transistor 21 operates as a switch” without any explanation or addressing the Examiner’s findings is not sufficient. Reply Br. 5—6; see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“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 assertion that the corresponding elements were not found in the prior art”); 37 C.F.R. § 41.37(c)(l)(iv). Appellants also argue Hirabayashi’s “threshold value detection transistor 21 is not an ‘oxide semiconductor transistor including a channel layer including an oxide semiconductor material’ as claimed.” App. Br. 9. However, Appellants have not adequately explained why the Examiner’s findings are erroneous, including that “the plain meaning of an oxide semiconducting material is any semiconducting element which is oxygenated in any manner (including amorphous silicon)” (Ans. 9); Hirabayashi teaches “the photo detection transistor 11 is configured as an N- channel metal oxide semiconductor (MOS), though not necessarily limited thereto” (Hirabayashi 148; Ans. 4); Hirabayashi teaches “the threshold value detection transistor 21 is manufactured in the same formation process as . . . the photo detection transistor 11,” including the same materials (Hirabayashi | 50; Ans. 8); Tanaka teaches “an oxide semiconductor” including “metal oxides” (Tanaka 3:34-47; Ans. 4—5; Final Act. 3); and “[t]he motivation to modify Hirabayashi with Tanaka arises from the benefit deriving from the inexpensive manufacturing of systems using oxide 5 Appeal 2016-006975 Application 13/545,623 semiconductor components.'1'’ Final Act. 4 (emphasis added) (citing Tanaka 1:32-41). Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 2—33, which Appellants argue are patentable for similar reasons. See App. Br. 9; 37 C.F.R. § 41.37(c)(l)(iv).2 DECISION For the reasons above, we affirm the Examiner’s decision rejecting claims 1—33. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 2 The Examiner also concludes “the ‘wherein’ clause . . . provides only descriptions of what the feature . . . does, without providing any additional information on what the feature ... is, consequently providing only purely functional descriptions which further broaden the claim as a whole by embracing any conceivable means of performing the functions described.” Ans. 3. In the event of further prosecution, the Examiner may wish to consider whether the “wherein” clause renders the claims unpatentable for lack of enablement, lack of written description, or being directed to an abstract idea. See, e.g., Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (“At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”); AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc) (“Such claims merely recite a description of the problem to be solved while claiming all solutions to it. . . leaving it to the . . . industry to complete an unfinished invention.”); In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983) (“a claim which is of such breadth that it reads on subject matter as to which the specification is not ‘enabling’ should be rejected under the first paragraph of § 112”) (quotation omitted). 6 Copy with citationCopy as parenthetical citation