Ex Parte LIN

Patent Trial and Appeal Board

Aug 6, 2018

14466412 (P.T.A.B. Aug. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/466,412 08/22/2014
60601 7590 08/07/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ho-Tai LIN
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.
094 l/3057PUS 1 5866
EXAMINER
WALL, VINCENT
ART UNIT PAPER NUMBER
2822
MAIL DATE DELIVERY MODE
08/07/2018 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 HO-TAI LIN
Appeal2018-000549
Application 14/466,412 1
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1 and 4--19.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, VisEra Technologies Company Limited, which,
according to the Brief, is the real party in interest (Br. 2).
Appeal2018-000549
Application 14/466,412
Independent claim 1 below is illustrative of the subject matter on
appeal ( emphases added):
1. An imaging device, comprising:
a plurality of photoelectric conversion elements formed
on a substrate in an active area of the imaging device;
a microlens structure disposed above the photoelectric
conversion elements;
a dummy pattern disposed above the substrate in a
peripheral area of the imaging device surrounding the active
area, wherein the dummy pattern includes a plurality of
protruding elements and the shape of the protruding element
comprises a cylinder, a prism, a cone or a pyramid; and
a passivation film conformally formed on the micro lens
structure and the dummy pattern, wherein the passivation film
on a top of the dummy pattern has a surface area smaller than
a surface area of the peripheral area outside of the micro lens
structure.
The Examiner maintains the following rejections2 :
(a) claims 1, 4--10, and 12-19 under 35 U.S.C. § 103 as being
unpatentable over Kurihara (US 2012/0043634 Al, published Feb. 23, 2012)
("Kurihara") and Kim et al. (US 2006/0228826 Al, published Oct. 12, 2006)
("Kim"); and
(b) claim 11 under 35 U.S.C. § 103 as being unpatentable over
Kurihara in view of Kim and further in view of Rhodes (US 6,307,243 B 1,
issued Oct. 23, 2001) ("Rhodes").
2 We refer to the Specification, filed Aug. 22, 2014 ("Spec."); the Final
Office Action dated Apr. 20, 2016 ("Final Act."), Appellant's Appeal Brief
filed Oct. 21, 2016 (Br."); and the Examiner's Answer, dated Apr. 11, 2017
("Ans.").
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Application 14/466,412
ANALYSIS
Rejection over Kurihara and Kim
Claims 1, 4--10, and 12-19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Kurihara and Kim. Appellant presents arguments
for claims 1, 6, 7, and 15 (Br. 5-10). Appellant does not argue claims 4, 5,
8-10, 12-14, and 16-19 separately from claim 1 (id. at 9). Therefore, we
address claims 1, 4, 5, 8-10, 12-14, and 16-19 as a first group, claim 6 as a
second group, claim 7 as a third group, and claim 15 as a fourth group.
Claims 1, 4, 5, 8-10, 12-14, and 16-19
Appellant contends Kurihara discloses microlenses 9-F in an
ineffective pixel region 12 but does not disclose the passivation film recited
in claim 1 (id. at 5---6). Appellant asserts Kim discloses a microlens
protection layer 29 that conformally covers microlenses 28, a planarization
layer 27, and a passivation layer 25 but does not disclose the dummy pattern
of claim 1 (id. at 6). Appellant argues that one of ordinary skill would have
only understood that the microlens protection layer 29 is used to protect the
microlenses 28 above RGB pixels in Kim's device and a combination of
Kurihara and Kim would have only provided the microlens protection layer
29 for those microlenses 28, not on other elements with other patterns (id. at
6-7). Appellant further asserts one of ordinary skill in the art would
consider the microlenses 9-F in Kurihara's ineffective region 12 as an
extension from the microlenses 9-G in the central region 14 and thus the
microlenses 9-F are technically irrelevant to the claimed dummy pattern (id.
at 8).
Appellant's arguments are unpersuasive because they address the
applied references individually but not what the combination of applied
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Application 14/466,412
references would have suggested to one of ordinary skill in the art ("the test
for combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art." In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971)). Here, the Examiner finds Kurihara
discloses a device including, among other things, microlens structures 9-G
disposed above photoelectric conversion elements 1 and a dummy pattern of
microlens elements 9-F in a peripheral area 12. Final Act. 4; Ans. 3.
Kurihara discloses a microlens array that includes microlenses 9-F in an
ineffective pixel region 12 that lacks photoelectric transducers 1 and
surrounds a central region 14 that includes microlenses 9-F disposed above
photoelectric transducers 1. Kurihara ,r,r 2, 32, 41--42, Figs. 4, 5C. Thus,
Kurihara' s disclosure supports the Examiner's findings.
The Examiner finds Kurihara does not disclose the passivation film of
claim 1 (Final Act. 4--5) but finds Kim discloses a passivation film
conformally formed on a microlens structure 29 (id. at 6). The Examiner
concludes it would have been obvious to modify Kurihara to include Kim's
passivation film to protect Kurihara's microlenses (id.). The Examiner
explains that the combination would have resulted in a passivation film
extending over Kurihara' s dummy pattern because Kim teaches that the
passivation film protects microlenses and thus one of ordinary skill in the art
would have coated all microlenses of Kurihara's device, both active and
dummy lenses (id.; Ans. 4).
Kim discloses a method of fabricating an image sensor that includes,
among other things, a planarization layer 27, micro lenses on the
planarization layer 27, and "[a] microlens protection layer 29 is formed over
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the entire surface of the above resultant structure to protect the micro lenses
28" (Kim ,r,r 2, 12). Kim discloses other embodiments including a
planarization layer 57, micro lenses 58, and a micro lens protection layer 59
(id. ,r 37). As shown in Figures 2A and 4C of Kim, the micro lens protection
layers 29, 59 not only conform to upper surfaces of the microlenses 28, 58
but to upper surfaces of planarization layers 27, 57 (i.e., the entire surface of
a resultant structure for Kim's device). Thus, Kim's disclosure supports the
Examiner's finding that the combination of Kurihara and Kim would have
suggested a passivation film (i.e., microlens protection layer) conformally
formed on Kurihara's micro lenses 9-G of the central region 14 as well as on
the "dummy" microlenses 9-F of the ineffective pixel region 12.
The Examiner addresses the limitation of "wherein the dummy pattern
includes a plurality of protruding elements and the shape of the protruding
element comprises a cylinder, a prism, a cone or a pyramid" of claim 1 by
finding Kurihara does not disclose the recited shapes but the limitation
regards a change from the convex shape of Kurihara' s micro lens structure
that would lack any criticality (Final Act. 4---6). Specifically, the Examiner
finds paragraphs 3 5 and 3 7 of Appellant's Specification state that the shape
of the dummy pattern reduces contact area between a tape 120 and a
passivation layer 112 and finds the shape of Kurihara's micro lenses 9-F are
the same as those for the protruding elements 114 in Appellant's Figure 2
(Ans. 7). The Examiner concludes that changing the shape of Kurihara's
microlenses 9-F in the ineffective pixel region 12 to a shape recited in claim
1 would have involved an obvious change of shape without any critical
aspect (id.).
Appellant contends the Specification, including paragraphs 35 and 37,
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does not indicate that there is no difference between a convex-shaped
dummy pattern and a cone-shaped or pyramid-shaped dummy pattern and
their difference is not a meaningless change (Br. 7-8).
Appellant's arguments are unpersuasive. Paragraph 35 of the
Specification states that Appellant's dummy pattern "reduces a contact area
between the tape 120 and the passivation film 112" and thus "effectively
prevents the passivation film 112 from peeling after the tape 120 is removed
from the imaging device 20." Paragraph 36 of the Specification states that
the dummy pattern can include protruding elements, which can be shaped
like a cone or a pyramid, and paragraph 37 discloses that the cone-shaped
and pyramid-shaped protruding elements 114 "reduce a contact area between
the passivation film 112 and the tape 120."
Figure 5C of Kurihara depicts micro lenses 9-F having a convex shape
in the ineffective pixel region 12, which appear to be the same shape as the
protruding elements 114 depicted in Appellant's Figure 2, as the Examiner
finds. Appellant's Specification describes the protruding elements 114
depicted in Appellant's Figure 2 as having "a convex shape" (Spec. ,r 31),
which results in a reduced contact area between a tape 120 and the
passivation film 112 because "the passivation film 112 on the tops of the
protruding elements 114 of the dummy pattern DP has a surface area smaller
than a surface area of the peripheral area B" (id. ,r 34). Moreover, paragraph
47 of the Specification lists convex-shaped, cone-shaped, pyramid-shaped,
cylinder-shaped, and prism-shaped as possible shapes for the protruding
elements without distinction between them, such as with regard to their
capability to reduce the contact area between the passivation film 112 and
the tape 120 and thus prevent peeling of the passivation film 112.
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In view of the above, the convex-shaped micro lenses 9-F of the
ineffective pixel region 12 depicted in Kurihara's Figure 5C are the same or
substantially the same as the protruding elements 144 in Appellant's Figure
2, which Appellant's Specification indicates would perform the same
function as Appellant's claimed protruding element shapes to reduce contact
area between a tape and a passivation layer so the passivation layer does not
peel when the tape is removed. Although Kurihara does not disclose the
specific shapes recited in claim 1 for its micro lenses 9-F, such a
modification would have involved the selection of another shape without a
change in function (i.e., the reduction of contact area between a tape and a
passivation layer) because Appellant's Specification does not indicate a
difference in function between a convex shape and the shapes recited in
claim 1. Nor has Appellant cited evidence of criticality or unexpected
results to demonstrate a difference between convex-shaped dummy
microlenses and the shaps for dummy pattern protruding elements recited in
claim 1.
Appellant asserts that the combination of Kurihara and Kim would not
have provided a passivation film on a top of the dummy pattern having a
surface area smaller than a surface area of the peripheral area outside of the
micro lens structure, as recited in claim 1, because whether Kurihara' s
microlenses 9-F can have different surface areas than microlenses 9-G is
irrelevant to the limitation regarding surface areas (Br. 8-9). However,
because the resulting modification of Kurihara, as modified in view of Kim,
to include dummy pattern protruding elements having shapes of a cylinder,
prism, cone, or pyramid would have resulted in a structure identical or
substantially identical to that recited in claim 1, the passivation film of the
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combination would have "a surface area smaller than a surface area of the
peripheral area outside of the micro lens structure," as recited in claim 1.
In view of the above, a preponderance of the evidence in the record
supports the Examiner's rejection of claim 1. Appellant does not argue
claims 4, 5, 8-10, 12-14, and 16-19 separately from claim 1 (id. at 9).
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103 rejection of claims 1, 4, 5, 8-10, 12-14, and
16-19.
Claim 6
Claim 6 depends from claim 1 and further recites "wherein the
passivation film on the top of the dummy pattern is in contact with a tape
covering the microlens structure and the dummy pattern."
The Examiner finds paragraph 4 of the Specification admits that the
use of tape to cover a passivation layer was known in the art and concludes it
would have been obvious to modify Kurihara, as modified in view of Kim,
to use a tape to hold a wafer together while an individual die is diced from it
(Final Act. 7).
Appellant contends the applied references do not teach or suggest a
tape to cover a passivation film and paragraph 4 of the Specification recites a
brief summary for the invention, not the prior art (Br. 9).
Even assuming arguendo that paragraph 4 of the Specification does
not contain admitted prior art, a person of ordinary skill in the art would
have appreciated that contacting a passivation film with a tape, as recited in
claim 6, was known in the art. For example, Kim serves as evidence that it
was known to contact a microlens protection layer 29 with a tape 31, such as
to reduce contamination caused by particles during a grinding operation
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(Kim ,r 14, Fig. 2B). Kim states that such an arrangement "may have several
disadvantages ... since the tape 31 has a certain level of adhesion pressure,
the microlens protection layer 29 is likely to crack when the tape 31 is
removed" and adhesive residues may remain (id. ,r 18). In view of this, Kim
discloses placing an additional photoresist layer 70 between a tape 71 and a
microlens protection layer 59 (id. ,r 40). However, something that is known
or obvious does not become patentable simply because it has been described
as somewhat inferior to some other product for the same use. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Moreover, "just because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012). Here, although Kim states a microlens protection layer is
likely to crack when a tape is removed from it and adhesive residue may
remain, this implies that the protection layer may not crack and adhesive
residue may not be present when a tape is removed, even though this may
not occur as often as may be desired. As a result, Kim demonstrates it was
known to contact a passivation layer with a tape for protection, even if such
an embodiment was considered inferior to embodiments in which an
additional layer was placed between the microlens protection layer and the
tape (e.g., the embodiment depicted in Kim's Fig. 4C).
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claim 6.
Claim 7
Claim 7 depends from claim 1 and further recites "wherein the surface
area of the passivation film on the top of the dummy pattern is 50-80 % of
the surface area of the peripheral area outside of the micro lens structure."
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Appellant argues that the applied references do not teach or suggest
that a surface area of a passivation film on the top of a dummy pattern is
related to the surface area of a peripheral area outside of a micro lens
structure and thus do not disclose or suggest the recitations of claim 7 (Br.
9-10).
Appellant's arguments are unpersuasive. As discussed above with
regard to the rejection of claim 1, the combination of Kurihara and Kim
would have provided a structure that is identical or substantially identical to
that claimed. Thus, although the combination of Kurihara and Kim does not
explicitly disclose the limitations of claim 7, the combination suggests a
structure that satisfies those limitations.
We further note that "the top of the dummy pattern" is not defined in
claim 7. Thus, the broadest reasonable interpretation of this language may
encompass the very tip of a protruding portion or some cross-sectional width
a distance below the tip of the protruding portion. Selecting one or the other
may affect the surface area of a passivation film on the protruding portion,
especially when the latter is cone-shaped, pyramid-shaped, or another shape
that varies from top to bottom.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claim 7.
Claim 15
Claim 15 depends from claim 1 and recites "wherein the dummy
pattern is randomly arranged in the peripheral area, and a portion of the
peripheral area is not occupied by the dummy pattern."
The Examiner finds Kurihara is silent with respect to the limitations
of claim 15 but considers the limitations obvious changes in the placement
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and concentration of lenses that would have been within the level of one
skilled in the art, particularly in view of a lack of a specified criticality for
the recitations (Final Act. 9-10; Ans. 10-11).
Appellant argues the applied references do not disclose or suggest the
recitations of claim 15 and Kurihara suggests that the ineffective pixel
region 12 is full of micro lenses 9-F (Br. 10). Appellant's arguments are
persuasive. A determination that an invention would have been obvious to
one of ordinary skill in the art under § 103 is a conclusion of law based on
fact (Panduit Corp. v. Dennison 1Vlfg. Co., 810 F.2d 1561, 1568 (Fed. Cir.
1987); see Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). Further,
"' [r]ejections on obviousness 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"' (KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
(quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)).
Here, the Examiner has not cited to the disclosures of the applied
references or made findings that support the Examiner's legal conclusion of
obviousness. The Examiner responds to Appellant's arguments by citing
Figure 2A of Kim as showing an end of a peripheral area without
microlenses (Ans. 11) but Kim's disclosure does not regard dummy
microlenses, such as Kurihara's microlenses 9-F in its ineffective pixel
region 12, or how such dummy microlenses could be arranged. Nor does the
Examiner provide a rationale why one of ordinary skill in the art would have
modified Kurihara's ineffective pixel region 12, which appears to be full of
microlenses 9-F (Kurihara Fig. 4), in view of Kim to lack some portion of
the micro lenses 9-F, other than to conclude it would have been an obvious
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modification. The Examiner's remaining rationales (Final Act. 9-10; Ans.
10-11) are not based upon findings of fact and are based on statements that
are conclusory in nature.
For these reasons, we do not sustain the Examiner's§ 103 rejection of
claim 15 over Kurihara and Kim.
Rejection over Kurihara, Kim, and Rhodes
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Kurihara in view of Kim and further in view of Rhodes. Appellant contends
Rhodes fails to remedy the deficiencies of Kurihara and Kim discussed
above with regard to the § 103 rejection of claim 1 (Br. 11 ). For the reasons
set forth above, there are no deficiencies in the rejection of claim 1 that
require curing by Rhodes. Therefore, we sustain the Examiner's§ 103
rejection over Kurihara, Kim, and Rhodes.
CONCLUSION
On the record before us, we:
A. sustain the§ 103 rejections of claims 1, 4--14, and 16-19; and
B. do not sustain§ 103 rejection of claim 15.
DECISION
The decision of the Examiner to reject claims 1 and 4--19 is affzrmed-
in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED-IN-PART
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