Ex Parte LINDownload PDFPatent Trial and Appeal BoardAug 6, 201814466412 (P.T.A.B. Aug. 6, 2018) Copy Citation 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."). 2 Appeal2018-000549 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 3 Appeal2018-000549 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 4 Appeal2018-000549 Application 14/466,412 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, 5 Appeal2018-000549 Application 14/466,412 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. 6 Appeal2018-000549 Application 14/466,412 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 7 Appeal2018-000549 Application 14/466,412 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 8 Appeal2018-000549 Application 14/466,412 (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." 9 Appeal2018-000549 Application 14/466,412 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 10 Appeal2018-000549 Application 14/466,412 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 11 Appeal2018-000549 Application 14/466,412 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). 12 Appeal2018-000549 Application 14/466,412 AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation