Ex Parte Lin et al

Patent Trial and Appeal Board

Mar 14, 2018

13435649 (P.T.A.B. Mar. 14, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WEI-FENG LIN and WEN-JEN HO
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Appeal 2017-007185
Application 13/435,6491
Technology Center 2600
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Before JASON V. MORGAN, IRVIN E. BRANCH, and
JON M. JURGOVAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–5, 7, 8, and 10. Claims 6, 9, and 11–22 are canceled.
Br. 11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
Appellants disclose an apparatus that “includes an image sensor
module with a lens stack disposed on the image sensor module” and a

1 Appellants identify OmniVision Technologies, Inc., as the real party in
interest. Br. 2.
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“protective tube [that] is disposed on the image sensor module and encloses
the lens stack.” Abstract.
Representative Claim (key limitations emphasized)
1. An apparatus comprising:
an image sensor module;
a lens stack comprising at least one lens on a glass wafer and a
spacer, the lens stack being disposed on the image sensor module;
a pre-fabricated protective tube disposed on the image sensor module
and enclosing the lens stack, wherein an inner wall of the protective
tube is flat, and wherein the protective tube includes a thinned wall
that defines a stop and a recess in the protective tube that are adapted
to accept completely and hold the image sensor module; and
a pre-fabricated metal housing enclosing the protective tube, the metal
housing including a housing foot adapted to secure the image sensor
module between the housing foot of the metal housing and the
protective tube, wherein the thinned wall of the protective tube and
the image sensor module are attached to the housing foot of the metal
housing.
Rejections
The Examiner rejects claims 1–4, 7, 8, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Yang (US 2011/0194022 A1; published
Aug. 11, 2011), Aizawa et al. (US 2011/0286736 A1; published Nov. 24,
2011), and Bolken et al. (US 2009/0206431 A1; published Aug. 20, 2009).
Final Act. 5–10.
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Yang, Aizawa, Bolken, and Maeda et al. (US 2004/
0223072 A1; published Nov. 11, 2004). Final Act. 10–11.
In addition to these 35 U.S.C. § 103(a) rejections, the Examiner also
rejected claims 1–5, 7, 8, and 10 under 35 U.S.C. § 112, first paragraph.
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Final Act. 4. The Examiner has not explicitly withdrawn this rejection. See
Ans. 2; Adv. Act. 2 2. However, Appellants withdrew the disputed language
(see Amend. After Final Act. 3 (May 24, 2016); Final Act. 4) in an
amendment that was entered by the Examiner (Adv. Act. 1). Entering this
amendment obviated the basis of the Examiner’s 35 U.S.C. § 112 rejection.
ANALYSIS
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants’ arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
In rejecting claim 1, the Examiner finds Yang’s lens stack and image
sensor module, as modified using Bolken’s spacers, teaches or suggests a
lens stack comprising at least one lens on a glass wafer and a spacer, the
lens stack being disposed on the image sensor module. Final Act. 5 (citing
Yang Figs. 3, 4, 6); Final Act. 7 (citing Bolken Fig. 1).
Appellants contend the Examiner erred because the claimed lens stack
is “disposed on the image sensor module,” while Yang’s lens stack is
disposed above image sensor 210. Br. 5. However, we agree with the
Examiner that the “[c]laim language does not recite the lens stack is in direct
contact with the image sensor.” Ans. 10; see also Adv. Act. 2. Appellants
contend “the term on is defined in the specification” (Br. 5), but do not
identify where the Specification provides a definition of on precluding an
intervening support such as that found in Yang. In summarizing the claimed

2 All “Adv. Act.” citations herein are to the June 14, 2016, Advisory Action.
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invention, Appellants point to Figure 5 and paragraph 25 of the
Specification. Br. 2. However, Figure 5 merely illustrates an example
embodiment of the claimed invention without limiting the meaning of on so
as to preclude having an intervening support. Paragraph 25 also does not
discuss the meaning of on, but rather discusses features such as the lack of a
gap between cap 66 and lens stack 22.
Appellants submit “the Examiner concedes that Yang does not
disclose the recited spacers” and therefore “Yang does not disclose a lens
stack ‘comprising at least one lens on a glass wafer and a spacer,’ the lens
stack ‘being disposed on the image sensor module.’” Br. 5. This argument
does not show error in the Examiner’s rejection because the Examiner relies
on Bolken to modify Yang’s lens stack to include a spacer rather than
relying on Yang alone with respect to the disputed recitation. Final Act.
7–8.
Appellants argue that such a modification would not have been
obvious because “Yang supports its lenses with ledges that are extensions of
lens barrel 220” and “[c]hanging Yang to use Bolken’s spacers alters Yang’s
principle of operation because, if modified, Yang’s lenses [would] no longer
[be] supported by lens barrel 220 but by elements separate from the lens
barrel.” Br. 7. Appellants’ argument is unpersuasive because Appellants
merely restate the modification to Yang the Examiner concludes would have
been obvious in light of Bolken without showing that use of lens barrel
extension ledges represents Yang’s principle of operation.
Appellants further argue:
Modifying Yang’s lens barrel 220 to enclose Bolken’s lens stack
12 would change Yang’s arrangement so that inner wall 222a no
longer surrounds image sensor 210. If combined with Bolken,
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Yang’s inner wall 222a would surround the complete lens stack
of Bolken, meaning that Bolken’s spacers would occupy the
position not occupied by Yang’s inner wall 222a. But Bolken
does not disclose that the inner walls of its spacers can absorb
flare irradiating through a hole so that an imaging quality of the
image sensor module can be improved.
Br. 7–8.
Appellants’ arguments are unpersuasively drawn to whether the
bodily incorporation of Bolken’s spacers in Yang would have resulted in the
claimed subject matter. However, the test for obviousness is based on what
the combined teachings of the references suggest, not on whether features of
one reference can be bodily incorporated into another. See In re Keller, 642
F.2d 413, 425 (CCPA 1981). We find no error in the Examiner’s conclusion
that it would have been obvious to modify Yang using Bolken’s spacer
teachings in a manner that preserves qualities of Yang’s inner wall 222a
such as the ability to absorb flare. See Ans. 14 (“[i]t would have been
obvious to one of ordinary skill in the art to construct the spacers [taught by
Bolken] of the same material [taught by Yang] for the same benefit”).
In rejecting claim 1, the Examiner also finds Yang’s lens barrel is a
pre-fabricated elongated hollow piece that provides protection and has an
inner wall or section of inner wall that is flat, and, therefore, renders obvious
a pre-fabricated protective tube disposed on the image sensor module and
enclosing the lens stack, wherein an inner wall of the protective tube is flat.
Final Act. 5–6 (citing Yang Figs 2, 6, and 7A); see also Ans. 11.
Appellants contend the Examiner erred because the purpose of a lens
barrel is to provide “a mechanical structure holding a complete lens” (Br. 5),
but the claimed protective tube has other purposes such as “enhance[ing] the
mechanical strength, improv[ing] electromagnetic compatibility . . .
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performance, and prevent[ing] stray light related artifacts” (id. (citing Spec.
¶ 22)).
Appellants’ arguments are unpersuasive because, as the Examiner
correctly finds, Yang’s lens barrel 220 “protects the lenses inside the tube”
and “protects against stray light . . . entering the sides of the tube.” Ans. 11.
We agree that these features show that Yang’s lens barrel 220 “meets all the
requirements for the” claimed protective tube. Id. While Appellants argue
that the claimed “protective tube cannot hold, and is not made to hold, the
lens stack” (Br. 6 (citing Spec. Figs. 3–7)), Appellants fail to articulate
persuasively what aspect of the claimed protective tube precludes it from
providing additional functionality such as that provided by a lens barrel.
For these reasons we do not find Appellants’ arguments persuasive of
error in the Examiner’s rejection of claim 1. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 1, and claims 2–5, 7, 8,
and 10, which Appellants argue are patentable for similar reasons to those
discussed. Br. 8.
DECISION
We affirm the Examiner’s decision rejecting claims 1–5, 7, 8, and 10.
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