Ex Parte Lin et alDownload PDFPatent Trial and Appeal BoardMar 14, 201813435649 (P.T.A.B. Mar. 14, 2018) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte WEI-FENG LIN and WEN-JEN HO ________________ Appeal 2017-007185 Application 13/435,6491 Technology Center 2600 ________________ 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. Appeal 2017-007185 Application 13/435,649 2 “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. Appeal 2017-007185 Application 13/435,649 3 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. Appeal 2017-007185 Application 13/435,649 4 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, Appeal 2017-007185 Application 13/435,649 5 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 . . . Appeal 2017-007185 Application 13/435,649 6 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 Copy with citationCopy as parenthetical citation