Ex Parte Sano et al

Patent Trial and Appeal Board

Jan 18, 2017

13768468 (P.T.A.B. Jan. 18, 2017)

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.
13/768,468 02/15/2013 Takuya Sano 880001-5348-US00 9973
134795 7590 01/20/2017
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
HALIYUR, PADMA
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
01/20/2017 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):
DCipdocket @ michaelbest. com
sbj ames @michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUYA SANO and TOSHIFUMI WAKANO
Appeal 2016-003292
Application 13/768,4681
Technology Center 2600
Before JOHNNY A. KUMAR, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sony Corporation as the real party in interest. App. Br.
2.
Appeal 2016-003292
Application 13/768,468
THE INVENTION
The disclosed and claimed invention is directed to a “solid-state image
pickup apparatus and electronic apparatus.” Spec. 1:5—6.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A solid-state image pickup apparatus, comprising:
a pixel region comprising a plurality of pixels, respective
ones of the plurality of pixels including a photoelectric
conversion element;
a plurality of transfer wirings formed on the pixel region
in parallel to one another with uniform opening widths
therebetween; and
different wirings formed in a wiring layer above the
transfer wirings, at least a part of the different wirings being
overlapped with the transfer wirings in a plan view, the transfer
wirings and the different wirings forming a light shielding
structure at least in an area in the pixel region corresponding to
the respective photoelectric conversion element.
REFERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Taura US 2010/0225776 A1 Sept. 9,2010
REJECTION
Claims 1—20 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Taura. Final Act. 3—12.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
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Application 13/768,468
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1—20.
Appellants and the Examiner dispute the proper construction of the
term “corresponding.” However, claims only need to be construed “to the
extent necessary to resolve the controversy.” Wellman, Inc. v. Eastman
Chemical Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (citing Vivid
Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999)). Because we find, as discussed below, the Examiner
did not err in finding Taura discloses the claimed invention under
Appellants’ proposed narrower construction, we need not resolve the claim
construction dispute.
Appellants argue the Examiner erred in finding Taura discloses “a
light shielding structure at least in an area in the pixel region corresponding
to the respective photoelectric conversion element,” as recited in claim 1.
App. Br. 6—9; Reply Br. 3—6. Appellants focus their arguments on Taura
figure 3, which Appellants contend shows “that the light shielding structure
[24] is not in an area in the pixel region corresponding to the respective
photoelectric conversion element [14]; rather, the light shielding structure is
in an area not corresponding to the photoelectric conversion element.” App.
Br. 8 ; see also Reply Br. 6 (“That is, because light shielding element 24 of
Taura is disposed above element 14, and because light is incident on element
14 from above (Taura at paragraph [0055], stating that ‘the upper surface of
the substrate 13 serv[es] as a light incident surface’), it would be deleterious
to the operation of Taura’s device if element 24 also covered element 14,
thus blocking incident light.”). To the extent Appellants address Taura
figure 2, Appellants state as follows:
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Appeal 2016-003292
Application 13/768,468
The Examiner alleges that Taura FIG. 2 discloses a light
shielding film (24) and a photoelectric conversion element (14)
(see, for example, Examiner’s Answer at page 14 paragraph 2).
Taura FIG. 3 clearly shows that element 24 is displaced in the
transverse direction from element 14; thus, the Office’s
application of Taura to Appellant’s claims relies on a
construction whereby there is no overlap between elements 24
and 14.
Reply Br. 3.
The Examiner finds Taura figure 2 discloses light shielding film 24
over photoelectric conversion element 14:
Examiner would like to further point to Fig 2 where element 24
has been disclosed to be a “light shielding film” in |0052 of the
printed publication of the Taura reference. As it can be clearly
seen in this figure, the light shielding film 24 is an “area
corresponding to the photoelectric conversion element”. The
photoelectric conversion element in Fig 2 is designated by
element[ ]14.
Ans. 14.
We are not persuaded by Appellants’ argument directed to the
disclosure of Taura figure 3 that the Examiner erred.2 * 4Appellants offer no
argument or explanation as to why the Examiner erred in finding Taura
figure 2 discloses the disputed limitation. After reviewing all of the
evidence and arguments, we agree with and adopt the Examiner’s findings.
Taura figure 2 clearly discloses light shielding film 24 overlapping
photodetector 14.
For at least the aforementioned reasons, on this record, Appellants
have not persuaded us the Examiner erred. We find a preponderance of the
2 Appellants rely on the same argument for independent claim 7 and do not
separately argue dependent claims 2—6 and 8—20. App. Br. 9-10.
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Appeal 2016-003292
Application 13/768,468
evidence supports the Examiner’s factual findings of anticipation for all
claims on appeal.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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