Ex Parte Skurnik et al

Patent Trial and Appeal Board

Jan 31, 2017

14048219 (P.T.A.B. Jan. 31, 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.
14/048,219 10/08/2013 David Skurnik 164830929USI2/MAXM0929CP2 3460
99900 7590 02/02/2017
Advent/Maxim
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
BUI PHO, PASCAL M
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
u spto @ adventip .com
sloma@adventip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SKURNIK, NEVZAT A. KESTELLI,
ILYA K. VEYGMAN, ANAND CHAMAKURA,
CHRISTOPHER F. EDWARDS, NICOLE D. KERNESS,
PIROOZ PARVARANDEH, SUNNY K. HSU,
JUDY LAU, RONALD B. KOO,
DANIEL S. CHRISTMAN, and RICHARD I. OLSEN
Appeal 2016-002557
Application 14/048,219
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the
1 Our decision refers to Appellants’ Specification filed Sept. 3, 2014 (Spec.),
the Final Office Action (Final Act.) mailed Mar. 13, 2015, Appellants’
Appeal Brief filed July 27, 2015 (Appeal Br.), the Examiner’s Answer
mailed Oct. 22, 2015 (Ans.), and Appellants’ Reply Brief (Reply Br.) filed
Dec. 22, 2015.
2 Appellants identify the real party in interest as Maxim Integrated Products,
Inc. Appeal Br. 3.
Appeal 2016-002557
Application 14/048,219
Examiner’s decision finally rejecting claims 1—5, 10-15, and 20, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The claims on appeal are directed to gesture sensing devices (see, e.g.,
claims 1,11, and 20). Appellants disclose that electronic devices, such as
smart phones, tablets, laptop and desktop computers, and digital media
players, increasingly use light sensors during the manipulation of functions
of the devices. Spec. 12. For instance, light sensing devices are commonly
used as gesture or proximity sensing devices that enable detection of
physical movement largely parallel to a display surface, or perpendicular to
the display surface, without a user touching the device. Spec. 13. These
light sensing devices can be used to recognize distinct non-contact hand
motions, such as left-to-right, right-to-left, up-to-down, down-to-up, in-to-
out, out-to-in, and other motions. Spec. 13.
Appellants disclose that conventional devices may use three or more
illumination sources and a light sensor to detect light reflected from a
moving object. Spec. 136. Such configurations can be disadvantageous
because it is difficult to reduce the size of the device. Spec. 141. In view of
this, Appellants disclose gesture sensing devices using a single illumination
source. Spec. 142. The gesture sensing devices further include a light
modifying structure, such as a mechanical structure configured to selectively
block a portion of light depending upon a position of a target object relative
to a light sensor. Spec. 143. The mechanical structure may be a wall
structure including a plurality of metal layers and vias, which may be
arranged in a stair step configuration. Spec. ]Hf 43 and 83. The stair step
2
Appeal 2016-002557
Application 14/048,219
configuration is depicted in Figure 17, an annotated copy of which is
reproduced below.
\
5
i4
Figure 17 depicts a side view of a light modifying structure
The mechanical structure 1700 shown in Figure 17 forms a wall
structure 1702 at a non-perpendicular angle with respect to a photodiode cell
(not shown). Spec. 1 83. The wall structure 1702 includes metal layers
1704, 1706, 1708, 1710 and vias 1712, 1714, 1716. Spec. 183. As a result,
metal layers 1704, 1706, 1708, 1710 are offset by different distances from
the axis shown in the annotated copy of Figure 17 above.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Supplemental
Appeal Brief with the limitations Appellants highlight (Appeal Br. 16)
3
Appeal 2016-002557
Application 14/048,219
italicized and reference numerals from Figure 17 added for further
illustration:
1. A gesture sensing device comprising:
a single illumination source configured to emit
light;
a light sensor assembly comprising a plurality of
photodetectors configured to detect the light reflected
from an object and to output time dependent signals in
response thereto;
a processing circuit coupled to the light sensor
assembly and configured to analyze the time dependent
signals received from the light sensor assembly and to
determine object directional movement proximate to the
light sensor assembly; and
a light modifying wall structure [e.g., 1700 in Fig.
17] disposed adjacent to the light sensor assembly, the
light modifying wall structure [1700] configured to
selectively block a portion of the light reflected from the
object depending on a position of the object relative to
the light sensor assembly,
the light modifying wall structure [1700]
comprising a plurality of layers [e.g., 1706, 1708, 1710]
and a plurality of vias [e.g., 1714, 1716], respective ones
of the plurality of layers and the plurality of vias offset
with respect to a center axis defined perpendicular to a
surface of the light sensor assembly,
wherein a first offset distance from an optical axis
of one of the plurality of photodetectors to a first one of
the plurality of layers [1710] is less than a second offset
distance from the optical axis to a second one of the
plurality of layers [1708], wherein the second offset
distance from the optical axis of one of the plurality of
photo detectors to the second one of the plurality of layers
[1708] is less than a third offset distance from the optical
4
Appeal 2016-002557
Application 14/048,219
axis to a third one of the plurality of layers [1706], the
second one of the plurality of layers [1708] being
disposed above the first one of the plurality of layers
[1710] with respect to the light sensor assembly, the third
one of the plurality of layers [1706] being disposed
above the second one of the plurality of layers [1708]
with respect to the light sensor assembly.
Appeal Br. 27 (emphasis and formatting added).
The claims on appeal stand rejected as follows:
(1) claims 1—5, 10, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Zhang3 in view of Tseng;4
(2) claims 11—15 under 35 U.S.C. § 103(a) as being unpatentable
over Zhang in view of Rudd5 and Tseng; and
(3) claims 1—5, 10-15, and 20 under the ground of nonstatutory
double patenting as being unpatentable over claims 1—5 and 13 of US
8,716,659 in view of Tseng.
OPINION
Rejection of claims 1—5, 10, and 20 over Zhang and Tseng
Claims 1—5, 10, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Tseng. Appellants argue claims 1—5 and
10 as a group and claim 20 separately. Appeal Br. 14—18 and 22—25. We
select claims 1 and 20 as representative for discussing the issues on appeal.
3 Zhang, US 8,187,097 Bl, issued May 29, 2012 (“Zhang”).
4 Tseng et al., US 2010/0320552 Al, published Dec. 23, 2010 (“Tseng”).
5 Rudd et al., US 6,288,786 Bl, issued Sept. 11, 2001 (“Rudd”).
5
Appeal 2016-002557
Application 14/048,219
The Examiner finds Zhang discloses a gesture sensing device
including a single illumination source, a light sensor assembly, a processing
circuit, and a light modifying wall structure configured to selectively block a
portion of light reflected from an object depending on a position of the
object relative to the light sensor assembly. Final Act. 10. The Examiner
finds Zhang does not disclose a light modifying wall structure including a
plurality of layers and vias in the arrangement recited in claim 1. Final Act.
10-11.
The Examiner finds Tseng discloses a sensing device including a light
modifying wall structure, citing Figure 2 of Tseng. Figure 2 is reproduced
below, including annotations to show first, second, and third metal layers
and an exemplary axis.
6
Appeal 2016-002557
Application 14/048,219
17
' >'
exemplary axis
Figure 2 depicts an embodiment of a complementary metal-oxide
semiconductor image sensor
The complementary metal-oxide semiconductor (CMOS) image
sensor shown in Figure 2 includes a substrate 11, a photo diode 12, and an
interconnection 14 formed by a contact plug 14a, metal lines 14b, and a via
plug 14c insulated from one another by dielectric material 13. Tseng 114.
The sensor further includes a light passage 20, a passivation layer 15, a
micro lens 18, a planarization layer 19, and a color filter 17. Tseng H 14,
15.
7
Appeal 2016-002557
Application 14/048,219
The Examiner finds the metal lines 14b depicted in Figure 2 function
as a plurality of layers and the contact plug 14a and via plug 14c function as
a plurality of vias offset with respect to a center axis defined perpendicularly
to a surface of the photo diode 12 (e.g., the exemplary axis in the annotated
copy of Figure 2 above). Final Act. 11. The Examiner further finds the
metal lines 14b include the first offset distance recited in claim 1, the second
metal layer is disposed above the first metal layer, and the third metal layer
is disposed above the second metal layer. Final Act. 11.
The Examiner concludes it would have been obvious to modify Zhang
to include the wall structure of Tseng. Final Act. 11. However, the
Examiner finds Zhang, as modified by Tseng, does not provide “a clear
disclosure of the second offset distance from the optical axis of one of the
plurality of photodetectors to the second one of the plurality of layers is less
than a third offset distance from the optical axis to a third one of the plurality
of layers,” as recited in claim 1. Final Act. 11. To address this, the
Examiner finds “an optimal offset in order to optimize light detection is a
design choice” and concludes it would have been obvious to provide the
claimed second offset distance in the combination of Zhang and Tseng.
Final Act. 11—12.
Appellants contend that the offset distances are not a mere design
choice because the function of the claimed light modifying wall structure is
different from the function of the interconnection 14 in Tseng, which is an
electrical connection. Appeal Br. 17—18 and Reply Br. 5—7. Because of
this, Appellant argues the combination of Zhang and Tseng does not disclose
or suggest all of the limitations of claim 1. Appeal Br. 17.
8
Appeal 2016-002557
Application 14/048,219
We understand the Examiner’s position to be that there is no “clear
disclosure” in Tseng of the second offset distance recited in claim 1. Final
Act. 11. In other words, the Examiner finds no express teaching of the
second offset distance in the disclosure of Tseng. The Examiner emphasizes
this in the Examiner’s Answer by stating “Zhang and Tseng et al. lack a
clear disclosure of the second offset distance from the optical axis of one of
the plurality of photodetectors to the second one of the plurality of layers is
less than a third offset distance from the optical axis to a third one of the
plurality of layers.” Ans. 4.
A preponderance of the evidence supports the Examiner’s finding that
Zhang would have suggested the offset distances of the claim. Although the
written description within the specification of Tseng does not provide an
express disclosure of the second offset distance recited in claim 1, Figure 2
suggests such a structure. While the measurements of features in a drawing
have little value when a reference does not disclose drawings as drawn to
scale,6 drawings may evaluated for what they reasonably disclose and
suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914
(CCPA 1979).
The Examiner finds the metal lines 14b depicted in Figure 2 function
as a plurality of layers. Final Act. 11. Figure 2 suggests the first offset
distance recited in claim 1 because, as shown in the annotated copy of
Figure 2 above, a first metal layer is offset less from the exemplary axis
(which may serve as an optical axis for the photo diode 12 in Figure 2) than
a second metal layer above it. In particular, there is a greater distance
6 Hockerson-Halberstadt, Inc. v. Avia Group Inti, 222 F.3d 951, 956 (Fed.
Cir. 2000).
9
Appeal 2016-002557
Application 14/048,219
between the right edge of the second metal layer and the exemplary axis than
between the right edge of the first metal layer and the exemplary axis.
Moreover, Figure 2 suggests the second offset distance of claim 1.
Specifically, there is a greater distance between the right edge of the third
metal layer and the exemplary axis than between the right edge of the second
metal layer and the exemplary axis. Figure 2 suggests the second offset
distance due to the positions of the metals layers depicted in Figure 2 in
relation to one another and the axis. Thus, although Tseng does not
expressly disclose the second offset distance of claim 1, Figure 2 would have
suggested the second offset distance to one of ordinary skill in the art.
Citing the Examiner’s remarks in the Answer, Appellants further
argue the Examiner mischaracterized Tseng as disclosing a light modifying
wall structure “configured to selectively block a portion of the light reflected
from the object depending on a position of the object relative to the light
sensor assembly,” as recited in claim 1. Reply Br. 4—5.
In order to properly consider the import of the recitation “configured
to selectively block a portion of the light reflected from the object depending
on a position of the object relative to the light sensor assembly” it must be
remembered that, although in common parlance, the phrase “configured to”
implies an intent of a designer, this intent cannot play a role in limiting the
structure of the claim. See Roberts v. Ryer, 91 U.S. 150, 157, 23 L.Ed. 267
(1875) (“The inventor of a machine is entitled to the benefit of all the uses to
which it can be put, no matter whether he had conceived the idea of the use
or not.”); In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (patentability of
the structure cannot turn on its use or function). Thus, whether Tseng
intended to configure the wall structure (14a, 14b, 14c) “to selectively block
10
Appeal 2016-002557
Application 14/048,219
a portion of the light reflected from the object depending on a position of the
object relative to the light sensor assembly” is of no matter; we must
consider how the language patentably differentiates the claimed structure
from the prior art structure. We do not find such a patentable structural
distinction. As correctly pointed out by Appellants, Tseng teaches a CMOS
image sensor in which
several layers of interconnection 14 are formed above the photo
diode 12, including a contact plug 14a, metal lines 14b, a via
plug 14c, etc., wherein these portions of interconnection are
insulated from one another by a dielectric material 13. After
completion of the interconnection 14, preferably, a light
passage 20 is formed by etching.
Reply Br. 4—5 (quoting Tseng 114). Tseng discloses “it is preferable to
provide a light passage 20 in the dielectric material 13 such that more light
reaches the photo diode 12 through the dielectric material 13.” Tseng 13
(bolding omitted). In other words, light passage 20 is optional, and light
travels through the dielectric material 13. A preponderance of the evidence
indicates that, given the similarity in structure of the interconnect 14 to
Appellants’ light modifying wall and the light-transmissive nature of the
dielectric material 13, the interconnection 14 would function to selectively
block a portion of the light in the manner recited in the functional portion of
the “configured to” clause recited in claim 1. A preponderance of the
evidence supports the Examiner’s finding that the “configured to” clause
does not patentably distinguish Appellants claimed light modifying wall
structure from the wall structure (interconnection 14) of Tseng.
Appellants do not argue claims 2—5 and 10 separately from claim 1.
Appeal Br. 18. Therefore, we sustain the § 103 rejection of claims 1—5 and
10 over Zhang in view of Tseng.
11
Appeal 2016-002557
Application 14/048,219
Independent claim 20 recites structures similar to those of claim 1,
including a single illumination source, a light sensor, and a light modifying
wall structure having a structure similar to the light modifying wall structure
of claim 1. Appeal Br. 30. For the rejection of claim 20 over Zhang and
Tseng, Appellants set forth arguments similar to those made in the rejection
of claim 1. Appeal Br. 22—25 and Reply Br. 11—15. As discussed above,
these arguments do not fully address the Examiner’s rejection or
demonstrate a reversible error.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 1—5, 10, and 20
over Zhang in view of Tseng.
Rejection of claims 11—15 over Zhang, Rudd, and Tseng
Claims 11—15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Rudd and Tseng.
With regard to Zhang and Tseng, the Examiner makes similar findings
as in the rejection of claim 1. Compare Final Act. 10—15 with Final Act. 15—
18. In the rejection of independent claim 11, the Examiner finds Zhang does
not provide a clear disclosure of, among other things, an optical lens
structure configured to at least partially collimate light and oriented at an
angle with respect to an axis perpendicular to a surface of an electronic
device. Final Act. 15—16. The Examiner finds Rudd discloses an optical
lens structure configured to at least partially collimate light and angled with
respect to an axis perpendicular to a surface of an electronic device and
concludes it would have been obvious to modify Zhang in view of Rudd.
Final Act. 16—17.
12
Appeal 2016-002557
Application 14/048,219
For claim 11, Appellants set forth similar arguments discussed above
for the rejection of claims 1 and 20 regarding the Examiner’s use of design
choice. Appeal Br. 18—21 and Reply Br. 7—11. For the reasons discussed
above and those set forth in the Examiner’s Answer, these arguments do not
demonstrate a reversible error. Appellants do not argue claims 12—15
separately from claim 11. Appeal Br. 22.
Therefore, we sustain the Examiner’s § 103 rejection of claims 11—15
over Zhang in view of Rudd and Tseng.
Double patenting rejection of claims 1—5, 10—15, and 20
Claims 1—5, 10-15, and 20 are rejected under the ground of non-
statutory double patenting as being unpatentable over claims 1—5 and 13 of
US 8,716,659 in view of Tseng.
Appellants acknowledge the non-statutory obviousness-type double
patenting rejection and request the rejection be held in abeyance, stating
Appellants are ready to submit a terminal disclaimer upon resolution of the
§103 rejections. Appeal Br. 11. No arguments regarding the propriety of
the rejection have been proffered by Appellants. We, therefore, summarily
affirm the Examiner’s non-statutory obviousness-type double patenting
rejection of claims 1—5, 10-15, and 20.
13
Appeal 2016-002557
Application 14/048,219
DECISION
On the record before us, we affirm the decision of the Examiner to
reject the claims.
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).
AFFIRMED
14