Ex Parte Wong et al

Patent Trial and Appeal Board

May 14, 2015

12965793 (P.T.A.B. May. 14, 2015)

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.
12/965,793 12/10/2010 Serena Han Ying Wong 20100212-US-NP/8538P032 7516
81941 7590 05/15/2015
PARC-XEROX/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
HULKA, JAMES R
ART UNIT PAPER NUMBER
3645
MAIL DATE DELIVERY MODE
05/15/2015 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 SERENA HAN YING WONG, JENG PING LU, and
RAJ B. APTE
____________________

Appeal 2013-005914
Application 12/965,793
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Serena Han Ying Wong et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1–9, 12–21, 24, and
25.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Claims 10, 11, 22, and 23 are not subject to this Appeal, as they are
indicated to be allowable if rewritten in independent form. Final Act. 7–8.
Appeal 2013-005914
Application 12/965,793
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CLAIMED SUBJECT MATTER
The claims are directed to a large-area ultrasound contact imaging
apparatus, method, and system. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An apparatus comprising:
a thin-film transistor (TFT) array deposited on a
substrate;
a receiver having a plurality of receiver elements
deposited on the TFT array to receive a received signal;
a transmitter adjacent to the receiver to generate a
transmit signal at an ultrasonic frequency, the transmit signal
being reflected from a surface to produce a reflected signal; and
a contact layer deposited on the transmitter having the
surface-and a thickness such that the received signal is a
superposition of the transmit signal and the reflected signal as
result of interference, the received signal representative of
differences in acoustic impedances across the surface.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Eck
Proano
Nam
Ishikawa
Tian
Vacanti
US 2002/0049381 A1
US 2005/0094855 A1
US 2005/0105784 A1
US 2006/0174717 A1
US 2007/0180916 A1
US 2009/0058714 A1
Apr. 25, 2002
May 5, 2005
May 19, 2005
Aug. 10, 2006
Aug. 9, 2007
Mar. 5, 2009

REJECTIONS
I. Claims 1, 3, 4, 9, 12, 13, 15, 16, 21, and 24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Nam and Ishikawa.
II. Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nam, Ishikawa, and Vacanti.
Appeal 2013-005914
Application 12/965,793
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III. Claims 6, 7, 18, 19, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nam, Ishikawa, and Proano.
IV. Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nam, Ishikawa, and Eck.
V. Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) Nam,
Ishikawa, Eck, and Tian.

OPINION
Each of independent claims 1, 13, and 25 require “a thin-film
transistor (TFT) array deposited on a substrate.” Appeal Br. 13, 15, 16. The
Examiner finds, inter alia, that Nam teaches “a thin-film transistor (TFT)
array deposited on a substrate [0018].” Final Act. 3. Appellants argue that
“the complementary metal-oxide semiconductor structure [(“CMOS”)]with
doped structures in Nam is not ‘a thin-film transistor (TFT) array.’ Thus,
Nam fails to disclose this element of the claims.” Appeal Br. 9. In support
of this argument, “Appellant[s] submit[] that the Examiner is improperly
ignoring the plain meaning of the language ‘thin-film transistor array,’ as
understood by one with ordinary skill in the art. Id. In other words,
Appellants contend that the term “thin-film transistor (TFT)” is a term of art
and Nam’s CMOS is not a TFT as that term of art is understood by those of
skill in the art.
In response to this argument, the Examiner notes that Nam
“describe[s] the structure of a CMOS structure, where a general definition of
‘metal-oxide-semiconductor’ refers to a physical structure of field-effect
transistors.” Ans. 3.2 The Examiner further notes that Nam “describe[s] the

2The pages of the Examiner’s Answer, other than the first page, are all
numbered page 1. We renumber these pages 2–4.
Appeal 2013-005914
Application 12/965,793
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layers being on the order of microns or less, -thus being considered a ‘thin-
film’ as Nam reads on being a semiconductor active layer, as well as
dielectric and metallic contacts deposited on a supporting substrate. Id.
Thus, we understand the Examiner to find that Nam’s CMOS is a TFT.
The Examiner’s finding is in error. Those of skill in the art know that
CMOS and TFT (both terms of art) are competing dissimilar transistors. See
Brody, The Thin Film Transistor—A Late Flowering Bloom, IEEE
Transactions on Electron Devices, Vol. Ed. 31, No. 11, 1614, 1615 (1984).
While “[a]n important invention that was born from TFT experience with n-
and p-type films was Weimer's complementary inverter, now the basis of
CMOS circuits;” those of skill in the art do not equate the two types of
transistors. Id. (emphasis added). Moreover, although we appreciate the
Examiner’s position that Nam’s CMOS structure is a field-effect transistor
(see Ans. 3), we note that disclosure of a genus in the prior art, i.e., field-
effect transistor, is not a disclosure of every species that is a member of that
genus, i.e., thin film transistor. See Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991, 999 (Fed. Cir. 2006). Thus, Nam’s CMOS does not meet the
limitations at issue. Ishikawa does not cure this deficiency in Nam.
For this reason we do not sustain the Examiner’s decision rejecting
independent claims 1, 13, and 25, and dependent claims 3, 4, 9, 12, 15, 16,
and 21.
The rejections of claims, 2, 5–8, 14, 17–20, and 24 rely on the same
erroneous finding as the rejection of claims 1, 13, and 25. None of Vacanti,
Proano, Eck, or Tian cure the deficiency in Nam discussed supra.
Accordingly, we do not sustain the Examiner’s decision rejecting claims 2
5–8, 14, 17–20, and 24.
Appeal 2013-005914
Application 12/965,793
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DECISION
The Examiner’s rejections of claims 1–9, 12–21, 24, and 25 are
REVERSED.

REVERSED

JRG