Ex Parte Yang et al

Board of Patent Appeals and Interferences

Jun 22, 2005

10109390 (B.P.A.I. Jun. 22, 2005)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HONGLI YANG, XINPING HE, and
QINGWEI SHAN
____________
Appeal No. 2005-0116
Application No. 10/109,390
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ON BRIEF
____________
Before KRASS, DIXON, and MACDONALD, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-10,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2005-0116
Application No. 10/109,390
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Appellants’ invention relates to a method and apparatus for KTC noise canceling
in a linear CMOS image sensor. An understanding of the invention can be derived from
a reading of exemplary claim 1, which is reproduced below.
1. A method of reading out a pixel signal from a pixel comprising:
capturing a first black reference signal from said pixel prior to said
pixel starting an integration period;
after completion of said integration period, capturing a pixel signal;
capturing a second black reference signal following completion of
said integration period; and
outputting said first black reference signal, said second black
reference signal, and said pixel signal and using both said
first black reference signal and said second black reference
signal to modify said pixel signal.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Fossum et al. (Fossum) 5,471,515 Nov. 28, 1995
Merrill et al. (Merrill) 5,962,844 Oct. 05, 1999
(filed Sep. 03, 1997)
Booth, Jr. 6,078,037 Jun. 20, 2000
(filed Apr. 16, 1998)
Dhuse et al. (Dhuse) 6,133,862 Oct. 17, 2000
(filed Jul. 31, 1998)
Gowda et al. (Gowda) 6,344,877 Feb. 05, 2002
(filed Jun. 12, 1997)
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Application No. 10/109,390
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Claims 1-2 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Fossum. Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Fossum in view of Merrill. Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Fossum in view of Gowda. Claims 6-9 stand rejected under 35
U.S.C. § 103 as being unpatentable over Dhuse in view of Booth, Jr. Claim 10 stands
rejected under 35 U.S.C. § 103 as being unpatentable over Dhuse in view of Booth and
Merrill.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (mailed Apr. 21, 2004) for the examiner's reasoning in support of the rejections,
and to appellants’ brief (filed Jan. 14, 2004) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 102
Initially we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied,
Appeal No. 2005-0116
Application No. 10/109,390
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484 U.S. 827 (1987). A prior art reference anticipates the subject matter of a claim
when the reference discloses every feature of the claimed invention, either explicitly or
inherently (see Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the law of anticipation
does not require that the reference teach what the appellants are claiming, but only that
the claims on appeal "read on" something disclosed in the reference (see Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984)). Further, as pointed out by our reviewing court, we must
first determine the scope of the claim. "[T]he name of the game is the claim." In re
Hiniker Co., 150 F.3d 1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore,
we look to the limitations set forth in independent claim 1. Claim 1 sets forth
outputting said first black reference signal, said second black reference
signal, and said pixel signal and using both said first black reference signal
and said second black reference signal to modify said pixel signal.

Therefore, Fossum must teach the use of both a first and second black reference signal.
The examiner maintains that Fossum teaches “a second black reference signal
(fixed pattern noise) following the completion of said integration period (see Col. 5, lines
20-23).” (Answer at page 3.) Appellants argue that the measuring of this difference in
threshold voltages between output transistors is not the same as the claimed “capturing
a second black reference signal following completion of said integration period” and
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Application No. 10/109,390
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subsequent use thereof to modify the pixel signal. (Brief at page 5.) We agree with
appellants that Fossum does not teach capturing a second black reference signal from
the pixel and use thereof with a first black reference signal to modify the captured pixel
signal.
The examiner maintains that the language of independent claim 1 does not
explicitly state that the second black reference signal is captured from the pixel and so
the examiner affirms his position that measuring the difference in threshold voltages in
Fossum anticipates the second black reference signal as defined in the limitations of
independent claim 1. (Answer at page 8.) We disagree with the examiner’s position,
and find that the language of independent claim 1 requires the “capturing” of all three
signals. Therefore, the signals should be acquired in a similar manner and from the
“pixel” as explicitly recited with respect to the first black reference signal and the pixel
signal.
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Therefore, we do not find the examiner’s interpretation of the claim language to be
reasonable, and we find that the examiner has not shown that Fossum teaches all of the
claimed limitations, and we cannot sustain the rejection of independent claim 1 and
dependent claim 2.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available
to one of ordinary skill in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed invention. See In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on §
103 must rest on a factual basis with these facts being interpreted without hindsight
Appeal No. 2005-0116
Application No. 10/109,390
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reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988).
When determining obviousness, "the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in art would
lead that individual to combine the relevant teachings of the references.’" In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, 972
F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.'” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). "Mere denials and conclusory statements, however, are not sufficient to
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establish a genuine issue of material fact." Dembiczak, 175 F.3d at 999, 50 USPQ2d
at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27
USPQ2d 1129, 1131 (Fed. Cir. 1993).
The examiner relies upon the teachings of Merrill to teach the additional limitation
in claim 3 with respect to the use of a buffer at the output of the circuit. The examiner
relies upon the teachings of Gowda to teach the additional limitation in claims 4 and 5
with respect to the use of the second reference signal a subsequent first reference
signal. Appellants do not contest the teachings of Merrill or Gowda, but maintain that
they do not remedy the deficiencies in Fossum as noted above. We agree with
appellants and find that the examiner has not established a prima facie case of
obviousness of the claimed invention.
With respect to independent claim 6, the examiner relies upon the teachings of
Dhuse in combination with Booth, Jr. as evidence of obviousness of the detailed limita-
tions of independent claim 6. From our review of the teachings of Dhuse, we agree with
appellants’ (Brief at pages 6-7) that Dhuse is deficient with respect to the second black
reference signal branch and that the teachings of Booth, Jr. do not fairly suggest the use
of separate and distinct branch circuits for the same pixel and use thereof for black
reference signals to modify the pixel signal. Therefore, we find that the examiner has
not established a prima facie case of obviousness of the invention as recited in
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independent claim 6 and dependent claims 7-9. Nor do we find that the teachings of
Merrill remedy the noted deficiencies of the above combination. Therefore, we cannot
sustain the rejection of claims 6-10.
CONCLUSION
To summarize, the decision of the examiner to reject claims 3-10 under
35 U.S.C. § 103 is reversed, and the decision of the examiner to reject claims 1 and 2
under 35 U.S.C. § 102 is reversed
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
JLD/vsh
Appeal No. 2005-0116
Application No. 10/109,390
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