SYNAPTICS INCORPORATED (ASSIGNEE) et al.

Patent Trials and Appeals Board

Nov 25, 2020

2020005916 (P.T.A.B. Nov. 25, 2020)

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.
90/014,285 04/12/2019 9829614 WSMI-1-71235 4343
169770 7590 11/25/2020
COJK/Will Semiconductor (Shanghai) Co. Ltd.
1201 Third Avenue
Suite 3600
Seattle, WA 98101
EXAMINER
GE, YUZHEN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/25/2020 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 SYNAPTICS INCORPORATED
Patent Owner and Appellant
____________

Appeal 2020-005916
Reexamination Control 90/014,285
Patent 9,829,614 B2
Technology Center 3900
____________

Before MARC S. HOFF, ERIC B. CHEN, and MICHAEL J. ENGLE,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 90/014,285
Patent 9,829,614 B2

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Pursuant to 35 U.S.C. §§ 134(b) and 306, Patent Owner1 appeals from
the final rejection of claims 1–18. Claims 19 and 20 were not subject to
reexamination. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 9,829,614 B2
(“the ’614 patent”) was filed on April 12, 2019 and assigned Reexamination
Control No. 90/014,285. The ’614 patent, titled “Optical Sensor Using
Collimator,” issued November 28, 2017 to Patrick Smith, Paul Wickboldt,
Patrick A. Worfolk, Steve Molesa, Young Lee, and Richard Klenkler, based
on Application No. 14/871,810, filed September 30, 2015.

Claimed Subject Matter
The claims are directed to an optical fingerprint sensor, including an
image sensor array, a collimator filter layer disposed above the image sensor
array, the collimator filter layer having an array of apertures, and an
illumination layer above the collimator filter layer. (Abstract.)

The Claims
Claim 1 is illustrative of the claimed subject matter, and is reproduced
below with disputed limitations in italics:

1 Patent Owner identifies the real party in interest as Will Semiconductor
(Shanghai) Co. Ltd. (Appeal Br. 1.)
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1. An optical fingerprint sensor, comprising:
an image sensor array;
a collimator filter layer disposed above the image sensor
array, the collimator filter layer having an array of apertures,
wherein a ratio of a height of the apertures to a diameter of the
apertures is between 3:1 and 100:1; and
an illumination layer disposed above the collimator
layer, wherein the illumination layer comprises a display, the
display being a light source for fingerprint imaging.

REFERENCES
Name Reference Date
Immega et al. US 5,726,443 Mar. 10, 1998
Lan et al. US 2004/0252867 A1 Dec. 16, 2004
Sasaki et al. US 2007/0222998 A1 Sept. 27, 2007
Powell US 2011/0122071 A1 May 26, 2011

The Rejections
Claims 1–4 and 6–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lan and Immega.
Claims 1–5 and 9–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Immega and Powell.
Claims 6–8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Immega, Powell, and Sasaki.

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OPINION
§ 103 Rejection—Lan and Immega
We are persuaded by Appellant’s arguments (Appeal Br. 19–20) that
the Examiner improperly combined Lan and Immega to reject claims 1–4
and 6–18 under 35 U.S.C. § 103.
The Examiner found that photodetectors 324 of Lan, as illustrated in
Figure 40B, correspond to the limitation “an image sensor array” and that
organic light emitting diode (OLED) cell 311 of Lan, also illustrated in
Figure 40B, corresponds to the limitation “an illumination layer.” (Final
Act. 9.) The Examiner acknowledged that Lan does not teach the limitation
“an illumination layer disposed above the collimator layer,” but cited to
mask 3 of Immega, which is mounted directly over array of light sensors 1.
(Id.) The Examiner concluded that “[c]ombining Lan and Immega would
have used known techniques to improve similar devices in the same way.”
(Id. at 12.) In particular, the Examiner articulated that “[u]sing a layer to
collimate light to sensor elements of a fingerprint sensor was a known
technique, as taught in Immega” and “[u]sing a mask of Immega in Lan’s
fingerprint sensor would have improved Lan in the same way as in Immega
by occluding or absorbing off-angle light.” (Id.) We do not agree with the
Examiner’s conclusion.
Lan relates to “detecting and rendering a relief object such as a
fingerprint.” (¶ 3.) In particular, Lan explains that “[t]he multifunction
OLED screen 331/fingerprint sensor 330 adds functionality for detecting and
rendering the fingertip 40 using the pixels 333 as a source of OLED light
303 to illuminate the fingertip 40.” (¶ 318.) Figure 40B of Lan, which
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illustrates fingerprint sensor 330, including OLED cells 311 and
photodetectors 324, is reproduced below:

Figure 40B of Lan illustrates fingerprint sensor 330.
Moreover, Lan explains that fingerprint sensor 330 includes “black matrix
areas 352 . . . formed on each side of the pixel element 333,” such that
“black matrix areas 352 extend[] about the sides of the photodetector 324.”
(¶ 322.) In particular, Lan explains that “[t]his arrangement blocks
incoming paths of light aside from the path directly over the photodetector
324” and “[w]hen positioned in this manner, the photodetectors 324 may
receive only reflected light 335 reflected by the fingertip 40 from an
adjacent pixel element 333 thus reducing stray light detection and improving
sensitivity of the fingerprint sensor 330.” (Id.)
Immega relates to “an apparatus for optically detecting the proximity
of and observing objects at close ranges” (col. 1, ll. 7–8), for example,
“viewing at close range of an object having fine details or texture on its
surface, such as a finger with its fingerprint pattern” (col. 12, ll. 40–42).
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Figure 3 of Immega illustrates a fingerprint reader, including array of
sensors 1 and mask 3, is reproduced below:

Figure 3 of Immega illustrates a fingerprint reader.
In reference to Figure 1 of Immega, a similar embodiment to Figure 3,
Immega explains that “[m]ounted directly over the detector 2a is a mask 3,”
such that “[t]he mask 3 has a series of holes, or parallel light pathways 4,
having an aspect ratio defined by their depth and width, which corresponds
to the mask’s thickness (t), divided by their diameter (D).” (Col. 14, ll. 6–
10.) Similarly, Immega explains that “one class of pathways is oriented
perpendicularly to the light detecting surface.” (Col. 9, ll. 26–28.)
Although the Examiner proposes to modify Lan with Immega, the
Examiner has not provided an articulated reasoning with some rational
underpinning as to how and why one of ordinary skill in the art would have
combined such references. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
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conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In particular, the Examiner has not adequately explained why one of
ordinary skill in the art would have modified Lan, having black matrix
areas 352 for filtering incoming paths of light, to incorporate mask 3 of
Immega, which has a duplicative function of filtering incoming paths of
light. The Examiner’s conclusory statement that “[c]ombining Lan and
Immega would have used known techniques to improve similar devices in
the same way” does not address the redundant light filtering of the
respective references and, therefore, does not articulate one of the rationales
provided in KSR with a rational underpinning to support a conclusion of
obviousness. See KSR, 550 U.S. at 415–421.
Accordingly, we are persuaded by Appellant’s arguments, as follows:
the Final Office Action fails to address the fact that Lan already
teaches a collimator that improves image fidelity. That is,
Lan’s spaced-apart OLED cells 311 and planarization layer 353
are a collimator because they allow only high incidence angle
reflected light 335 to reach the photodetectors 324.
(Appeal Br. 19–20.)
The Final Office Action further contends that a skilled artisan
would have added Immega’s mask 3 to Lan in order to filter
off-angle light. However, as detailed above, Lan’s OLED cells
311 perform this exact function. In addition, Lan further
teaches that black matrix areas 352 “blocks incoming paths of
light aside from the path directly over the photodetector 324.”
(Id. at 20 (citation omitted).)
Thus, the Examiner has improperly combined Lan and Immega to
reject claims 1–4 and 6–18 under 35 U.S.C. § 103.
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Accordingly, we do not sustain the rejection of claims 1–4 and 6–18
under 35 U.S.C. § 103.

§ 103 Rejection—Immega and Powell
We are further persuaded by Appellant’s arguments (Appeal Br. 29)
that the Examiner improperly combined Immega and Powell to reject claims
1–5 and 9–18 under 35 U.S.C. § 103.
The Examiner acknowledged that Immega does not teach the
limitation “wherein the illumination layer comprises a display, the display
being a light source for fingerprint imaging,” but cited to display system 100
of Powell. (Final Act. 17.) The Examiner concluded that “[t]he
combination of Immega and Powell is . . . [u]se of [a] known technique to
improve similar devices” (id. at 18) because “using a display in Immega’s
system as the illumination layer would improve Immega in the same way as
Powell” (id. at 19). Alternatively, the Examiner concluded that “[t]he
combination of Immega and Powell is also supported by . . . [s]imple
substitution of one known element for another to obtain predictable results
because simple substitution of one known element—an illuminated display
for another known element—an illuminated cover would have led to
predictable results.” (Id.) We do not agree with the Examiner’s
conclusions.
As discussed previously, Figure 3 of Immega illustrates a fingerprint
reader, including array of sensors 1 and mask 3. Moreover, Immega
explains that “a light guide source 33a may introduce light into the interior
of the transparent cover 31 which will distribute the light through internal
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reflection.” (Col. 15, ll. 15–17.) Immega also explains that “when reference
is made to ‘light’, this is intended to be directed to electromagnetic radiation
from the far infrared region to the far ultra violet region of the
electromagnetic spectrum.” (Col. 5, ll. 34–37.)
Powell relates to “[a] display system configured for multi-touch
input.” (Abstract.) Figure 1 of Powell, which illustrates display system 100,
is partially reproduced below:

Figure 1 of Powell illustrates display system 100.
Powell explains that “[d]isplay system 100 includes an image-producing
display panel 102 and a local light source 104” (¶ 15), such that “[l]ocal
light source 104 is configured to illuminate display surface 108 with one or
more wavelengths of infrared light” (¶ 17).
Although the Examiner proposes to modify Immega with Powell, the
Examiner has not provided an articulated reasoning with some rational
underpinning as to how and why one of ordinary skill in the art would have
combined such references. See Kahn, 441 F.3d at 988; see also KSR, 550
U.S. at 418. In particular, the Examiner has not adequately explained why
one of ordinary skill in the art would have modified light guide source 33a
and transparent cover 31 of Immega with display panel 102 and local light
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source 104 of Powell, which are substantially duplicative hardware
components. For example, the Examiner has not explained why one of
ordinary skill in the art would have modified Immega with Powell, when
light guide source 33a of Immega includes electromagnetic radiation from
the far infrared region to the far ultra violet region, while local light source
104 of Powell is an infrared source. Thus, the Examiner’s conclusory
statements that “using a display in Immega’s system as the illumination
layer would improve Immega in the same way as Powell” and “simple
substitution of one known element—an illuminated display for another
known element—an illuminated cover would have led to predictable results”
does not address the redundant light source and covering of the respective
references and, therefore, does not articulate one of the rationales provided
in KSR with a rational underpinning to support a conclusion of obviousness.
See KSR, 550 U.S. at 415–421.
Accordingly, we are persuaded by Appellant’s arguments that:
Similarly, Powell’s display panel 102 is not itself a “display
being a light source for fingerprint imaging,” because it does
not provide light for fingerprint imaging. Rather, Powell’s
display panel 102 relies on the separate infrared light source
104 (like Immega’s separate light source 33) to illuminate the
display surface 108 with infrared light (not visible light), which
can be reflected by a touch input 122 for the purposes of
fingerprint imaging.
(Appeal Br. 29 (citations omitted).)
Thus, the Examiner has improperly combined Immega and Powell to
reject claims 1–5 and 9–18 under 35 U.S.C. § 103.
Accordingly, we do not sustain the rejection of claims 1–5 and 9–18
under 35 U.S.C. § 103.
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§ 103 Rejection—Immega, Powell, and Sasaki
We do not sustain the rejection of claims 6–8 under 35 U.S.C. § 103
over Immega, Powell, and Sasaki for the same reasons discussed previously
with respect to the rejection of claims 1–5 and 9–18 under 35 U.S.C. § 103
over Immega and Powell.

Substantial New Question
Because we do not sustain the rejections of claims 1–4 and 6–18
under 35 U.S.C. § 103, Appellant’s arguments (Appeal Br. 10–15) that the
substantial new question of patentability determination was improper are
rendered moot.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–4, 6–18 103 Lan, Immega 1–4, 6–18
1–5, 9–18 103 Immega, Powell 1–5, 9–18
6–8 103 Immega, Powell,
Sasaki
6–8
Overall
Outcome
1–4, 6–18

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

REVERSED
Appeal 2020-005916
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Patent 9,829,614 B2

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PATENT OWNER:
CHRISTENSEN O’CONNOR JOHNSON KINDNESS PLLC
1201 THIRD AVENUE
SUITE 3600
SEATTLE, WA 98101

THIRD PARTY REQUESTER:

PLUMSEA LAW GROUP, LLC
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