Ex Parte Kurokawa et al

Patent Trial and Appeal Board

Aug 28, 2017

13957559 (P.T.A.B. Aug. 28, 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.
13/957,559 08/02/2013 Yoshiyuki Kurokawa 12732-0818002 4282
26171 7590 08/30/2017
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LEGASSE JR, FRANCIS M
ART UNIT PAPER NUMBER
2878
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIYUKI KUROKAWA, TAKAYUKIIKEDA
and HIKARU TAMURA
Appeal 2016-008413
Application 13/957,559
Technology Center 2800
Before TERRY J. OWENS, GRACE KARAFFA OBERMANN, and
MERRELL C. CASHION JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2—22. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a semiconductor device. Claim 2 is illustrative:
2. A semiconductor device comprising:
a first sensor in a pixel;
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Application 13/957,559
a second sensor out of the pixel;
a controller configured to set a drive condition of
the first sensor in accordance with intensity of light
obtained by the second sensor;
wherein the first sensor comprises:
an element configured to generate an electric
signal when receiving light;
and a transistor whose gate terminal is
electrically connected to one of terminals of the
element.
The claims stand rejected as follows: claims 2—5 and 20 under
35 U.S.C. § 102(b) over Nakanishi, claim 6 under 35 U.S.C. § 103 over
Nakanishi, claim 7 under 35 U.S.C. § 103 over Nakanishi in view of Mori,
claims 8—12, 14—18, 21 and 22 under 35 U.S.C. § 103 over Nakanishi in
view of Han,2 and claims 13 and 19 under 35 U.S.C. § 103 over Nakanishi
in view of Han and Mori.
1 Citations herein to Nakanishi are to US 2010/0141623 A1 (published
June 10, 2010) which the Examiner relies upon as an English language
equivalent of WO 2009/057561 A1 (Final Act. 2).
2 The Examiner inadvertently omits claims 12 and 14—18 from the statement
of the rejection (Final Act. 5—8).
The References
Han
Mori
Nakanishi
US 2009/0207157 A1 Aug. 20, 2009
US 2011/0261261 A1 Oct. 27,2011
WO 2009/057561 A11 May 7, 2009
The Rejections
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Application 13/957,559
OPINION
We reverse the rejections. We need address only the independent
claims (2, 8 and 14).3
Claim 2
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Claim 2 requires a first sensor comprising a transistor whose gate
terminal is electrically connected to a terminal of an element. Nakanishi
discloses a display device comprising a first photosensor (PS1) (which the
Examiner relies upon as corresponding to the Appellants’ first sensor and
element (Final Act. 1)) and a reset transistor (RESET, Fig. 4 adjacent to
PS1) (which the Examiner relies upon as corresponding to the Appellants’
transistor whose gate terminal is electrically connected to a terminal of an
element (Final Act. 3)) flflf 88—91; Fig. 4). The reset transistor’s source or
drain terminal is electrically connected to the first photosensor’s source or
drain terminal (Fig. 4).
The Examiner finds that because the Appellants’ claim 2 does not
recite that the electrical connection between the transistor’s gate terminal
and the element’s terminal is a direct electrical connection, the Appellants’
claim requirement of a transistor whose gate terminal is electrically
3 The Examiner does not rely upon Mori for any disclosure that remedies the
deficiency in Nakanishi and Han as to independent claims 2, 8 and 14 from
which, respectively, claims 7, 13 and 19 depend (Final Act. 4—5, 8—9).
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connected to a terminal of an element is met by the indirect electrical
connection between Nakanishi’s reset transistor’s gate terminal and PS1 ’s
source or drain terminal via the reset transistor’s source or drain terminal
(Ans. 5—6).
“‘[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ Specification
states that the term “electrically connected” includes connection via an
intermediate object having an electrical function (| 17). The Examiner,
however, does not establish that the broadest reasonable interpretation of
“electrically connected” consistent with the Specification includes electrical
connection between a transistor’s gate and another component’s source or
drain via that transistor’s source or drain.
The Appellants’ claim 2 also requires a controller configured to set a
drive condition of a first sensor (in a pixel) in accordance with intensity of
light obtained by a second sensor (out of the pixel). The Examiner relies
upon Nakanishi’s first and second photosensors (PS1, PS2) (| 91; Fig. 4),
respectively, as corresponding to the Appellants’ first and second sensors
(Final Act. 2). The Examiner finds that “Figure 7 of the Nakanishi reference
disclose[s] how the second photosensor output is used to set a drive
condition of the first photosensor. This drive condition provides the
capacitors with the proper drive signal to optimize the capacitance for the
first photosensor” (Ans. 7). The Examiner, however, does not provide a
substantive explanation in support of that finding.
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Application 13/957,559
The Examiner, therefore has not established that Nakanishi expressly
or inherently discloses every limitation of the Appellants’ claim 2.
Accordingly, we reverse the rejection of that claim and its dependent
claims 3—6 and 20.4
Claims 8 and 14
The Appellants’ claims 8 and 14 require a first transistor whose one of
a source terminal and a drain terminal is electrically connected to a terminal
of an element, and a second transistor whose gate terminal is electrically
connected to the other one of the source terminal and the drain terminal of
the first transistor. As with claim 2, the Examiner relies upon Nakanishi’s
photosensor PS1 and adjacent reset transistor as corresponding, respectively,
to the Appellants’ element and first transistor (Final Act. 5—7). The
Examiner finds that “Han (figure 4) discloses a semiconductor device
comprising a second transistor whose gate terminal is electrically connected
to the other one of the source terminal and the drain terminal of the first
transistor” (Final Act. 6—7) and concludes that “[i]t would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to use the second transistor of Han in combination with Nakanishi
because it is common to have a photo-detection unit with three to four
transistors for proper readout” (id.).
The Examiner does not establish that “it is common to have a photo­
detection unit with three to four transistors for proper readout.” Nor does
4 The Examiner, in the rejection of dependent claim 6 under 35 U.S.C. § 103
over Nakanishi, does not rely upon any obviousness rationale regarding the
requirements of claim 2 from which claim 6 depends (Final Act. 4).
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the Examiner establish that Han’s relied-upon Figure 4 shows a transistor
whose gate terminal is electrically connected to one of the source terminal
and the drain terminal of another transistor. Regardless, establishing a prima
facie case of obviousness of an invention comprising a combination of
known elements requires “an apparent reason to combine the known
elements in the fashion claimed . . . KSRInt’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). The Examiner does not establish that the relied upon
reason for combining Nakanishi and Han, i.e., “for a proper readout” (Final
Act. 6—7), would have been apparent to one of ordinary skill in the art from
those references.
Claims 8 and 14, like claim 2, require a controller configured to set a
drive condition of a first sensor (in a pixel) in accordance with intensity of
light obtained by a second sensor (out of the pixel). The Examiner relies
upon the same finding regarding this claim requirement for all three claims
(Ans. 7). That finding is unavailing to the Examiner as set forth above with
respect to claim 2.
Thus, the Examiner has not established a prima facie case of
obviousness of the devices claimed in the Appellants’ claims 8 and 14 and
their dependent claims.
DECISION/ORDER
The rejections of claims 2—5 and 20 under 35 U.S.C. § 102(b) over
Nakanishi, claim 6 under 35 U.S.C. § 103 over Nakanishi, claim 7 under
35 U.S.C. § 103 over Nakanishi in view of Mori, claims 8—12, 14—18, 21
and 22 under 35 U.S.C. § 103 over Nakanishi in view of Han, and claims 13
and 19 under 35 U.S.C. § 103 over Nakanishi in view of Han and Mori are
reversed.
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It is ordered that the Examiner’s decision is reversed.
REVERSED
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