Sony Corporation

Patent Trials and Appeals BoardMar 23, 2021

2020002631 (P.T.A.B. Mar. 23, 2021)

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. 15/464,959 03/21/2017 Shin Iwabuchi 880001-5472-US04 8250 165569 7590 03/23/2021 MICHAEL BEST & FRIEDRICH LLP (SONY) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER LEE, JOHN R ART UNIT PAPER NUMBER 2878 NOTIFICATION DATE DELIVERY MODE 03/23/2021 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): DCipdocket@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIN IWABUCHI and MAKOTO MOTOYOSHI Appeal 2020-002631 Application 15/464,959 Technology Center 2800 Before KAREN M. HASTINGS, DEBRA L. DENNETT, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sony Corporation. Appeal Br. 3. Appeal 2020-002631 Application 15/464,959 2 CLAIMED SUBJECT MATTER The claims are directed to a semiconductor image sensor module. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added to highlight key disputed limitation): 1. An imaging device, comprising: a first semiconductor chip including: a plurality of pixels arranged in a first array, a respective pixel of the plurality of pixels including a photoelectric conversion element disposed within the first semiconductor chip at a light incident side of the first semiconductor chip, and a multilayer wiring layer disposed below the photoelectric conversion element in a cross-section perspective, and disposed within the first semiconductor chip at a side of the first semiconductor chip opposite the light incident side; and a second semiconductor chip including a first circuit including an analog to digital converter configured to process an output of a pixel array unit, the pixel array unit including a subset of the plurality of pixels, wherein a layout area of the analog to digital converter is substantially the same as a layout area of the pixel array unit, the first semiconductor chip is stacked over the second semiconductor chip such that the side of the first semiconductor chip opposite the light incident side faces a surface of the second semiconductor chip, and the first semiconductor chip and the second semiconductor chip are connected to one another via at least one of a plurality of connection portions. Appeal 2020-002631 Application 15/464,959 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Cho US 2004/0041927 A1 Mar. 4, 2004 Yang US 6,809,769 B1 Oct. 26, 2004 Pan US 7,060,592 B2 June 13, 2006 Iwabuchi US 9,955,097 B2 Apr. 24, 2018 Koyanagi JP 2001-339057 A Dec. 7, 2001 REJECTIONS Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Koyanagi, Cho, Pan, and Yang. Claims 1–20 stand rejected on the ground of nonstatutory double patenting as unpatentable over claims 1–15 of Iwabuchi (the parent application), Koyanagi, Cho, Pan, and Yang. OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. The dispositive issue for each rejection on appeal is the same: whether the applied prior art of Koyangi and/or Yang teaches or suggests that “a Appeal 2020-002631 Application 15/464,959 4 layout area of the analog to digital converter is substantially the same as a layout area of the pixel array unit” as recited in claim 1. Appellant argues that the Examiner erroneously included other features of the chip of Koyanagi as part of the layout area of the ADC (Appeal Br. 9, 10; Reply Br. 4). Appellant also argues that the Examiner impermissibly relied upon the drawing dimensions in Yang (Appeal Br. 12, 13). It is well settled that “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.”). It has also been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Here, the plain language of claim 1 only requires that “a layout area of the analog to digital converter is substantially the same as a layout area of the pixel array unit” (emphasis added), which clearly encompasses either one of the analog/digital converter (i.e., ADC) to pixel array units of Appeal 2020-002631 Application 15/464,959 5 Koyanagi or Pang as explained by the Examiner (e.g., Ans. 6). Notably, “a layout area” does not even specify the entire layout area of each component. So long as “a” layout area (that is, any area that is part of the entire layout area) of the analog to digital converter is substantially the same as “a” layout area (i.e., any area that is part of the entire layout area) of the pixel array unit, the recited limitation is satisfied. Appellant’s Specification lacks any limiting definitions, and does not even provide guidance as to what “substantially” the same includes/precludes. The Specification description relied upon for this feature (Appeal Br. 5, relying on Spec. ¶ 99) states: Usually, the analog/digital converter requires 50 to 100 times of layout area to the area of 1 pixel. Consequently, it is constituted in this exemplified embodiment such that a single analog/digital converter collectively processes the number of pixels of around the layout area of one analog/digital converter. Spec. ¶ 99. Notably, the Specification does not appear to describe any specific relationship of the layout areas as argued by Appellant. It appears “this exemplified embodiment” mentioned in paragraph 99 refers to Appellant’s Figure 3 (Spec. ¶ 100). Figure 3 appears to show a configuration of pixel array unit 88 to ADC 87 very similar to that of Yang’s Figure 5A relied upon by the Examiner (Ans. 7). Furthermore, what are the outer limits of “substantially the same”: is a layout area of the converter of 1.5 (or 2 or 4) times or .75 (or .5) times the layout area of a pixel array unit encompassed by “substantially” the same, in comparison to 50 to 100 times mentioned in Appellant’s paragraph 99? While Appellant contends that neither Koyanagi nor Yang appears to explicitly describe the disputed claim language, nothing in the claim language requires what Appellant appears to urge the claim to Appeal 2020-002631 Application 15/464,959 6 require. Appellant has not provided adequate evidence that the Specification’s description distinguishes over that which is show by the applied prior art. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (the absence in the prior art of subject matter that is not included in the claims does not preclude unpatentability of the claimed subject matter). There is also no persuasive merit to Appellant’s contention that the Examiner is impermissibly relying upon Yang’s drawings for precise proportions or specific dimensions (Appeal Br. 12). Drawings can be relied upon 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); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (patent drawings can anticipate claims if the drawings clearly show the claimed structure). While patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue, Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000), that does not mean, “that things patent drawings show clearly are to be disregarded.” Mraz, 435 F.2d at 1072. Here, the Examiner is relying upon what the drawings reasonably disclose and suggest to one of ordinary skill in the art (i.e., the relative locations and relative sizes of the components depicted therein) which should not be disregarded. The Examiner correctly determined that the disputed claim recitation reasonably encompasses a relationship of the analog to digital converter and pixel array unit of either one of Koyanagi or Yang. Alternatively, the Examiner correctly determined that either of Koyanagi or Yang reasonably teaches or suggests the disputed claim limitation. Appeal 2020-002631 Application 15/464,959 7 In sum, Appellant’s arguments fail to consider the breadth of the claim language, the applied prior art as a whole, and the inferences that one of ordinary skill would have made. In light of the above, we sustain both of the Examiner’s rejections on appeal. CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Koyanagi, Cho, Pan, Yang 1–20 1–20 Nonstatutory Double Patenting Iwabuchi, Koyanagi, Cho, Pan, Yang 1–20 Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED