DETAILED ACTION
I. ACKNOWLEDGEMENTS
This Non-Final Office action addresses U.S. reissue application No. 18/235,014 (“014 reissue application” or “instant application”). Based upon a review of the instant application, the actual filing date is Aug. 17, 2023 (“319 Actual Filing Date”). Because the instant reissue application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The 014 reissue application is a reissue application of U.S. Patent No. 10,257,455 (“455 Patent”) titled “Image Sensor And Light Source Driver Integrated In A Same Semiconductor Package.” The application for the 455 Patent was filed on Feb, 7, 2017 and assigned by the Office U.S. patent application number 15/426,561 (“561 Application”) and issued on Apr. 9, 2019 with claims 1-20 (“Originally Patented Claims”). Because the instant reissue application is a continuation reissue application of 17/323,319, which is a continuation reissue application of 17/225,813 which was filed within two years after the 455 Patent was issued and 17/225,813 indicated broadening, broadening in this reissue application is permitted. See MPEP § 1412.03.
II. OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the instant application and after the Examiner’s independent review of the 455 Patent itself and its prosecution history, the Examiner finds that she cannot locate any ongoing proceeding before the Office or current ongoing litigation. Also based upon the Examiner’s independent review of the 455 Patent itself and the prosecution history, the Examiner finds that she cannot locate any previous reexaminations (ex parte or inter partes), and supplemental examinations. There was a Certificates of Correction correcting the extension under 35 USC 154 (b).
III. PRIORITY CLAIMS
Based upon a review of the instant reissue application and 455 Patent, the Examiner finds that the instant reissue application is a continuation reissue application of 17/323,319, which is a continuation reissue application of 17/225,813, which is a reissue application of US Patent 10,257,455 filed as 15/426,561 which is a continuation of application 14/579,825 filed on Dec. 22, 2014, now US Patent 9,581,696. The effective filing date of the instant reissue application is Dec. 22, 2014.
The instant reissue application does not claim any foreign priority.
Because the effective filing date of the instant application is on or after March 16, 2013, the present application is being examined under the AIA first to file provisions.
IV. PRELIMINARY AMENDMENT
The 014 reissue application contains a preliminary amendment (“014 Preliminary Amendment”). The 014 Preliminary Amendment contained, among other things, “REMARKS” (“2023 Remarks”), an IDS (“2023 IDS”), a “Reissue Application Declaration by Assignee” (“2023 Reissue Dec”), “CLAIM AMENDMENTS” (“2023 Claim Amendment”) and “SPECIFICATION AMENDMENTS” (“2023 Specification Amendment”).
The 2023 Claim Amendment added new claims 21-40 and canceled claims 1-20. On June 18, 2024, Applicant filed another IDS. All IDSs have been considered.
V. STATUS OF CLAIMS
In light of the above:
Claims 21-40 are currently pending (“Pending Claims”).
Claims 21-40 are currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 21-40 are rejected.
VI. SPECIFICATION
A. Multiple reissue
37 C.F.R. § 1.177 states:
(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
The Examiner finds that Applicant indicated two reissue applications have been filed for the 455 Patent. However, the 2023 Specification Amendment needs to be updated with the control number of the instant reissue application.
B. Lack of antecedent basis
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 21 recites “timing input” and “timing output.” However the whole specification does not use these terminologies.
VII. CLAIM INTERPRETATION
A. Lexicographic Definitions
After careful review of the original specification and unless expressly noted otherwise by the Examiner, the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes the Patent Owner is not their own lexicographer. See MPEP § 2111.01 IV.
B. ‘Sources’ for the ‘Broadest Reasonable Interpretation’
For terms not lexicographically defined by Patent Owner, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation (BRI) standard. In other words, the Examiner has provided the following interpretations simply as express notice of how she is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support her interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. light source: A device to supply radiant energy capable of exciting a phototube or photocell. See also: photoelectric control. IEEE 1000 The Authoritative dictionary of IEEE Standards Terms, Seventh Edition, 2000.
2. circuit (1) (A) The physical medium on which signals are carried across the AUI. The data and control circuits consist of an A circuit and a B circuit forming a balanced transmission system so that the signal carried on the B circuit is the inverse of the signal carried on the A circuit. (B) (data transmission) A network providing one or more closed paths. (C) An arrangement of interconnected components that has at least one input and one output terminal, and whose purpose is to pro- duce at the output terminals a signal that is a function of the signal at the input terminals. Synonyms: physical circuit; net- work. See also: expansion board; channel; telecommunication circuit. (D) An arrangement of interconnected electronic components that can perform specific functions upon application of proper voltages and signals. IEEE 1000 The Authoritative dictionary of IEEE Standards Terms, Seventh Edition, 2000.
3. Controller: (5) (A) A functional unit in a computer system that controls one or more units of the peripheral equipment. IEEE 1000 The Authoritative dictionary of IEEE Standards Terms, Seventh Edition, 2000.
4. Driver: (1) (communication practice) An electronic circuit that supplies input to another electronic circuit. (2) (A) (software) A software module that invokes and, per- haps, controls and monitors the execution of one or more other software modules. (B) (software) A computer program that controls a peripheral device and, sometimes, reformats data for transfer to and from the device. (3) A program, circuit or device used to power or control other programs, circuits or devices. IEEE 1000 The Authoritative dictionary of IEEE Standards Terms, Seventh Edition, 2000.
5. Chip: (3) A small piece of silicon or other semiconductive material on which circuits can be placed. (4) A small unpackaged functional element made by subdividing a wafer of semiconductor material. Sometimes referred to as a die. Also used as a modifier to indicate an operation that applies to the entire chip as in chip enable or chip clear. IEEE 1000 The Authoritative dictionary of IEEE Standards Terms, Seventh Edition, 2000.
6. register: (1) (electronic computation) A device capable of retaining information, often that contained in a small subset (for example, one word), of the aggregate information in a digital computer. See also: address register; index register; circulating register; shift register. IEEE 1000 The Authoritative dictionary of IEEE Standards Terms, Seventh Edition, 2000.
C. 35 U.S.C. § 112 (f) (§ 112 (f))
1. Basis for invoking § 112 (f)
A second exception is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 (f). See MPEP § 2181 et seq. To invoke § 112 (f), a claimed phrase must meet the three-prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 I.
As explained in MPEP § 2181 I, claim limitations that meet the following three-prong test will be interpreted under § 112 (f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with § 112 (f). The presumption that the claim limitation is interpreted under § 112 (f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with § 112 (f). The presumption that the claim limitation is not interpreted under § 112 (f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations that use the word “means” (or “step”) are being interpreted under § 112 (f) except as otherwise indicated in an Office action. Conversely, claim limitations that do not use the word “means” (or “step”) are not being interpreted under § 112 (f) except as otherwise indicated in an Office action.
2. Functional Phrases
The instant reissue application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112 (f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such functional phrases with the corresponding functions are listed below:
FP#1: “a memory coupled to the at least one processor and storing instructions to cause the at least one processor to at least one of: control a configuration setting of the semiconductor chip package, perform depth capture using the semiconductor chip package, or perform facial recognition based on the depth capture.” – Claim 30.
FP#2: “a timing circuit to generate a plurality of clock signals with different phase relationships for output via the plurality of timing outputs.” – Claim 31.
3. 3 Prong Analysis
FP#1 recites “instruction to cause that at least one processor to…” and FP#2 recites “a timing circuit.”
Each of “instruction” or “timing circuit” is a placeholder for means inasmuch as the term denotes structure, such as software, but it does not denote sufficient structure for executing the entirety of the claimed functions. That is, generic “instruction,” “timing circuit,” is not capable of being executed to perform specialized functions without being programmed or made to do so. For example, it is well known in the art that instruction can comprises different computer code for performing different functions and a timing circuit can be performing very different functions. In other words, each “instruction” and “timing circuit” is a generic term that can encompass different applications/implementations for different purposes. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) – the presumption that a claimed term should not be interpreted according to § 112 (f) or § 112(f) can be rebutted by demonstrating that, to a person of ordinary skill in the art, the term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.
Each of the FP#1 – FP#2 recite functional language that modifies the placeholder “instruction” and “timing circuit” respectively. The functions are:
Function of FP#1: “control a configuration setting of the semiconductor chip package, perform depth capture using the semiconductor chip package, or perform facial recognition based on the depth capture ” – Claim 30.
Function of FP#2: “to generate a plurality of clock signals with different phase relationships for output via the plurality of timing outputs” – Claim 31.
Each of “instruction” and “timing circuit” is not sufficient structure for executing the claimed functions, nor is it modified by sufficient structure for executing the functions. Instead, it is a generic term that does not implicate sufficient structure, nor is sufficient structure (i.e., an algorithm for performing the claimed functions) expressly recited in the claims.
4. Corresponding Structures
For computer-implemented means-plus-function limitations, a general purpose computer is only sufficient as the corresponding structure for performing a general computing function. When there is a specific function to be performed, it is required that an algorithm for performing the function be disclosed, and the corresponding structure becomes a general purpose computer transformed into a special purpose computer by programming the computer to perform the disclosed algorithm. The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. See MPEP § 2181 II B (enclosed below):
An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure. [Citations and select quotations omitted.]
Based upon a review of the 455 Patent, the Examiner concludes that the corresponding structure for each of the above-identified Functional Phrases is disclosed as follows. If Patent Owner wishes to provide further explanation or dispute the Examiner’s interpretation of the corresponding structure, Patent Owner must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
FP#1: “a memory coupled to the at least one processor and storing instructions to cause the at least one processor to at least one of: control a configuration setting of the semiconductor chip package, perform depth capture using the semiconductor chip package, or perform facial recognition based on the depth capture.” – Claim 30.
--Based upon a review of the 014 reissue application itself, the Examiner concludes that the corresponding structure for FP#1 is the image processor 104 shown in Fig. 1 and the corresponding algorithm for FP#1 are:
i) control a configuration setting of the semiconductor chip package (col. 4, lines 51-57, col. 8, lines 1-8, col. 10, lines 12-23 and lines 62-67, col. 11, lines 37-40, col. 13, lines 30-39 of the 455 Patent. Figs. 7-8, the configuration setting is set by commands that received from connector 701 in Fig. 7 and stored in configuration register 408. Further commands are received through application interface running on the system shown in Fig. 8. For example, configuration setting such as capturing 2D, 3D images can be set),
ii) perform depth capture using the semiconductor chip package (description in association with Figs. 5a and 5b of the 455 Patent. In summary, time of flight method is used to perform depth capture which includes “sensing with depth capture pixels light that was generated with the light source driver signal and reflected from the object”),
iii) perform facial recognition based on the depth capture (col. 1, lines 21-29, known algorithm for facial recognition of the 455 Patent. However there is no algorithm sufficiently disclosed in the specification for facial recognition based on depth capturing).
FP#2: “a timing circuit to generate a plurality of clock signals with different phase relationships for output via the plurality of timing outputs.” – Claim 31.
Based upon a review of the 014 reissue application itself, the Examiner concludes that the corresponding structure for FP#2 appears to be comprised of circuit shown in Fig. 4 described in col. 8, line 15 -col. 9, line 48 of the 455 Patent.
(5) Dependent claims
Dependent claim of claim 31, i.e., claim 32 also invoke §112 (f) because sufficient structures are not provided in this claim to perform the claimed function of FP#2.”
(6) How To Prevent FP#1-#2 From Invoking §112 (f)
If Applicant does not intend to have the claim limitations invoke §112 (f), Applicant may amend claims so that it will clearly not invoke §112 (f).
Moreover, if Applicant believes FP#1-#2 has a structural meaning known to a person of ordinary skill in this particular art, Applicant should in their next appropriately filed response, expressly state on the record that FP#1-#2 has a structural meaning known to a person of ordinary skill in this particular art and provide appropriate evidence in support thereof (e.g. a prior art U.S. patent).
Additionally, in order to show that FP#1-#2 does not meet 3 Prong Analysis: Invocation Prong (C), Applicant must also state on the record and provide evidence in support thereof that the claimed structure (of FP#1 whatever it is) can perform the entire Function of FP#1-#2.
Applicant is reminded that should Applicant amend a claimed phrase so that a claimed phrase does not invoke §112 (f) or successfully argue that a claimed phrase does not invoke §112 (f), elements from the specification (including any algorithms) will not be read into the claims. “This court [the Federal Circuit] has repeatedly and clearly held that it will not read unstated limitations into claim language.” Northern Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1290, 55 USPQ2d 1065, 1072 (Fed. Cir. 2000).
VIII. DOUBLE PATENTING
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
A. RE49,664 (the 664 Patent)
Claims 21-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-33 of 664 Patent in view of Jeon (US Patent Pub. 20160142701).
Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 21-23 of the instant reissue application and claim 23 of the 664 Patent recite common subject matter; Whereby claims 21-23, which recites the open ended transitional phrase “comprising”, do not preclude the additional elements recited by claim 23 of the 664 Patent, and
Claims 21-23 of the instant reissue application recite “an image sensor having a plurality of timing inputs” and “the second semiconductor chip comprising a plurality of timing outputs coupled to the plurality of timing inputs of the image sensor and further comprising an output coupled to an input of the IR light source.” Claim 23 of the 664 Patent does not recite this limitation. However, having a plurality of inputs in an image sensor and a plurality of outputs in a control circuit that couple with the input of the image sensor and light source are well known in the art and are disclosed by Jeon (Figs. 19-21 and associated descriptions. MLIT# represents multiple signals that are inputted to the image sensor/image generator. 2020 in Fig. 21 have plurality of output to the image sensor 2062. See also [0102], [0103] of Jeon). To the extent the Jeon does not expressly teach the aperture, it is notoriously well known in the art that a digital camera has a semiconductor package that includes an aperture for light to coming to the sensing elements of the camera. It is desirable to have a 3D imager that reduces power or generate an accurate image ([0006] of Jeon). Therefore it would have been obvious to one of ordinary skills in the art, at the time of the ‘455 Patent was effectively filed, to have outputs of the control circuit including the light driver control circuit coupled with the inputs of the image sensor and the IR light source in claim 23 of the 664 Patent.
Claims 24-33 of the instant reissue application recite similar limitation as claim 24-33 of the 664 Patent and based on the reason that claims 21-23 are obvious in view of claim 23 of the 664 Patent, claims 24-33 are also obvious in view of claims 24-33.
B. RE49,748 (the 748 Patent)
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of US Patent RE49,748 in view of Jeon (US Patent Pub. 20160142701).
Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 21 of the instant reissue application and claim 3 of the 748 Patent recite common subject matter;
Claim 21 of the instant reissue application recite “an infrared (IR) light source; a package substrate, … an aperture at an external surface of the semiconductor chip package opposite the package substrate; and a set of lens disposed between the aperture and the image sensor” which are not present in claim 3 of the 748 Patent and which are disclosed by Jeon ( [0109], Figs. 19-21). Claim 21 of the instant reissue application further recites “an image sensor having a plurality of timing inputs” and “the second semiconductor chip comprising a plurality of timing outputs coupled to the plurality of timing inputs of the image sensor and further comprising an output coupled to an input of the IR light source.” Claim 3 of the 748 Patent does not recite this limitation. However, having a plurality of inputs in an image sensor and a plurality of outputs in a control circuit that couple with the input of the image sensor and light source are well known in the art and are disclosed by Jeon (Figs. 19-21 and associated descriptions. MLIT# represents multiple signals that are inputted to the image sensor/image generator and there are multiple outputs from 2020 to the image sensor 2062 in Fig. 21). To the extent the Jeon does not expressly teach the aperture, it is notoriously well known in the art that a digital camera has a semiconductor package that includes an aperture for light to coming to the sensing elements of the camera. It is desirable to have a 3D imager that reduces power or generate an accurate image ([0006] of Jeon). Therefore it would have been obvious to one of ordinary skills in the art, at the time of the ‘455 Patent was effectively filed, to have outputs of the control circuit including the light driver control circuit coupled with the inputs of the image sensor and the IR light source in claim 3 of the 748 Patent.
B. US Patent 9,581,696
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent 9,581,696 (the 696 Patent) in view of Jeon (US Patent Pub. 20160142701).
Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 21 of the instant reissue application and claim 1 of the 696 Patent recite common subject matter;
Claim 21 of the instant reissue application recite “an infrared (IR) light source; a package substrate, … an aperture at an external surface of the semiconductor chip package opposite the package substrate; and a set of lens disposed between the aperture and the image sensor” which are disclosed by Jeon ([0109], Figs. 21-23 and 19-20. To the extent the Jeon does not expressly teach the aperture, it is notoriously well known in the art that a digital camera has a semiconductor package that includes an aperture for light to coming to the sensing elements of the camera. It is desirable to have a 3D imager that reduces power or generate an accurate image ([0006] of Jeon). Therefore it would have been obvious to one of ordinary skills in the art, at the time of the ‘455 Patent was effectively filed, to have outputs of the control circuit including the light driver control circuit coupled with the inputs of the image sensor and the IR light source in claim 1 of the 696 Patent.
IX. Rejection 35 U.S.C. §251 - Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
As provided in §251, the Director shall issue reissue the patent for the invention disclosed in the “original patent.” To meet the original patent requirement, the specification of the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” See Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014). “[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. Specifically, the invention now being claimed in reissue must be expressly disclosed in the specification of the original patent. Id. at 1363.2
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. Forum US Inc. v. Flow Valve LLC (decided: June 17, 2019).
Claims 21-40 are rejected under 35 U.S.C. §251 because they do not comply with the original patent requirement. In summary, the invention as now claimed was not unequivocally disclosed in the specification of the ‘455 Patent as a separate invention or not for the same invention as that disclosed as being the invention in the original patent.
Based on MPEP §1412.01 and the above court decisions, Examiners find the analysis of whether original patent requirement is met involves a simple two-step process: (1) determine what is the new invention now being claimed, i.e., how the claims have been broadened, and (2) is that new invention or new scope of invention unequivocally disclosed in the specification as a separate invention.
As to (1), the Examiners finds that the original patent claims 1-7 and 14-20 have been broadened by the amendment and via claims 21-33 and the original patent claims 8-13 are broaden by the amendment and via claim 34-40. For example, independent claims 21 of this instant reissue application no longer require the following claim elements: “a light source driver circuit and a timing circuit integrated in a same semiconductor chip package,” “said light source driver circuit comprising an output to provide said light source drive signal” and “said timing circuit comprising a first output to provide said first clock signal, said light source driver circuit comprising an input to receive a second clock signal for said light source drive signal, said timing circuit comprising an output to provide said second clock signal.” Independent claim 34 of this instant reissue application no longer require the following claim elements: “generating a first clock signal and a second clock signal with a timing circuit that is within a semiconductor chip package .”
The invention being claimed in claims 21-33 now does not require a light source driver circuit to provide light source drive signal and a timing circuit to provide first and second clock signals (claims 31-32 still require the timing circuit but not the light driver circuit). The invention being claimed in claims 34-40 now does not require “generating a first clock signal and a second clock signal with a timing circuit.”
As to (2), after the Examiners reviewed the ‘455 Patent, the Examiners could not find an equivocal disclosure in the ‘455 Patent that does not require a light source driver circuit to provide light source drive signal and a timing circuit to provide first and second clock signals. Also the Examiners could not find an equivocal disclosure in the ‘455 Patent that does not require “generating a first clock signal and a second clock signal with a timing circuit.” Further, without the light source driver circuit to provide light source drive signal and the timing circuit to provide first and second clock signals, and without performing the step of “generating a first clock signal and a second clock signal with a timing circuit,” the Examiners do not find the apparatus or method being claimed in the instant reissue application would operate as intended. Rather, the apparatus is dependent on the light source driver circuit to provide light source drive signal and the timing circuit to provide first and second clock signals and the method is dependent on the step of “generating a first clock signal and a second clock signal with a timing circuit.” In other words, the Examiner could not find an embodiment that does not require the light source driver circuit to provide light source drive signal and the timing circuit to provide first and second clock signals and “generating a first clock signal and a second clock signal with a timing circuit.”
Because claims 21-40 are broader in scope than the patented claims of the ‘455 Patent, and because the new scope of claims 21-40 is directed to an invention not unequivocally disclosed in the ‘455 Patent as a separate invention, claims 21-40 are rejected under 35 U.S.C. §251 as not complying with the original patent requirement.
Examiners further find this situation is analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled in FIGS. 4 and 5 at issue):
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Forum US, 926 F.3d at 1348-49.
In reissue, patentee broadened the claims to simply remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352.
The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id.
Similarly, the ‘455 Patent here does not clearly and unequivocally disclose an apparatus that does not use a light source driver circuit to provide light source drive signal and a timing circuit to provide first and second clock signals and the ‘455 Patent here also does not clearly and unequivocally disclose a method that does not perform the step of “generating a first clock signal and a second clock signal with a timing circuit.”
X. CLAIM REJECTIONS - 35 USC § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 21-33 and 39 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor.
A. Lack of Algorithm
Claim 39 recites computer-implemented functions including, “performing facial recognition based on the time-of-flight depth capture.”
Applicant is respectfully reminded, for computer-implemented functional claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.” MPEP § 2161.01 I.
Based upon the claim language itself, the specification, and the prior art now of record, the Examiner finds that “performing facial recognition based on the time-of-flight depth capture” is computer implemented. See e.g., col. 1, lines 1- of the ‘455 Patent. Also based upon the claim language itself, the specification, and the prior art now of record, the Examiner finds that “performing facial recognition based on the time-of-flight depth capture” requires “special programming” since, to a person of ordinary skill in this particular art, this claimed function (i.e., “performing facial recognition based on the time-of-flight depth capture”) is clearly outside the scope, or the known functionalities, of a general purpose computer. For a discussion on the differences between a “general purpose computer” and a “special purpose computer,” see EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015).
However, Applicant’s specification does not describe an algorithm that performs the function “performing facial recognition based on the time-of-flight depth capture” in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
For example, the only paragraph in Applicant’s specification that mentions facial recognition states “Depth capturing may be used, for example, to perform various intelligent object recognition functions such as facial recognition (e.g., for secure system un-lock) or hand gesture recognition (e.g., for touchless user interface functions)” at col. 1, lines 24-29 of the ‘455 Patent.
However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Applicant is also reminded, “[i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01 I.
Therefore, because an algorithm for the function “performing facial recognition based on the time-of-flight depth capture” is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter, and in accordance with MPEP § 2161.01, claim 39 is rejected for lack of written description.
B. New Matter-Timing input/timing output
Claim 21 recites “timing input” and “timing output,” which was not sufficiently described in the specification. Therefore they are new matter. Dependent claims of claim 21, i.e., claims 22-33, are also rejected for the same reason.
XI. CLAIM REJECTIONS - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 30 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “performing facial recognition based on the depth capture” invokes 35 U.S.C. 112(f). However, Applicant fails to clearly link or associate the claimed function to some the corresponding structure. In other words, corresponding structure for performing this claimed function is not sufficiently disclosed in the specification of the ‘455 Patent. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
XII. CLAIM REJECTIONS - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
A. Claims 21, 22, 25, 33, 34, 36-38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al (US Patent Pub 2016/014701) in view of Ooki et al (US Patent 10,784,293).
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-Fig. 21 of Jeon.
Regarding claim 21, Jeon teaches an apparatus comprising:
an infrared (IR) light source (Fig. 21, [0103], “the light source 2110 may be a light-emitting diode (LED) or a laser diode (LD) that may emit light having a near-infrared ray (NIR) wavelength of about 850 nm.” Wavelength of 850nm belongs to the infrared range); and
a semiconductor chip package comprising:
a package substrate ([0109], Fig. 25, a semiconductor chip has a substrate);
a first semiconductor chip comprising an image sensor having a plurality of timing inputs ([0109], “The 3D image sensor module 2530 may be implemented by using an independent semiconductor chip or may be integrated with the CPU 2510 to obtain a single semiconductor chip. As described above, the 3D image sensor module 2530 included in the electronic apparatus 2500 of FIG. 25 may reduce power consumption by using a distortion-compensated oscillation frequency as a driving voltage of an optical shutter, or may reduce power consumption and generate accurate image data.” Fig. 25, see also Figs. 19-21, especially Fig. 21, which show multiple inputs to the image sensor from the Optical Shutter);
a second semiconductor chip disposed at the package substrate, the second semiconductor chip comprising a plurality of timing outputs coupled to the plurality of timing inputs of the image sensor ([0066], “The optical shutter 120 varies transmittance of reflective light RLIT reflected from a subject, according to a driving voltage Vdrv, and modulates the reflective light RLIT into at least two optical modulation signals MLIT# having different phases.” [0109], Figs. 19-21 and 25. the control outputs can be implemented on a separate chip. MLIT# outputs are timing outputs coupled to the inputs of image generator or image sensor ) and further comprising
an output coupled to an input of the IR light source (Figs. 21-23, [0070], [0103], e.g., in Fig. 21, the output from the Light Source Driver 2130 is coupled to the Light Source 2110.);
a set of lenses disposed between the aperture and the image sensor (2150, 2250, 2350 in Figs. 21-23, respectively).
To the extent that Jeon does not expressly disclose “an aperture at an external surface of the semiconductor chip package opposite the package substrate, ”in the field of obtaining image with depth information (Abstract of Ooki), Ooki discloses a semiconductor package that has an image sensor (Figs. 1, 38 and 40), an aperture at an external surface of the semiconductor chip package opposite the package substrate (Figs. 38 and 40 and associated descriptions, both of these figures show an aperture at an external surface of the semiconductor chip package opposite the packet substrate).
Having an aperture at an external surface of the semiconductor chip package opposite the package substrate in a digital camera is conventional and notoriously well-known in the art and it is used for letting lights in through the aperture to the package for forming an image. Therefore it would have been obvious to one of ordinary skills in the art, at the time the invention was effectively filed, to have an aperture in the semiconductor package of Jeon so that image can be formed.
Regarding claim 22, Jeon in view of Ooki teaches the apparatus of claim 21,further comprising: a IR light source coupled to the second semiconductor chip (Jeon, [0070], “Referring to FIG. 4, when incident light having a certain wavelength (e.g., near infrared (NIR) 850 nm) is phase-modulated through a light source (e.g., light-emitting diode (LED) or laser diode (LD)) and phase-modulated incident light ILIT is projected onto a subject.” See also Figs. 21-23).
Regarding claim 25, Jeon in view of Ooki teaches the apparatus of claim 21, further comprising: a filter disposed between the set of lenses and the image sensor (Jeon, 2170 in Fig. 21, [0102]. See also Figs. 22-23).
Regarding claim 33, Jeon in view of Ooki teaches the apparatus of claim 21, wherein the apparatus comprises one of a tablet computer or a smartphone (Jeon, [0110], “Referring to FIG. 26, the electronic apparatus 2600 may be implemented using a data processing apparatus capable of using or supporting a mobile industry processor interface (MIPI), for example, a mobile phone, a personal digital assistant (PDA), a portable multimedia player (PMP), or a smartphone.”)
Regarding claim 34, Jeon teaches a method for a mobile computing system having a semiconductor chip package, the method comprising:
generating a drive signal at a first semiconductor chip of the semiconductor chip package (Figs. 21-23, [0103], “The light source driver 2130 may drive the light source 2110 by using, for example, an amplitude modulation or phase modulation method, according to the main control signal XconM received from the main controller 2190. Depending on a driving signal of the light source driver 2130, incident light ILIT that radiates from the light source 2110 to a subject may have a form of a periodic continuous function having a predetermined period. For example, the incident light ILIT may be generated as illustrated in FIG. 4.” The signal that provides timing of emission of IR light is the drive signal.);
controlling, based on the drive signal, emission of infrared light by a light source of the mobile computing system (Figs. 4 and 21-23, [0102] and [0103], the emission of the IR light was controlled by the drive signal).
capturing reflected infrared light at an image sensor of a second semiconductor chip of the semiconductor chip package via an aperture in the semiconductor chip package (Figs. 21-23), wherein capturing the reflected infrared light at the image sensor is timed based on the drive signal (Figs. 4, 21-23 and associated descriptions); and
performing time-of-flight depth capture at the mobile computing system based on the captured reflected infrared light ([0005], “Depth information associated with a distance between a sensor module for generating a three-dimensional (3D) image and a subject may be calculated by a method of measuring time of flight (TOF) of light. Using the method of measuring TOF, the depth information may be calculated by modulating light reflected from a subject.” [00104]).
To the extent that Jeon does not teaches performing time-of-flight depth capture which is through an aperture, in the field of obtaining image with depth information (Abstract of Ooki), Ooki discloses
There is a method called ToF (Time of Flight) for obtaining depth information using infrared light or the like (for example, see Japanese Patent Application Laid-Open No. 20 2012-49547). When the present technology is applied to this method, the degree