Ex Parte Steiner et al

Board of Patent Appeals and Interferences

Jan 8, 2004

09132638 (B.P.A.I. Jan. 8, 2004)

1 Claim 61 is incorrectly reproduced in appellants' brief.
-1-
The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte R. RICHARD STEINER
and
SHIUH-KAO CHIANG

Appeal No. 2004-0283
Application No. 09/132,638

ON BRIEF

Before KIMLIN, PAK and DELMENDO, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 61 and
62. Claims 53, 56 and 63-66 have been allowed by the examiner.
Claim 61 is illustrative:1
61. A component as defined in claim 53, wherein copper foil
sheets are provided on each side of a metallic substrate to form
a copper-metal-copper laminated component.
Appeal No. 2004-0283
Application No. 09/12,638
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In the rejection of the appealed claims, the examiner does
not rely upon prior art.
Appellants' claimed invention is directed to a component for
use in manufacturing printed circuit boards. The component
comprises a sheet of copper foil in contact with a metal support
and having provided on its other surface a partially cured,
preformed adhesive epoxy resin film. Allowed claim 53 specifies
only one sheet of copper foil in contact with the metal support.
Appealed claims 61 and 62, which depend upon allowed claim 53,
further define copper sheets on each side of the metal substrate.
Appealed claims 61 and 62 stand rejected under 35 U.S.C.
§ 112, first paragraph, description requirement.
Appellants submit at page 3 of the principal brief that
"[c]laims 61 and 62 stand or fall together."
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
ourselves in agreement with appellants that claims 61 and 62 do
not run afoul of the description requirement of 35 U.S.C. § 112,
first paragraph. Accordingly, we will not sustain the examiner's
rejection.
According to the examiner, since the appealed claims "would
encompass laminates having one coated copper foil sheet and one
Appeal No. 2004-0283
Application No. 09/12,638
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uncoated copper foil sheet as well as laminates having both
copper foil sheets coated" (page 3 of Answer), and appellants'
specification only discloses and depicts both copper sheets being
coated with epoxy resin film, the appealed claims lack
descriptive support in the specification.
As our reviewing court stated in In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089 1096 (Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of
the application as originally filed reasonably conveys
to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than
the presence or absence of literal support in the
specification for the claim language.
It is well settled that the claimed invention does not
necessarily have to be expressed in ipsis verbis in order to
satisfy the written description requirement, i.e., it may be
implicit from the original specification that the inventor had
possession of the claimed subject matter at the time of filing
the application. An explicit description is not required.
In the present case, while we are fully appreciative and
cognizant of the effort made by the examiner in advancing a
rationale in support of the rejection, we are persuaded that the
facts of this case support the conclusion that the present
inventors, at the time of filing the application, had in their
Appeal No. 2004-0283
Application No. 09/12,638
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possession a component that has copper sheets on each side of a
metallic substrate wherein only one of the copper sheets is in
contact with the epoxy resin film. We come to this conclusion
because allowed claim 53, upon which claims 61 and 62 are
dependent, broadly encompasses a metallic substrate having a
copper sheet and epoxy resin on only one side of the substrate,
and other, non-defined coatings or layers on the other side of
the substrate, including a copper sheet without a coating of an
epoxy resin. Since the specification discloses that "it has been
known to adhere to the shiny side of the copper foil a protective
polymeric film that may be removed during the assembly of the
copper sheet onto a circuit board or onto another copper sheet"
(page 2, lines 5-7), we are satisfied that one of ordinary skill
in the art would understand that appellants had in their
possession an embodiment wherein the metallic substrate has a
copper sheet in contact with each of the opposite surfaces of the
substrate, with one of the copper sheets having a coating of
partially cured epoxy resin and the other copper sheet having a
coating of the protective polymeric film of the prior art. As
stated by appellants in the Reply Brief, "[i]t should be
appreciated that other means are known in the prior art that
serve this function, including, but not limited to, an uncured
Appeal No. 2004-0283
Application No. 09/12,638
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resin coating," which may be applied by conventional spraying and
blade wiping techniques (page 2 of Reply Brief, paragraph four).
Hence, based upon the genus embraced by allowed claim 53, which
has original descriptive support, and the acknowledged prior art
found in appellants' specification, we are of the opinion that
the subject matter defined by appealed claims 61 and 62 finds
descriptive support in the original specification within the
meaning of 35 U.S.C. § 112, first paragraph.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
ECK:clm
Appeal No. 2004-0283
Application No. 09/12,638
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Mark Kusner
Highland Place - Suite 310
6151 Wilson Mills Road
Highland Heights, OH 44143