Ex parte Card et al.

Board of Patent Appeals and Interferences

Mar 24, 1998

08163202 (B.P.A.I. Mar. 24, 1998)

Application for patent filed December 6, 1993. According1
to appellants, the application is a division of Application
07/976,632, filed November 16, 1992, now U.S. Patent 5,295,214,
issued March 15, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DUANE F. CARD,
EBERHARD S. DITTMAN
and
MUKUND K. SARAIYA
_____________
Appeal No. 97-2488
Application 08/163,2021
______________
ON BRIEF
_______________
Before COHEN, McQUADE and BARRETT, Administrative Patent Judges.
Appeal No. 97-2488
Application 08/163,202
We are aware of the circumstances surrounding claim 30, a2
claim canceled pursuant to appellants’ directive to do so (page 5
of Paper No. 7). We note that appellants’ directive for
cancellation encompassed claims 23 through 29, which cancellation
is not disputed by appellants. Thus, claim 30 is not pending,
nor finally rejected, as indicated on page 1 of the amended
appeal brief (Paper No. 22). The cover sheet of the final
rejection (Paper No. 8) indicates that claim 30 was canceled, and
no rejection of claim 30 appears in the body of the final
rejection. The Notice of Appeal (Paper No. 9) does not refer to
claim 30. While appellants view the cancellation of claim 30 as
an obvious typographical error (reply brief, page 2), this matter
nevertheless is one that can only appropriately be resolved
during any further prosecution before the examiner.
2
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 22
and 37 through 42. Based upon the application file record of
pending and canceled claims, these claims constitute all of the
claims remaining in the application.2
Appellants’ invention pertains to a process for manu-
facturing an electrical interconnect structure and to a process
for manufacturing an electrical assembly. An understanding
Appeal No. 97-2488
Application 08/163,202
We refer to the application file for these claims since3
the appendix to the brief does not include correct copies there-
of. For example, in claim 22 of the appendix, line 21, --of
dielectric material-- has been omitted after “layer.”
3
of the invention can be derived from a reading of exemplary
claims 22 and 42, as they appear in the application file (Paper
No. 7). 3
The following rejection is the sole rejection before us
for review.
Claims 22 and 37 through 42 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite.
The full text of the examiner's rejection and response
to the argument presented by appellants appears in the final
rejection and answer (Paper Nos. 8 and 23), while the complete
statement of appellants’ argument can be found in the amended
main and reply briefs (Paper Nos. 22 and 24).
In the amended main brief (page 3), appellants indi-
cate that the claims do not stand or fall together, and list
Appeal No. 97-2488
Application 08/163,202
Claim 30, included by appellants, has not been specified4
herein for the reasons appearing in Footnote No. 2.
4
claims 22 and 37 through 41 as Group I and claim 42 as Group II. 4
Based upon the aforementioned claim groupings and the argument
presented, it is apparent that claims 22 and 37 through 41 stand
or fall together and that claim 42 stands alone. As to the
Group I claims, we select claim 22 for review, pursuant to 37 CFR
§ 1.192(c)(7). Accordingly, we focus our attention exclusively
upon claims 22 and 42, infra.
OPINION
In reaching our conclusion on the indefiniteness issue
raised in this appeal, this panel of the board has carefully
considered appellants’ specification, drawings, and claims 22
and 42, and the respective viewpoints of appellants and the
examiner. As a consequence of our review, we make the
determination which follows.
We affirm the examiner’s rejection of appellants’
claims under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Appeal No. 97-2488
Application 08/163,202
5
In discussing the requirements of 35 U.S.C. § 112,
second paragraph, the court in In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970) stated that
[i]ts purpose is to provide those who would
endeavor, in future enterprise, to approach
the area circumscribed by the claims of a
patent, with the adequate notice demanded by
due process of law, so that they may more
readily and accurately determine the
boundaries of protection involved and
evaluate the possibility of infringement and
dominance.
The view has further been expressed that claims are considered to
be definite, as required by the second paragraph of 35 U.S.C.
§ 112, when they define the metes and bounds of a claimed
invention with a reasonable degree of precision and
particularity. See In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). It must also be keep in mind that claim
language is read in light of the specification, as it would be
interpreted by one of ordinary skill in the art. See In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Taking the above principles into consideration, we turn
now to the situation of the present application.
Appeal No. 97-2488
Application 08/163,202
We note that the process for manufacturing an electrical5
interconnect structure of claim 22 includes the recitation of
providing windows “for mass soldering of the leads to the lands”
(at line 26), an apparent non-limiting intended use, whereas in
claim 42, the process for manufacturing an electrical assembly
not only includes the step of providing windows “for soldering
the leads to the lands” (lines 27 and 28) but also expressly
includes as a limitation thereof the step of “soldering” the
6
Having read the underlying specification of appellants’
application, and reviewed independent claims 22 and 42 in light
thereof, we fully appreciate the difficulty encountered by the
examiner in seeking an understanding of the content of the claims
as drafted.
The examiner has faulted the claims in the rejection as
being vague, indefinite, and awkwardly and/or confusingly worded.
We find that the organization of the content of each of process
claims 22 and 42 is awkward, rendering the readability thereof
quite difficult. This problem is exacerbated by the circum-
stance that the underlying specification is not structured to
include a specific portion thereof devoted to the disclosure of
the processes now claimed, upon which the claims at issue can be
read in light thereof.5
Appeal No. 97-2488
Application 08/163,202
leads to the lands (lines 31 through 33).
7
As to the concerns of the examiner relative to
claim 22, we find that the step of selectively coating “for
providing . . .” (lines 3 through 16) gives the impression that
this step of coating is intended to provide the specifically
recited conductive paths, passages, conductive lands, and
soldering bridges listed within this method step. On the other
hand, the etching step is recited as removing areas of conductive
film “in order to provide said conductive paths, conductive lands
and soldering bridges and passages through the conductive film.”
The latter etching step thus appears to clarify that the coating
step
is for providing the material (layer of conductive film) acted
upon by etching in order to provide the conductive paths,
passages, conductive lands, and soldering bridges. This under-
standing comports with appellants’ view of the matter (amended
main brief, page 6). A similar situation is presented in process
claim 42 wherein respective coating steps for providing
conductive paths, conductive lands, and soldering bridges
projecting into passages, precedes the etching step removing
Appeal No. 97-2488
Application 08/163,202
8
areas of the conductive film in order to provide the conductive
paths, conductive lands and soldering bridge means and to provide
passages through the conductive film. We, accordingly,
understand this aspect of claim 42 for the same reason addressed
in our analysis of the comparable language in claim 22, supra.
Thus, as to the aforementioned matters pertaining to steps of
coating and etching, it appears to us that the language of claims
22 and 42 can be fairly comprehended.
A problem area of indefiniteness which persists in
claims 22 and 42, however, relates to the recitation of the
soldering bridges “for producing desired solder joint
configurations between the lands and leads” (claim 22, lines 15
and 16) and “for producing a desired solder joint configuration
between the lands and leads” (claim 42, lines 13 and 14). In
subsequent portions of these claims, the respective steps of
providing a
first layer “for providing said desired solder joint
configurations” (claim 22, lines 23 and 24) and providing blanket
coverings “for producing said desired solder joint
configurations” (claim 42, lines 24 and 25) appear. The
specified content of these latter steps clearly contradicts the
Appeal No. 97-2488
Application 08/163,202
9
former portions of respective claims 22 and 42 mentioned above.
Thus, these claims are ambiguous in meaning in this matter, which
ambiguity renders the claimed subject matter indefinite. No
other language in respective claims 22 and 42 overcomes the
aforementioned ambiguity.
In claim 22, lines 8, 18 through 20, and lines 25, 26,
“passages,” said “passages,” and “the passages” are set forth.
However, the reference to “passages” (line 9) is not understood
since it is uncertain if the previously recited passages (line 8)
or different passages are intended. Similarly, from the language
of line 18 of claim 42, it is uncertain as to whether the same
(passages of lines 9, 13, and 26) or different passages are
intended. Additionally, we are uncertain in reading claim 42 as
to what difference in meanings exists for the term of degree
“adjacent” (line 9) and the term of degree “proximate” (line 19),
each with regard to the relative positioning of the passages and
conductive lands.
Appeal No. 97-2488
Application 08/163,202
In the amended appeal brief (page 7), it is set forth that6
the invention lies “in the details of the process i.e. that the
coating is patterned so as to produce solder bridges that extend
from the lands into the apertures.”
10
It is clear to this panel of the board that the
presence of the noted indefinite language obfuscates the metes
and bounds of the claimed method which appellants regard as their
invention. As a concluding point, we note that the examiner6
indicates that the presence of indefiniteness in the claims,
i.e., the inability to ascertain the metes and bounds of the
claimed subject matter, is the reason why prior art has not been
applied thereto (answer, page 5).

In summary, this panel of the board has affirmed the
rejection of claims 22 and 37 through 42 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
Appeal No. 97-2488
Application 08/163,202
11
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 97-2488
Application 08/163,202
12
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