Ex parte Cripe et al.

Board of Patent Appeals and Interferences

Feb 25, 1998

08235623 (B.P.A.I. Feb. 25, 1998)

Application for patent filed April 29, 1994.1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JERRY D. CRIPE, GERARD T. REED and JAMES C. KOONTZ
__________
Appeal No. 96-3512
Application 08/235,6231
__________
ON BRIEF
__________
Before COHEN, MEISTER, FRANKFORT, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Jerry D. Cripe, Gerard T. Reed and James C. Koontz (the
appellants) appeal from the final rejection of claims 1-20, the
only claims present in the application.
WE REVERSE.
Appeal No. 96-3512
Application 08/235,623
2
The appellants invention pertains to a method of and apparatus
for decomposition of a chemical compound. Independent claims 1
and 10 are further illustrative of the appealed subject matter
and copies thereof may be found in the appendix to the
appellants’ brief.
The references relied on by the examiner are:
Kaartinen 3,979,503 Sep. 07, 1976
Yamazaki et al. (Yamazaki) 5,230,931 Jul. 27, 1993
Lau et al. (Lau) 5,290,392 Mar. 01, 1994
Deaton et al. (Deaton) 5,322,567 Jun. 21, 1994
(Filed Oct. 24, 1991)
Claims 1-20 stand rejected under 35 U.S.C. § 112, first
paragraph.
Claims 1-20 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1, 3, 4, 6, 8 and 9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kaartinen.
Claims 1-6, 9-15 and 18-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Lau.
Claims 1-7, 9-16 and 18-20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Lau in view of Yamazaki.
Claims 8 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lau in view of Yamazaki and Deaton.
The examiner’s rejections are explained on pages 2-5 of the
Appeal No. 96-3512
Application 08/235,623
3
answer. The arguments of the appellants and examiner in support
of their respective positions may be found on pages 4-9 of the
amended brief and pages 6 and 7 of the answer.
OPINION
As a preliminary matter, we base our understanding of the
appealed subject matter upon the following interpretation of the
terminology in the claims. In line 2 of claim 2, line 2 of claim
8, line 3 of claim 11 and line 3 of claim 17, we interpret
“circular” to be -- circular in cross-section --.
Considering first the rejection of claims 1-20 under 35
U.S.C. § 112, first paragraph, the examiner is of the opinion
that there is no descriptive support in the original disclosure
for the limitation that the “member” is self-supported on or
against the wall of the reaction chamber “without other means of
support” as set forth in independent claims 1, 10 and 19. In
support of this position the examiner references lines 1-3 of
page 9 of the specification and urges that “the drawings are not
refined enough for full reliance thereupon” (see answer, page 6).
We do not agree with the examiner’s position. The
description requirement found in the first paragraph of 35 U.S.C.
1l2 is separate from the enablement requirement of that
Appeal No. 96-3512
Application 08/235,623
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provision. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561-
63, 19 USPQ2d 1111, 1115-17 (Fed. Cir. 1991) and In re Barker,
559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied,
434 U.S. 1064, 197 USPQ 271 (1978). Moreover, as the 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 claimed language. The content of
the drawings may also be considered in determining
compliance with the written description requirement.
(citations omitted)
Although the claimed invention does not necessarily have to be
expressed in ipsis verbus in order to satisfy the description
requirement (see In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90,
98 (CCPA 1976)), it is nonetheless necessary that the disclosed
apparatus inherently perform the functions now claimed (see In re
Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284 (CCPA 1973)).
Precisely how close the original description must come to comply
with the description requirement must be determined on a case-by-
case basis. The primary consideration is factual and depends on
Appeal No. 96-3512
Application 08/235,623
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the nature of the invention and the amount of knowledge imparted
to those skilled in the art by the disclosure. See Vas-Cath Inc.
v. Mahurkar, supra.
The examiner is correct in noting that lines 1-3 of page 9
of the specification refer to the member 30 as being positioned
on support structure 35. We must point out, however, that this
description is with reference to the embodiment of Fig. 1. On
page 20 of the specification it is clearly set forth, with
respect to the embodiment of Figs. 8 and 9, that the member 30 is
“self supported in reaction chamber 20," with the support member
being of “square shape” and the reaction chamber being of
“circular shape” (i.e, circular in cross-section). Viewing Figs.
8 and 9, these figures, although rudimentary in nature,
nevertheless clearly depict the square-shaped member being
supported by its four corners on the wall of the reaction chamber
20 (which is illustrated in Fig. 9 as having a circular cross-
section). Taking the appellants’ description on page 20 of the
specification, in conjunction with Figs. 8 and 9 of the drawings,
we believe the appellants’ disclosure taken as a whole reasonably
conveys to one of ordinary skill in the art that the “member” is
self-supported on or against the wall of the reaction chamber
“without other means of support” as claimed. This being the
Appeal No. 96-3512
Application 08/235,623
6
case, we will not sustain the rejection of claims 1-20 under 35
U.S.C. § 112, first paragraph.
Turning to the rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph, the examiner is of the opinion that the
claimed terminology of “major face” and “an energy” (independent
claims 1, 10 and 19) and “substantially near” (claim 20) is
unclear. We will not support the examiner’s position. The
purpose of the second paragraph of § 112 is to basically ensure,
with a reasonable degree of particularity, an adequate notifica-
tion of the metes and bounds of what is being claimed. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
Moreover, as the court stated in In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971), the determination of whether
the claims of an application satisfy the requirements of the
second paragraph of § 112 is
merely to determine whether the claims do, in fact, set
out and circumscribe a particular area with a
reasonable degree of precision and particularity. It
is here where the definiteness of language employed
must be analyzed -- not in a vacuum, but always in
light of the teachings of the prior art and of the
particular application disclosure as it would be
interpreted by one possessing the ordinary level of
skill in the pertinent art. [Emphasis ours; footnote
omitted.]
Noting that the member 30 is depicted in Figs. 8 and 9 as
Appeal No. 96-3512
Application 08/235,623
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being a relatively thin plate-like member of generally square
shape, we do not believe that it can seriously be contended that
the artisan would not understand that the upper and lower faces
(i.e., the faces of by far the greatest surface area) of the
plate-like member were the “major” faces. Note also the
description in lines 27 and 28 on page 11 to the effect that
“member 30 is shaped in a plate configuration having two major
surfaces as shown in FIG. 1.”
As to the examiner’s criticism of the recitation “an energy”
we do not believe that one of ordinary skill in this art would
not understand that this reference referred to the energy created
by the recited “energy source.” As to the examiner’s criticism
of the recitation “substantially near” in claim 20, page 13 of
the appellants’ specification states that:
To obtain optimum destruction of chemical compound
70, exit end 44 is positioned as close as possible to
the member 30. This position is not necessarily
preferred because it is desirable to have a non-
restrictive flow of chemical compound where chemical
compound 70 does not backflow into processing tool 82.
A minimum distance 73 between exit end 44 of conduit 40
and the major surface of member 30 towards which
chemical 70 is introduced is preferably the distance
where the flow rate of chemical compound is not
altered . . . . [Lines 3-12.]
Consistent with the appellants’ specification, one of ordinary
skill in the art would understand that “substantially near” the
Appeal No. 96-3512
Application 08/235,623
8
major face of the member referred to a distance that was within
the minimum distance as set forth in the above-noted description.
In view of the foregoing, we will not sustain the rejection
of claims 1-20 under 35 U.S.C. § 112, second paragraph.
Considering next the rejection of claims 1, 3, 4, 6, 8 and 9
under 35 U.S.C. § 102(b) as being anticipated by Kaartinen, the
examiner is of the opinion that:
The reference shows in Fig. 2 and col. 6 lines 20-60 a
device having an inlet, a mesh surface immediately
above and perpendicular thereto (off which the gases
may bounce back to the inlet after contacting it) and
electrical conductors for heating it, all inside a
tapered reactor whose outlet is smaller than the inlet.
This meets the required elements. [Answer, pages 3 and
4.]
From the above, it appears that the examiner considers the mesh
basket 10 to correspond to the claimed “member.” We must point
out, however, that the claims require this member to be self-
supported either on or against the wall of the reaction chamber.
Contrary to the claimed arrangement, the mesh basket 10 is
supported from mounting plate 13 by conductors 11, 12.
Accordingly, we will not sustain the rejection of claims 1, 3, 4,
6, 8 and 9 under 35 U.S.C. § 102(b) as being anticipated by
Kaartinen.
Turning now to the rejection of claims 1-6, 9-15 and 18-20
under 35 U.S.C. § 102(b) as being anticipated by Lau, the
Appeal No. 96-3512
Application 08/235,623
9
examiner states that Lau teaches “a cylindrical reactor with 3
orifices above one of which sits self-supported a rectangular
substrate” (answer, page 4). Apparently the examiner is
referring to substrate 20; however, this element is not “self-
supported” as asserted by the examiner, much less self-supported
either on or against the wall of the reaction chamber as required
by the claims on appeal. Instead substrate 20 is supported by
substrate holder 18 which in turn is supported by thermocouple 16
which in turn is supported by platform 14 (see Fig. 1). This
being the case, we will not sustain the rejection of claims 1-6,
9-15 and 18-20 under 35 U.S.C. § 102(b) as being anticipated by
Lau.
We consider last the rejections under 35 U.S.C. § 103 of (1)
claims 1-7, 9-16 and 18-20 based on the combined disclosures of
Lau and Yamazaki and (2) claims 8 and 17 based on the combined
disclosures of Lau, Yamazaki and Deaton. Both of these
rejections are bottomed on the examiner’s view that it would have
been obvious to provide the substrate of Lau with one which was
made of SiO in view of the teachings of Yamazaki (see the2
paragraph bridging pages 4 and 5 of the answer). However, such a
modification of Lau in view of the teachings of Yamazaki does
nothing to overcome the basic deficiency of Lau that we have
Appeal No. 96-3512
Application 08/235,623
10
noted above with respect to the § 102 rejection based on this
reference, namely, that there is no teaching in Lau of a “member”
that is self-supported either on or against the wall of the
reaction chamber required by the claims on appeal.
The answer also states that:
To the extent that Lau does not teach a non-supported
member, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to
exclude the supports, with attendant loss of function,
as a design expedient or to prevent deposition on these
surfaces and waste of reactants. [Page 5.]
We observe, however, obviousness under § 103 is a legal
conclusion based on factual evidence (In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the examiner may
not resort to speculation, or hindsight reconstruction to supply
deficiencies in the factual basis (In re GPAC Inc, 57 F.3d 1573,
1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995) and In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968)). Accordingly, the subjective opinion of the
examiner that the supports of Lau may be eliminated, without
evidence in support thereof, is not a basis upon which the legal
conclusion of obviousness may be reached. This is particularly
the case since the specification states that the “advantages of
this self supporting scheme are its simplicity, reduced cost, and
Appeal No. 96-3512
Application 08/235,623
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reduced maintenance.” In light of these stated advantages, the
provision of the “member” being self-supported on or against the
wall of the reaction chamber cannot simply be dismissed as a
“design expedient” as the examiner purposes.
With respect to claims 8 and 17, we have carefully reviewed
the teachings of Deaton but find nothing therein which would
overcome the basic deficiencies of Lau that we have noted above.
Therefore, we will not sustain the rejections under 35 U.S.C.
§ 103 of (1) claims 1-7, 9-16 and 18-20 based on the combined
disclosures of Lau and Yamazaki and (2) claims 8 and 17 based on
the combined disclosures of Lau, Yamazaki and Deaton.
In summary, all of the above-noted rejections are reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No. 96-3512
Application 08/235,623
12
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-3512
Application 08/235,623
13
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