Ex Parte Darcy et al

Patent Trial and Appeal Board

Nov 25, 2013

11155677 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN JOSEPH DARCY, III, MICHAEL STEPHEN ROETKER,
DAVID W. MARTIN, FELIX J. SANTANA, SCOTT GRIFFIN, and
RICHARD L. POST
____________________

Appeal 2011-004268
Application 11/155,677
Technology Center 3600
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Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-004268
Application 11/155,677

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STATEMENT OF THE CASE
Appellants filed a request for rehearing, received October 23, 2013
(hereinafter “Request” or “Req.”), in response to our decision mailed August
23, 2013 (hereinafter “Decision” or “Dec.”). In the Decision, we reversed
the Examiner’s prior art rejections and entered a new ground of rejection for
claims 1-9, 11, 14-16, 18-22, and 24 for lacking adequate written
description. We DENY Appellants’ request for reconsideration.

OPINION
Appellants claim that their technique uses a laser to break the
molecular bonds of a polyimide, rather than melt the polyimide. See, e.g.,
claim 1. Such a contrast implies that a laser can be used on a polyimide in
ways that do not result in a breaking of the molecular bonds, or the break vs.
melt aspect of the limitation would be superfluous. Indeed, Appellants have
represented to the Office that there is a difference between using a laser and
using a laser to break molecular bonds. See, e.g., Request for Continued
Examination, p. 7 (received Aug. 11, 2009) (“the cited portions of
Tarnawskyj make no mention or suggestion of laser ablating . . . much less
that the laser ablating substantially causes breaking of the molecular bonds
[instead of] melting”).
In the Decision, we entered a new ground of rejection for lack of
written description because we found that the claims encompassed more
than the disclosure permitted. Dec. 6-8. Broadly speaking, the claims
sought a monopoly on all ways to achieve a result (breaking bonds vs.
melting) but had only contributed one way to achieve that result. See id. To
wit, the Specification only disclosed using a particular set of wavelengths
Appeal 2011-004268
Application 11/155,677

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(100-690nm) and a particular tool (a monochromatic laser) to achieve the
result of breaking the molecular bonds of, rather than melting, a polyimide.
Dec., n. 3. The claims are not so constrained.
While we would agree that the Specification does not have to describe
every wavelength possible, the critical inquiry is whether Appellants have
described enough in their Specification to demonstrate possession of an
invention as broad as claimed. Merely listing one way, or even many ways,
to achieve a result does not always apprise one of ordinary skill in the art of
all ways to achieve a result. Here, we merely have a timorous statement in
Appellants’ disclosure that the claimed range “may cause breaking.” Spec.,
para. [0041]. This statement does not allow one of ordinary skill in the art to
envision or derive the claimed solution. There is no discussion to expand on
this; for example, a disclosure of what causes breaking but not melting, so
that one of ordinary skill could envision what other claimed wavelengths
would work.1
Appellants first take issue with our characterization of the disclosed
ranges in the Specification as a “set.” Req. 6. These semantic arguments are
inconsequential. The Specification only discloses wavelengths in the range
from 100-690 nm, and whatever one calls this range, what is disclosed is still
a subset of what is claimed because the claims at issue are not limited to any
particular wavelengths. The written description must demonstrate
possession of the claimed subject matter; here we only see a subset of it.
Appellants also argue that the disclosed range covers “the entire UV
and visible spectra” and suggests that such a disclosure is enough. Req. 6.

1 This is merely an example of one way to satisfy the written description
requirement. In no way do we imply that this type of disclosure is
necessary.
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Application 11/155,677

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There are more spectra that are claimed but not disclosed, however, such as
the remainder of the red and infrared wavelengths. We are left with no way
to know if such wavelengths were considered a part of the invention.
Appellants attempt to introduce new information not in the Specification to
cover this gap, stating, “it is unimportant what wavelength of laser is used to
break molecular bonds by laser ablation.” Req. 6. However, this is mere
attorney argument unsupported by evidence. It is further undermined by the
fact that Appellants try to distinguish between breaking and melting, in the
claims and in their arguments.
Regarding claim 18, we note that the claim does not simply recite a
belt having broken molecular bonds. Instead, the claim recites a belt where
“upon removing excess . . . polyimide flash . . . molecular bonds . . . remain
substantially broken.” Accordingly, the limitation is written as a step and as
such further defines the claimed product by acting upon it a process, the
process yielding a particular result. Thus, the above analysis is applicable.

DECISION
Appellants’ Request is DENIED.
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)(iv).

DENIED

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