Ex Parte Houbertz et al

Patent Trial and Appeal Board

Dec 21, 2018

13696966 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/696,966 11/08/2012
8933 7590 12/21/2018
DUANE MORRIS LLP- Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
FIRST NAMED INVENTOR
Ruth Houbertz
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
F6245-00021 2562
EXAMINER
SHAFI, LEITH S
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
12/21/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH HOUBERTZ, THOMAS STICHEL, and
SOENKESTEENHUSEN1
Appeal2018-000631
Application 13/696,966
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
Opinion for the Board by KENNEDY, Administrative Patent Judge.
Opinion dissenting in part and concurring in judgment by NAGUMO,
Administrative Patent Judge.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 2 and 17-22. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 According to the Appellants, the real party in interest is Multiphoton
Optics GmbH. App. Br. 1.
Appeal2018-000631
Application 13/696,966
BACKGROUND
The subject matter on appeal relates to devices for creating three-
dimensional structures. E.g., Spec. 1 :3--4; Claim 2. Claim 2 is reproduced
below from page 14 (Claims Appendix) of the Appeal Brief:
2. A device for creating three-dimensional structures consisting of
a material to be consolidated, by way of locally selective
consolidation of the material to be consolidated as a result of
light-induced organic cross-linkage, comprising:
a laser source,
a movable focusing optical system to form one or a plurality of
laser foci and a material container for the material to be
consolidated, wherein the laser source and the focusing optical
system are formed for creating laser pulses or laser pulse
sequences, which trigger a two- or multi photon polymerization
of the material to be consolidated in a focal point of the laser
pulses or laser pulse sequences, using a radiation having a
wavelength wherein the energy of a single photon is not
sufficient for being absorbed in the absence of two- or multi-
photon polymerization conditions, and wherein the focusing
optical system comprises a numerical aperture of greater than
0.25,
wherein the focusing optical system is impermeable to the
material to be consolidated and arranged immersible in the
material to be consolidated in the material container, such that a
beam exit area of the focusing optical system itself forms the
optically defined interface.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 2 and 17-22 under 35 U.S.C. § 112, ,r 2 as indefinite2;
2 This rejection was presented as a new ground of rejection in the
Examiner's Answer. See Ans. 7-8.
2
Appeal2018-000631
Application 13/696,966
2. Claims 2 and 17-19 under 35 U.S.C. § I03(a) as unpatentable over
Devoe (US 2004/0126694 Al, published July 1, 2004) and Andre3 (WO
90/06540, published June 14, 1990);
3. Claim 20 under 35 U.S.C. § I03(a) as unpatentable over Devoe,
Andre, and Heugel (US 2005/0263932 Al, published Dec. 1, 2005);
4. Claim 21 under 35 U.S.C. § I03(a) as unpatentable over Devoe,
Andre, and Hirano (WO 2006/109355 Al, 4 published Oct. 19, 2006);
5. Claim 22 under 35 U.S.C. § I03(a) as unpatentable over Devoe,
Andre, Hirano, and Thomas (US 2007/0000885 Al, published Jan. 4, 2007).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-9; Ans. 2-10.
Rejection 1
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). "[D]efiniteness of the language
employed must be analyzed-not in a vacuum, but always in light of the
3 Like the Examiner and the Appellants, we rely on the English translation of
record.
4 The Examiner labels this reference as "Hirano," Ans. 5, but the basis for
that label is unclear because it does not appear that the applicant or any of
the inventors is named Hirano.
3
Appeal2018-000631
Application 13/696,966
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." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). "[W]hen
the USPTO has initially issued a well-grounded rejection that identifies
ways in which language in a claim is ambiguous, vague, incoherent, opaque,
or otherwise unclear in describing and defining the claimed invention, and
thereafter the applicant fails to provide a satisfactory response, the USPTO
can properly reject the claim as failing to meet the statutory requirements of
§ 112(b)." In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
The Examiner determines that the following terms in claim 2 render
the claim indefinite: (1) "by way of locally selective consolidation,"
(2) "using a radiation having a wavelength wherein the energy of a single
photon is not sufficient for being absorbed in the absence of two- or multi-
photon polymerization conditions," (3) "the focusing optical system is ...
arranged immersible in the material to be consolidated," (4) "the optically
defined interface." Ans. 7-8. We address each term below.
1. The Examiner determines that a person of ordinary skill in the art
would not understand the scope of the term "by way of locally selective
consolidation" because "the term 'locally' is a relative term" that is not
specifically defined by the Specification. Ans. 7.
We are not persuaded by that rationale. A term is not indefinite
merely because it is relative. As the Appellants explain, Reply Br. 2, the
Specification provides examples that a person of ordinary skill in the art
would consider relevant to the meaning of the term "locally selective
consolidation," e.g., Spec. 8:31-32 ("Depending on the used lens and
material, structural units ( voxels) smaller than 100 nm to 100 pm can be
4
Appeal2018-000631
Application 13/696,966
produced."). Additionally, claim 2 refers to "laser foci" and recites
"polymerization of the material to be consolidated in a focal point of the
laser pulses or laser pulse sequences." On this record, we are not persuaded
that a person of ordinary skill in the art would be unable to ascertain the
scope of the term "locally selective consolidation," particularly in the
context of consolidation of material using laser pulses as recited by claim 2.
2. The Examiner determines that the term "using a radiation having a
wavelength wherein the energy of a single photon is not sufficient for being
absorbed in the absence of two- or multi-photon polymerization conditions"
lacks clarity. The Examiner's rationale is as follows:
The Examiner submits that it is unclear what the Applicant
intends by the term "two- or multi-photon polymerization
conditions". The Examiner further submits that it is unclear
based on the claims and specification which materials do not
absorb single photons in the absence of two- or multi-photon
polymerization conditions. Furthermore, the Examiner submits
that it is unclear which wavelengths produce photons not
sufficient for being absorbed in the absence of two- or multi-
photon polymerization conditions. The Examiner lastly submits
that the scope of this claim is indefinite because both currently
known and unknown photopolymerizable materials are
encompassed by this limitation.
Prior to the appearance of the "polymerization conditions" term
identified by the Examiner, claim 2 recites that "the laser source and the
focusing optical system are formed for creating laser pulses or laser pulse
sequences, which trigger a two-or multiphoton polymerization of the
material to be consolidated in a focal point of the laser pulses or laser pulse
sequences, using a radiation having a wavelength wherein the energy of a
single photon is not sufficient for being absorbed in the absence of two- or
multi-photon polymerization conditions."
5
Appeal2018-000631
Application 13/696,966
The Appellants argue that a person of ordinary skill in the art would
understand "the conditions under which the polymerization occurs," that
"[ e ]very material has a certain sensitivity range for single photon absorption
(known as the absorption spectrum), and one of ordinary skill in the art
would appreciate that the material does not absorb single photons outside of
this spectrum." Reply Br. 2.
Those arguments are not persuasive of reversible error in the
rejection. Although we agree that a person of ordinary skill in the art would
understand polymerization conditions generally, the meaning of the disputed
term is nevertheless unclear in the context of claim 2. On the one hand, it
appears that claim 2 requires the use of laser pulses of a wavelength that
requires two or more photons for polymerization of the material ("which
trigger a two- or multi photon polymerization of the material to be
consolidated") and specifically excludes wavelengths in which a single
photon is of sufficient energy to cause polymerization ("using a radiation
having a wavelength wherein the energy of a single photon is not sufficient
for being absorbed"). On the other hand, the plain language "using a
radiation having a wavelength wherein the energy of a single photon is not
sufficient for being absorbed5 in the absence of two- or multi-photon
polymerization conditions" ( emphasis added) appears to indicate that single
photon absorption may be permitted so long as "two or multi-photon
polymerization conditions" are present.
5 We also observe that the shift in the claim from focusing on the number of
photons required for "polymerization" to the number of photons required for
"being absorbed" may detract from claim clarity.
6
Appeal2018-000631
Application 13/696,966
On this record, it is unclear what the language "in the absence of two-
or multi-photon polymerization conditions" adds to or subtracts from the
scope of the claim. Accordingly, we affirm the§ 112, ,r 2 rejection on the
basis of this term. See In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989)
("[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed."); see also Packard, 751 F.3d at 1314 (affirming
rejection, among other reasons, because the appellant did not "show why, on
close scrutiny, the existing claim language really was as reasonably precise
as the circumstances permitted").
3. The Examiner determines that the meaning of the term "the
focusing optical system is impermeable to the material to be consolidated
and arranged immersible in the material to be consolidated" ( emphasis
added) is unclear because the term "immersible" is not defined and because
"[i]t is unclear if the Applicant intends to claim the focusing optical system
being immersed in the material to be consolidated." Ans. 8.
The Appellants argue, with no citation to the Specification, that the
term "immersible" means that the optical system "can be immersed into the
material to be consolidated without being damaged," which requires
"sealings avoiding a leaking in of the liquid material and a surface which is
chemically inert in relation to the material." Reply Br. 2-3.
Even if the Appellants are correct that the term "immersible"
necessarily implies that the optical system can be immersed "without being
damaged," we nevertheless agree with the Examiner that the term "arranged
immersible" lacks clarity. The word "arranged" would seem to indicate
position, location, or placement of the optical system in the device, whereas
7
Appeal2018-000631
Application 13/696,966
the Appellants' argument focuses on the physical features of the optical
system, such as how tightly sealed the optical system is and whether the
materials from which it is made are inert to the material to be consolidated.
Id. The Appellants' reliance on those features appears to be inconsistent
with, or at least confusing in view of, the claim's use of the word
"arranged." In view of the Appellants' arguments, it is unclear what the
word "arranged" adds to ( or subtracts from) the scope of the claim. As the
Examiner explains, see Ans. 8, it is also unclear whether the Appellants
intended the claim to use the language "arranged immersed" rather than
"arranged immersible." Accordingly, we affirm the § 112, ,r 2 rejection on
the basis of this term. See Zietz, 893 F.2d at 321; see also Packard, 751
F.3d at 1314.
4. The Examiner concludes that the term "the optically defined
interface" lacks clarity because "it is unclear what two systems are meeting
at the claimed 'interface."' Ans. 8. The Examiner also determines that the
term lacks antecedent basis. Id.
The Appellants argue, with no citation to the Specification, that "one
of ordinary skill in the art would understand that the two systems meeting at
the claimed interface are (a) the material to be consolidated; and (b) the
external surface lowermost lens of the objective," which is "'the beam exit
area of the focusing optical system,' i.e. the place where the beam exits the
objective." Reply Br. 3. With respect to antecedent basis, the Appellants do
not dispute the Examiner's determination and instead state that the "issue
can be readily corrected prior to allowance of the claims." Id.
The Appellants' arguments fail to show reversible error in the
Examiner's conclusion that the term lacks clarity. The Appellants cite no
8
Appeal2018-000631
Application 13/696,966
language in either the claim or the Specification that identifies the "two
systems" that "meet[] at the claimed interface" as the Appellants have
identified them in the Reply Brief. See Reply Br. 3. We observe that the
Specification appears to define "a defined interface" as "a transparent optical
surface," Spec. at 6:33-35, and it describes an embodiment in which "the
beam output area 13 forms a defined interface with the material to be
consolidated 6," id. at 19:20-22. Although that embodiment appears to be
consistent with the Appellants' argument, the Specification describes
multiple embodiments, and the claim itself is missing the language "defined
interface with the material to be consolidated'' ( emphasis added).
Moreover, as currently drafted, and as explained above, it is unclear
whether the "arranged immersible" limitation of the claim requires the
focusing optical system to actually be immersed or simply requires that it be
capable of being immersed. The Appellants' arguments concerning that
term focus on whether the system is "immersible" ( e.g., whether the system
is sealed and chemically inert). If the claim requires only that the focusing
optical system be "immersible," rather than that it actually be "immersed,"
then it is unclear what the "optically defined interface" with the beam exit
area would be if the system were not immersed.
Considering the claim as a whole and the particular arguments raised
by the Appellants, we are not persuaded of reversible error in the Examiner's
determination that the term, as currently drafted, lacks clarity. See Zietz, 893
F.2dat321;seealsoPackard, 751 F.3dat 1314.
Lack of antecedent basis, which the Appellants do not dispute,
provides an independent reason to affirm the Examiner's rejection on the
basis of this term.
9
Appeal2018-000631
Application 13/696,966
* * *
In summary, the Appellants have not shown reversible error in the
Examiner's determination that the following terms in claim 2 render the
claim indefinite: (2) "using a radiation having a wavelength wherein the
energy of a single photon is not sufficient for being absorbed in the absence
of two- or multi-photon polymerization conditions," (3) "the focusing
optical system is ... arranged immersible in the material to be
consolidated," and (4) "the optically defined interface." Accordingly, we
affirm the Examiner's § 112, ,r 2 rejection. However, the Examiner has not
adequately established that the term (1) "by way of locally selective
consolidation" renders the claim indefinite.
Rejections 2-5
The Appellants argue the claims subject to Rejections 2-5 as a group
and do not present separate arguments for the different grounds of rejection.
See App. Br. 4--13. We select claim 2 as representative of the claims subject
to Rejections 2-5, and the remaining claims subject to those rejections will
stand or fall with claim 2. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Devoe teaches a device for creating 3-D
structures comprising each element of claim 2 except that Devoe does not
"explicitly teach a material container for the material to be consolidated, the
focusing optical system being impermeable to the material to be
consolidated, and arranged immersible in the material to be consolidated in
the material container such that a beam exit area of the focusing optical
system itself forms the optically defined interface." Ans. 3. The Examiner
specifically finds that Devoe teaches two or multiphoton polymerization. Id.
10
Appeal2018-000631
Application 13/696,966
The Examiner finds that Andre teaches a device for creating 3-D
structures comprising a material container for the material to be
consolidated, a focusing optical system that is impermeable to the material
to be consolidated, and a focusing optical system that is immersed in the
material such that a beam exit area of the optical system itself forms the
optically defined interface with the material to be consolidated. Id.
The Examiner determines that it would have been obvious to
substitute the immersible optical system of Andre for the optical system of
Devoe because
[T]his is a substitution of equivalent elements which yields
predictable results. Both references disclose the focusing optical
systems functioning to selectively photopolymerize material in
order to form a 3D object. The predictable result yielded is an
optical system which is immersed in the material to be
consolidated. Furthermore, it would have been obvious to modify
the teachings of Devoe to incorporate the tank of Andre[]
motivated by filling the tank with a suitable curable organic liquid
to reduce spillage of the liquid.
Id. at 4 (internal citations omitted).
Relying on the declaration of named inventor Ruth Houbertz, the
Appellants first argue that Andre does not disclose "selectively" forming 3-
D structures within a material. Specifically, the Appellants block-quote
more than three pages of the Houbertz Declaration and argue that, because
Andre discloses one-photon polymerization, "it would be impossible to
select the place of the focus arbitrarily within the organic liquid and to create
arbitrarily shaped structures .... Only use of two- or multi-photon
polymerization makes it possible that the focus can arbitrarily be selected to
be at any place within the organic (or other polymerizable) liquid .... "
App. Br. 5-9. The Appellants conclude: "Thus, it is not possible to perform
11
Appeal2018-000631
Application 13/696,966
a selective polymerization within a material, using the method disclosed by
Andre .... " Id. at 9 (emphasis in original).
In the Answer, the Examiner explains that, contrary to the Houbertz
Declaration and to the Appellants' argument that Andre does not disclose
selective polymerization, Andre "explicitly discloses selective curing of a
material to be consolidated." Ans. 9. The Examiner relies on page 11, ,r,r 1-
2 of Andre, which disclose that the organic liquid used is "relatively
insensitive to the laser radiation, which initiates the polymerization or
cross linking of the liquid that it is focused, in other words if the energy
density per unit area is sufficiently large." (emphasis added). The cited
portions of Andre further disclose that "the neutral volume V is formed by a
volume of body fluid, through which the laser beam 40 between the focusing
lens 7 6 and the focusing point of the laser beam" [sic]. Andre at 11 ,r 2. The
Examiner finds that "[i]t is clear based on these teachings that when the
energy density per unit area is sufficient large (i.e. when the laser is focused,
as seen in Fig. 5), selective polymerization will occur." Ans. 9.
The Examiner's interpretation of the relevant portions of Andre is
consistent with Andre. See Andre at 11 ,r,r 1-2. Although the Appellants
file a Reply Brief, they do not address or otherwise persuasively dispute the
Examiner's discussion of page 11, ,r,r 1-2 of Andre. See generally Reply Br.
The quoted portions of the Houbertz Declaration do acknowledge the
relevant portions of Andre. See App. Br. 7 (quoting Houbertz Deel.).
However, the Declaration appears merely to suggest that the device of Andre
would not work very well: "according to my technical understanding,
[Andre] will necessarily result in an incomplete formation of the body to be
formed." Id. (emphasis in original). Houbertz also states that "it is my
12
Appeal2018-000631
Application 13/696,966
technical understanding that it is not possible to focus a light beam into a
polymerizable organic liquid without polymerizing material on the way of
the light beam from the surface of the organic liquid or from the exit of a
lens or an optical fiber to the place of the focus." Id. at 8 (emphasis in
original).
Although we have reviewed the Houbertz Declaration and accorded it
some evidentiary weight, we do not find it persuasive because it appears to
contradict Andre and is not supported by any citations to other evidence
supporting the Declaration's assertion that selective polymerization is not
possible with the device of Andre. As set forth above, Andre teaches that
the "organic liquid used," which constitutes the material to be consolidated,
is "insensitive to the laser radiation," and that the laser radiation "initiates
the polymerization or crosslinking of the liquid that it is focused, in other
words if the energy density per unit area is sufficiently large." Andre
at 11 ,r 1. Contrary to the Declaration, Andre teaches that the laser causes
polymerization at the focus point where the energy density is large, and that
the liquid is otherwise relatively insensitive to the laser. Thus,
polymerization occurs "selectively" at the focus point of the laser, rather
than indiscriminately at any point through which the laser beam passes. On
this record, we are not persuaded that the assertions in the Declaration
overcome the plain teachings of the prior art. See Yorkey v. Diab, 601 F .3d
1279, 1284 (Fed. Cir. 2010) (factfinder has discretion to give more weight to
one item of evidence over another unless no reasonable trier of fact could
have done so).
To the extent that the Appellants intended to argue that Andre is not
enabling, that argument is likewise unpersuasive. The Appellants have not
13
Appeal2018-000631
Application 13/696,966
adequately established that, in view of Andre's disclosure, a person of
ordinary skill in the art would not have been able to select materials and
lasers that result in polymerization only at the focal point of the laser. See
Andre at 11. Devoe indicates that such selections would have been within
the ordinary level of skill in the art: "One skilled in the art can choose
appropriate settings for using such laser systems to carry out multiphoton
polymerization. . . . [F]actors such as pulse duration, intensity, and focus
can be adjusted to achieve the desiring curing result in accordance with
conventional practices." Devoe ,r 32.
Additionally, we observe that the Houbertz Declaration and the
Appellants' argument focus principally on whether Andre alone could
achieve selective polymerization. As explained above, the Examiner's
rejection relies on the combination of Andre and the multiphoton
polymerization of Devoe. The Appellants do not persuasively address the
combination of Devoe and Andre. See In re Keller, 642 F.2d 413,426
(CCP A 1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.").
The Appellants also argue that Devoe's material to be consolidated is
solid rather than liquid and, therefore, that there would be no reason to use
Andre's container for holding liquid material with Devoe. App. Br. 9--10.
In the Answer, the Examiner maintains that Devoe teaches "that two-
or multi-photon polymerizable photodefinable monomers exist in a liquid
form at room temperature and Devoe teaches in Claim 19 the photo-
hardenable composition being a fluid." Ans. 9. Those findings are
supported by the record. See Devoe ,r 55 ("The monomer ... exists as a
14
Appeal2018-000631
Application 13/696,966
clear liquid at room temperature."), Claim 19 "( coating the photo-hardenable
fluid composition onto a substrate"). In the Reply Brief, the Appellants do
not address or otherwise provide a persuasive reason to reject the
Examiner's findings concerning Devoe's disclosure of a liquid material to be
consolidated. See generally Reply Br.
In the Reply Brief, the Appellants argue for the first time that "Andre
does not teach or suggest immersing [ optical] system 3 8 into the material to
be consolidated." Reply Br. 3. That argument is untimely because it was
not presented in the Appeal Brief, and the Appellants have not attempted to
show good cause for presenting it for the first time in the Reply Brief. See
37 C.F.R. § 41.41(b)(2).
Even if the argument were timely, however, we observe that the
Examiner does not rely solely on element 3 8 of Figure 1 as disclosing an
immersible optical system. The Examiner also relies on Figures 3-5, which
depict a "tube 66 includ[ing] means 70 for transmitting the laser beam, for
example an optical fiber," immersed in liquid 12. See Ans. 3 ( citing Figs. 3-
5 in the context of the "arranged immersible" limitation). The Appellants do
not address those disclosures or otherwise persuasively explain why that
arrangement does not teach or suggest the recited "immersible" optical
system.
In summary, we have carefully considered the Appellants' arguments
and are not persuaded of reversible error in the Examiner's rejection. See In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections .... ").
15
Appeal2018-000631
Application 13/696,966
CONCLUSION
We AFFIRM the Examiner's rejections of claims 2 and 17-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
16
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH HOUBERTZ, THOMAS STICHEL, and
SOENKESTEENHUSEN
Appeal2018-000631
Application 13/696,966
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, dissenting-in-part and concurring
in judgment.
I join the decision of the Majority affirming the rejection for
obviousness and reversing the rejection for indefiniteness based on the first
disputed term, "locally selective consolidation".
I would, however, reverse the remaining rejections for indefiniteness.
In my view, the disputed terms, when read in the context of the entirety of
claim 2, in light of the Specification, from the point of view of the person
having ordinary skill in the art of two- or multiphoton polymerization, are
broad, but do not have a degree of ambiguity or uncertainty that renders the
scope and content of the claim indefinite.
The Majority concludes that it is not clear what the term, "using a
radiation having a wavelength wherein the energy of a single photon is not
sufficient for being absorbed in the absence of two- or multi-photon
Appeal2018-000631
Application 13/696,966
polymerization conditions," adds or subtracts from the scope of the claim.
Because the radiation is used to "trigger a two- or multi photon
polymerization of the material to be consolidated in a focal point of the laser
pulses," it is sufficiently clear, in my view, that the intensity of photons is
not sufficient that a single photon can be absorbed and trigger
polymerization. Rather, two or more photons must be absorbed to cause that
result. Ambiguity creeps in, it seems to me, only when the phrase is
somehow considered in isolation from the purpose of illuminating the
material to be consolidated. As for the shift in the claim from focusing on
the number of photons "required for [ sic: to trigger] polymerization" to the
number of photons "being absorbed" (Op. 6 n.5), because two (or more)
photons must be absorbed to trigger two-photon polymerization, I do not see
how a person skilled in the art could discern a lack of clarity arising from the
shift. I would thus reverse the rejection for indefiniteness on this basis.
On the present record, the word "arranged," as used in the term
"arranged immersible," would have been understood by the ordinary worker
to encompass both the meaning emphasized by Appellants ( the optical piece
is not adversely affected by being immersed in the material to be
consolidated) and the additional meaning proposed by the Majority
(indicating the position, location, or placement of the optical system in the
device). Neither meaning is exclusive of or antithetical to the other.
Limiting the claim to "arranged immersed," as proposed by the Examiner,
leads to the somewhat bizarre circumstance that the device would be literally
infringed only when the material to be consolidated is in the material
container and the focusing optic is submerged in the material. While
advocates of "plain English" may decry the use of terms such as "arranged,"
2
Appeal2018-000631
Application 13/696,966
"configured," "adapted," etc., both casual speech and claims in applications
for patents and in issued patents are rife with such terms. While greater
clarity might be appreciated by those confronted with claims containing such
terms, the necessity of greater clarity has not, in this case, been
demonstrated. I would therefore reverse the rejection for indefiniteness on
this basis.
Finally, the term "the optically defined interface" is, in the context of
claim 2, the interface between the beam exit area of the focusing optical
system and the material to be consolidated, in which the focusing optical
system is immersed to conduct the two-photon polymerization.
Consistently, the Specification discloses two distinct embodiments of
the claimed device that make clear that the term "optically defined
interface," in the context of the two-photon polymerization device, is the
interface between the last [ solid] material traversed by the laser radiation and
the material to be consolidated.
The Specification describes the first embodiment using the following
words:
the material container consists at least partially of a material
that is permeable for the used laser beam and is, or can be,
arranged in the beam path in such a way that the laser beam
can be introduced into the material to be consolidated
through the material container, wherein the material
container acts as optically defined inteif ace.
Spec. 3, 11. 15-18 (emphasis added).
3
Appeal2018-000631
Application 13/696,966
The Specification describes the second embodiment-which
corresponds to the embodiment covered by claim 2-using the following
words:
wherein the focusing optical system is impermeable to the
material to be consolidated and arranged immersible in the
material container in such a way that the beam exit surface of
the focusing optical system itself creates the optically defined
interface. In the process, the focusing optical system is
preferably movable in all three directions in space and can
hence be positioned freely in the bath.
Spec. 3, 11. 34--38 (emphasis added).
Given the plain language of the claim, and the clear disclosure, by
way of two distinct examples, of what Appellants mean by the term
"optically defined interface," I am unable to discern any basis for the
determination that this term, as used in the claim, is ambiguous or lacking
clarity. I would therefore reverse the rejection for indefiniteness on this
basis.
Finally, while it is the burden of the Appellant to demonstrate
reversible error in the appealed rejections, our reviewing court has instructed
that, regarding the legal question of the interpretation of claims, "[t]he duty
of the trial judge is to determine the meaning of the claims at issue, and to
instruct the jury accordingly. Markman v. Westview Instruments, Inc.,
52 F.3d 967,970 (Fed. Cir. 1995). In the exercise of that duty, the trial
judge has an independent obligation to determine the meaning of the claims,
notwithstanding the views asserted by the adversary parties." Exxon Chem.
Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995). While
the Examiner is a quasi-judicial official, and by no means an "adversary" or
a "party," and while Administrative Patent Judges in ex parte appeals are not
4
Appeal2018-000631
Application 13/696,966
"trial judges," we have that independent obligation to consider the entire
record before us to interpret the meaning of the claims. In my view, the
Majority gives undue weight to the arguments of counsel, and not enough
weight to the disclosure in the Specification and the art of two-photon
triggered polymerization.
Recognizing that absolute precision is unattainable, and that greater
clarity might be possible for any claim, I am not persuaded that the claims
before us are so imprecise, or that the meanings of the various disputed
terms, as they are used in the claims, in the Specification, and in the art, are
in any significant conflict, such that the metes and bounds of the claimed
device cannot be determined with reasonable certainty. I would therefore
reverse the rejections for indefiniteness, and, with respect, dissent from that
part of the Majority Opinion.
5