Ex Parte Krick et al

Board of Patent Appeals and Interferences

Sep 20, 2010

10802378 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/802,378 03/17/2004 David T. Krick 111548-136408 3802
25943 7590 09/20/2010
Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204
EXAMINER
WILSON, GREGORY A
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
09/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID T. KRICK, JOSEPH F. O'SULLIVAN,
and MICHAEL S. WEST
____________

Appeal 2009-007641
Application 10/802,378
Technology Center 3700
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
David T. Krick, et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1-23, 25, and 26 under
35 U.S.C. § 103(a) as unpatentable over Hampel (US 2004/0163335 A1,
pub. Aug. 26, 2004) or Rapisarda (US 6,612,084 B2, iss. Sep. 2, 2003). We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Claim 1 is representative of the claimed invention.
1. An air grate comprising:
one or more pieces of one or more materials adapted to partially cover no
more than 40% of a spanned area, allowing air to flow through a plurality of
openings disposed in the uncovered portion of the spanned area to meet a
semiconductor device manufacturing air flow requirement, where each of
the openings is sufficiently small to meet a semiconductor device
manufacturing fall though object size limitation, and where the one or more
materials are further adapted to meet a semiconductor device manufacturing
spill protection requirement.

SUMMARY OF DECISION
We REVERSE and enter NEW GROUNDS of REJECTION.

ISSUE
Appellants raise the issue of whether the Examiner has made the
requisite factual findings to demonstrate the obviousness of an air grate
having the functional limitations of claim 11. See, e.g., Appeal Br. 2.
However, in reviewing the claims to determine this issue, it is clear that first

1 Appellants note that independent claims 9, 16, and 23 have "substantially
the same limitations as Claim 1." Appeal Br. 4.
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a determination must be made as to whether the claims are definite and
supported by a written description demonstrating possession of the claimed
invention.

OPINION
Scope and Definiteness of the Claims
Claim 1 requires an air grate having a plurality of openings that is
capable of performing several functions: (1) meeting a semiconductor device
manufacturing air flow requirement; (2) meeting a semiconductor device
manufacturing fall through object size limitation; and (3) meeting a
semiconductor device manufacturing spill protection requirement. Thus,
claim 1 requires a device (air grate) that meets three requirements. Each of
independent claims 9, 16, and 23 recites one or more of these claim
limitations. See note 2, supra.
"The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe." All Dental Prodx, LLC v. Advantage Dental
Prodx, Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson
Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 28-29 (1997)). If the language
of the claim is such that a person of ordinary skill in the art could not
interpret the metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 U.S.C. § 112, second
paragraph, would be appropriate. See Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986); Datamize, LLC v.
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Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) ("Some
objective standard must be provided in order to allow the public to
determine the scope of the claimed invention."); Halliburton Energy Serv.,
Inc., v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) ("the Court held
indefinite claims that recited only 'inaccurate suggestions of the functions of
the product.'") (citing United Carbon Co. v. Binney & Smith Co., 317 U.S.
228, 234 (1942). During prosecution, the threshold standard of ambiguity
for indefiniteness is lower than it might be during litigation of an issued
patent. Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (BPAI 2008).
None of the independent claims set forth the actual requirements the
air grate must meet to satisfy the claimed functions. Further, there is no
indication in the record that there is, for example, a standard set of industry
requirements such that one of ordinary skill would understand what is
claimed. Reading claim 1, for example, one of ordinary skill in the art
would understand that an air grate that meets air flow, fall through, and spill
protection requirements could infringe on the claim. However, one of
ordinary skill could not discern which particular requirements are
encompassed by those claim limitations, and thus could not tell if any
particular air grate infringed. Thus, we turn to the Specification to shed light
on the meaning of each "requirement" limitation. Orthokinetics, Inc., 806
F.2d at 1576 (the test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification").
The Specification and certain dependent claims provide an example
for some of the requirements. For instance, the fall through requirement is
elaborated in claim 4 and paragraph 24, which state that "each of the
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openings … is designed to meet an object fall through size limitation of
about 1 inch." The Specification then states "each of the openings may be
designed to meet smaller or larger object fall through size limitations."
Thus, it is clear that the fall through requirement is related to the size of the
holes in the grate. What is not clear, however, is the metes and bounds of
the requirement that determines the size of the hole. The Specification's
disclosure merely indicates that the requirement may require larger or
smaller holes, but fails to articulate any meaningful standard to determine
the requirement. The other claimed requirements are similarly not clarified
in the Specification. For each, the standard by which the claimed
requirements are to be measured lacks discernable boundaries.
Therefore, the claimed requirements, read in light of the Specification,
do not specify to a reasonable degree a standard by which to discern if a
particular air grate meets a particular requirement. The Specification's brief
disclosure does not provide a qualitative metric, formula, or other guideline
to allow one of ordinary skill to know when the claim limitation is satisfied.
See Halliburton, 514 F.3d at 1255-56 (describing various ways to "resolve
the ambiguities of a functional limitation"). Instead, there is a single, narrow
example of a particular embodiment said to meet the claimed requirements,
without guidance as to what constitutes a requirement.
Thus, the term "requirement" as used in the independent claims is not
merely broad; it is indefinite2. It is not relevant that one can envision

2 Claim 1 is akin to a claim to "a widget comprising a thing." While the term
"thing" is readily understood, and indeed, other claims may specify
particular structure as being a "thing," "thing" is indefinite because it is
ambiguous; it does not set forth metes or bounds for the claim. The
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examples of potential requirements for air grates; what is relevant is whether
one of ordinary skill would understand if a particular air grate would avoid
infringement. Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470
(Fed. Cir. 1993) (the standard for definiteness is whether "the claims at
issue… are … sufficiently precise to permit a potential competitor to
determine whether or not he is infringing"). Given these claims, this task is
impossible because, as demonstrated above, there are no metes and bounds
to the claimed requirements. In addition, the dependent claims, which
incorporate the limitations of the independent claims, are likewise indefinite
because none of the dependent claims sets forth the metes and bounds of
each claimed requirement. Therefore, we enter a new ground of rejection
under 35 U.S.C. § 112, second paragraph, of claims 1-23, 253, and 26 as
indefinite for failing to particularly point out and distinctly claim the subject
matter Appellants regard as their invention.
Written Description
One purpose of the specification is to describe the invention an
applicant seeks to claim in such a way as to demonstrate that the applicant
was in possession of the claimed invention. See Ariad Pharm., Inc. v. Eli
Lilly and Co. 598 F.3d 1336, 1351 (Fed. Cir. 2010). A patentee
demonstrates possession of the invention by describing it "in sufficient detail
that one skilled in the art can clearly conclude that the inventor invented the
claimed invention." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997).

ambiguity lies not on the breadth of the term, which is indeed broad, but
rather that the term does not provide notice as to that which it seeks to cover.
3 Claim 25 is additionally indefinite because it depends from a canceled
claim.
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In clear contrast is Appellants' Specification, which does not describe
the claimed requirements except by way of a single structure that is said to
satisfy each requirement. The Specification indicates that Appellants
invented an air grate having a particular 1 inch opening that covers 40% or
less of the span which it covers and that has a 1/2 inch raised edge for spill
protection. Spec., paras. 21, 24, and 27. The Specification does not describe
all means of how to meet any and all potential spill protection requirements,
for example, but rather provides an example of one structure that is said to
address a spill protection requirement. Appellants' Specification discloses
neither a representative number of examples (species) falling within the
scope of the genus of air grates satisfying the claimed spill protection
requirement nor structural features common to members of the genus so as
to permit one of skill in the art to "'visualize or recognize' the members of
the genus." See Ariad, 598 F.3d at 1350. In effect, Appellants' Specification
and claims merely recite a description of a problem to be solved while
claiming all solutions to it, covering all air grates later actually invented and
determined to fall within the claims' functional boundaries. See id. at 1353.
Appellants' disclosure is similarly lacking for the other functional
requirements.
Appellants must demonstrate possession of the invention, not merely
that which makes it obvious. Id. at 1571-72. The examples in the
Specification are not indicative of a disclosure describing an invention of an
air grate able to satisfy an air flow, fall through, or spill protection
requirement as claimed. Put another way, the Specification merely
describes one variant of something that fits within the claims' scope, but
does not describe the invention as recited in claims 1, 9, 16, and 23. See id.
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at 1572 ("it is not a question of whether one skilled in the art might be able
to construct the patentee's device from the teachings of the disclosure [but]
whether the application necessarily discloses that particular device")
(internal citation and quotation omitted). Likewise, while the dependent
claims may recite a particular requirement described in the Specification for
one or more of the claimed functions, none of the dependent claims recite a
particular requirement for each of the claimed functions such as to
demonstrate possession of an invention having all of the claimed functions.
Therefore, we enter a new ground of rejection under 35 U.S.C. § 112, first
paragraph, of claims 1-23, 25, and 26 because these claims lack a written
description sufficient to demonstrate that Appellants, at the time of
invention, had possession of the invention as claimed.
The Prior Art Rejection
For the reasons discussed above, claims 1-23, 25, and 26 are
indefinite. Nevertheless, even if the metes and bounds of the limitations in
question could be ascertained, the Examiner's rejection fails. The Examiner
states that functions (1)-(3) do not patentably distinguish the claim over the
prior art of record. Ans. 3-4. However, the Examiner has not made factual
findings that the particular structures in Rapisarda and/or Hampel are
actually capable of performing these functions, or articulated an apparent
reason, with rational underpinning, as to why it would have been obvious to
modify them so as to satisfy these limitations. This is not to say that, for
example, Rapisarda is not capable of "meet[ing] a semiconductor device
manufacturing fall through object size limitation," but rather, that the
Examiner has not established that the structures in Rapisarda and/or Hampel
are capable, or that it would have been obvious to modify those structures to
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be capable, as such. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis); see also In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
Therefore, the Examiner has not met the initial burden in establishing a
prima facie case of obviousness with respect to claim 1. The rejection of
claims 2-23, 25, and 26 falls with the rejection of claim 1 because the
Examiner's rejection of these claims similarly does not articulate the
requisite factual findings and analysis regarding the claimed functional
requirements.

DECISION
We reverse the Examiner's decision regarding claims 1-23, 25, and 26.
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2010), we enter a new
ground of rejection of claims 1-23, 25, and 26 under 35 U.S.C. § 112,
second paragraph, as indefinite, and under 35 U.S.C. § 112, first paragraph,
as lacking written description support.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

hh

Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204