Ex Parte Matsumoto et al

Patent Trial and Appeal Board

Mar 28, 2014

12576715 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOHSUKE MATSUMOTO, TATSUMI TSUCHIYA,
EIKI OOSAWA, and TATSUSHI YOSHIDA
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Appeal 2012-010179
Application 12/576,715
Technology Center 1700
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-010179
Application 12/576,715

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-11. We have jurisdiction under 35 U.S.C. § 6.
Claim 1 illustrates the subject matter on appeal and is reproduced
below (emphasis added):
1. An apparatus for interconnecting two connection
pads in a head-gimbal assembly, comprising:
a conveyer for conveying a metallic slug;
a nozzle for ejecting said metallic slug toward said two
connection pads, said nozzle comprising:
a receiving portion for receiving said metallic slug from
said conveyer;
a gas release opening through a sidewall of said nozzle
for enabling gas to escape said nozzle; and
a straight guide, said straight guide disposed downstream
of said receiving portion, and said straight guide having a
maximum inner diameter such that said maximum inner
diameter is smaller than a minimum inner diameter of said
receiving portion, wherein without requiring an inner diameter
of said straight guide to be greater than an outer diameter of
said metal slug; and
a laser for applying a laser beam from an inlet side of
said nozzle to said metallic slug as said metallic slug passes
along a path that comprises a first portion through said straight
guide and a second portion between said straight guide and said
two connection pads, said laser configured to melt said metallic
slug for attaching said molten metallic slug to said two
connection pads.
Appeal 2012-010179
Application 12/576,715

3
Appellants, App. Br. 4, request review of the Examiner’s final
rejection of claims 1-11, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.1

OPINION
Rejection under 35 U.S.C. § 112, first paragraph
(Written Description)

In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for
lack of adequate descriptive support, it is incumbent upon the Examiner to
establish that the originally-filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that an Appellant had
possession of the now claimed subject matter Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Adequate
description under the first paragraph of 35 U.S.C. § 112 does not
require literal support for the claimed invention. In re Herschler, 591 F.2d
693, 701 (CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA
1978; In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is
sufficient if the originally-filed disclosure would have conveyed to one
having ordinary skill in the art that an appellant had possession of the
concept of what is claimed. In re Anderson, 471 F.2d 1237, 1242 (CCPA
1973).

1 The Examiner withdrew from appeal the following rejections: Claims 1-11
under 35 U.S.C. § 112, second paragraph; Claims 1-4 and 6-11 under
35 U.S.C. § 103(a) over the combination of Wagoh (Pub. No. US
2006/0219760) and Zakel (US Patent No. 7,829,817); and Claim 5 under
35 U.S.C. § 103(a) over the combination of Wagoh, Zakel, and Shindo (Pub
No. US 2006/0065641). (Ans. 2-3.)
Appeal 2012-010179
Application 12/576,715

4
The Examiner contends the limitation “‘wherein without requiring an
inner diameter of said straight guide to be greater than an outer diameter of
said metal slug’” is not supported in the Specification as originally filed.
(Final 2.)2 The Examiner further contends:
[T]he intended relationship between the diameter of the straight
guide and the diameter of the slug or the solder ball is not
clearly and/or positively set forth in said limitation. It is also
noted that, the limitation does not necessarily exclude “an inner
diameter of said straight guide being greater than an outer
diameter of said metal slug”.

(Ans. 9.)
The question presented for our review is whether the disputed claim
language presents new concepts in violation of the description requirement
of the first paragraph of 35 U.S.C. § 112. See In re Anderson, supra. In the
situation before us, it cannot be said that the originally-filed disclosure
would not have conveyed to one having ordinary skill in the art that
Appellants had possession of the concept of the inner diameter of the
straight guide that is greater than or equal to the diameter of a solder ball, so
the solder ball can pass through the straight guide. (Spec. ¶ 42.) Thus, the
concept of a straight guide having an inner diameter that is greater than or
equal to the diameter of a solder ball is described by the present
Specification.
However, the Examiner found that the language “‘without requiring’”
appearing before the disputed phrase provides “an optional limitation, and
therefore fails to positively set forth any definite range defining the inner

2 A complete statement of the Examiner’s rejection appears in the final
office action (hereinafter Final) mailed October 25, 2011.
Appeal 2012-010179
Application 12/576,715

5
diameter of the straight guide.” (Ans. 9.) This “optional limitation” does
not indicate that the Specification does not provide sufficient support for
determining the appropriate diameter of the straight guide. A person of
ordinary skill in the art would have understood the disputed claim to require
the straight guide to have an inner diameter that is greater than or equal to
the diameter of a solder ball.
The Examiner has not adequately explained why one skilled in the art,
upon reading the cited portions of the Specification, would not have
concluded that the inner diameter of the straight guide is greater than or
equal to the diameter of a solder ball.
Accordingly, we reverse the rejection under 35 U.S.C. § 112, first
paragraph.
ORDER
The decision of the Examiner rejecting claims 1-11 under 35 U.S.C.
§ 112, first paragraph is reversed.

REVERSED

cdc