Ex Parte Otis et al

Board of Patent Appeals and Interferences

Nov 1, 2010

10713298 (B.P.A.I. Nov. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES OTIS, MEHRGAN KHAVARI,
JEFFREY R. POLLARD, and MARK C. HUTH
____________________

Appeal 2009-007406
Application 10/713,298
Technology Center 3700
____________________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007406
Application 10/713,298
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 9-
16. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a micromachining laser. Claim 9,
reproduced below, is illustrative of the claimed subject matter:
9. An apparatus comprising:
at least one laser source that supplies a laser beam to
operate on a substrate at a laser interaction zone to form a
feature in the substrate;
a first nozzle oriented to deliver liquid along a first liquid
supply path to the feature, so that the liquid is delivered to the
laser interaction zone; and,
at least a second different nozzle oriented to deliver
liquid to the laser interaction zone along a second different
liquid supply path, wherein the first nozzle and at least the
second different nozzle are selectively activated based upon the
location of the laser interaction zone in the substrate.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Terada
Hibst
Scaggs2
US 2004/0197433 A1
DE 41 38 468
WO 03/028943
Oct. 7, 2004
Jun. 3, 1993
Apr. 10, 2003

REJECTIONS
Claims 9, 10, and 12-16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hibst. Ans. 3.
Appeal 2009-007406
Application 10/713,298
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Claims 14-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hibst and Scaggs. Ans. 4.
Claims 9-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hibst and Terada. Ans. 4.

OPINION
Appellants contend that the Examiner erred in rejecting claim 9 as
being anticipated by Hibst or, in the alternative, as being unpatentable over
Hibst and Terada, by failing to evaluate and consider the functional
limitations of the claim. App. Br. 6-7, 8-10. We agree.
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty of the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an
applicant can be put to this burdensome task, the examiner must provide
sufficient evidence or scientific reasoning to establish the reasonableness of
the examiner's belief that the functional limitation is an inherent
characteristic of the prior art. “In relying upon the theory of inherency, the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (citations omitted).

2 The Examiner uses an English equivalent in the form of US 2003/0062126
A1 to Scaggs.
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Application 10/713,298
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The Examiner contends that “the intended use of the apparatus for
particular work pieces does not impart patentability to the claims” and “[t]he
use of selective nozzle usage would have been obvious at the time
applicant’s invention was made to a person having ordinary skill in the art
because the different flows assist in effecting feature shaping.” Ans. 3-5.
These statements do not provide sufficient evidence or technical reasoning
to establish that Hibst’s device alone, or as modified by the teachings of
Terada, would inherently be capable of performing the recited function;
“wherein the first nozzle and at least the second different nozzle are
selectively activated based upon the location of the laser interaction zone in
the substrate.” The Examiner also notes that “selective activation of different
first and second nozzle does not preclude simultaneous use of first and
second nozzles at one flow rate.” Ans. 3. Even if we accept the Examiner’s
proposed construction of “selectively activated,” the Examiner has not
addressed the limitation requiring that activation be based upon the location
of the laser. App. Br. 9. All words in a claim must be considered in judging
the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970).
Since the Examiner failed to properly construe and address the
limitations of claim 9, we are constrained to reverse the rejections of claim 9
along with the rejections of dependent claims 10-16.

DECISION
For the above reasons, the Examiner’s rejections of claims 9-16 are
reversed.

Appeal 2009-007406
Application 10/713,298
5
REVERSED

nlk

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