Ex Parte Weekamp et al

Patent Trial and Appeal Board

Jul 29, 2013

10515470 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JOHANNUS WILHELMUS WEEKAMP,
MARC ANDRE DE SAMBER, JOHAN BOSMAN,
WILLEM HOVING, and RENATUS HENDRICUS MARIA
SANDERS
____________________

Appeal 2010-006382
Application 10/515,470
Technology Center 3700
____________________

Before EDWARD A. BROWN, REMY J. VANOPHEM, and
WILLIAM A. CAPP, Administrative Patent Judges.

VANOPHEM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006382
Application 10/515,470
2

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8
and 9. We have jurisdiction under 35 U.S.C. §6(b).
We reverse and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
The invention relates to a device for transferring a component
supported by a carrier to a desired position on a substrate. Claim 8,
reproduced below, is illustrative of the claimed subject matter:

8. A device for transferring a component supported by a
carrier to a desired position on a substrate, the device comprising:
a carrier transport device configured to support a carrier,
the carrier supporting components attached to the carrier using an
intermediate layer located between the component and the carrier;
a substrate transport device configured to support a
substrate; and
an illumination device which is situated at least partly at a
side of the carrier transport device facing away from the substrate
transport device,
wherein, during operation, the carrier is positioned relative
to the substrate by movement of the carrier transport device
relative to the substrate transport device, wherein a light beam is
directed at an area of the carrier by the illumination device and
the component is removed from the carrier and propelled towards the
substrate by a build-up of pressure, at least in part, by
interaction of the light beam and the carrier, and wherein the
intermediate layer is removed from the component and from the area
of the carrier where the component was removed, wherein a size of
the intermediate layer removed from the area of the carrier is a
same size of the carrier.

Appeal 2010-006382
Application 10/515,470
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Han US 5,454,900 Oct. 3. 1995
Schutze US 5,998,129 Dec. 7, 1999
Brod US 2004/0089408 A1 May 13, 2004
Fujitsu JP 402238648A Sept. 20, 1990

REJECTION
The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Han, Brod, Schutze, and Fujitsu.

ANALYSIS
New ground of rejection of claims 8 and 9 under
35 U.S.C. § 112, first paragraph, written description requirement
Independent claim 8 is directed to a device for transferring a
component supported by a carrier to a desired position on a substrate, the
devicse comprising a carrier transport device, a substrate transport device
and an illumination device. Claim 8 recites the limitation, “the intermediate
layer is removed from the component and from the area of the carrier where
the component was removed, wherein a size of the intermediate layer
removed from the area of the carrier is a same size of the carrier.”
Emphasis added. Appellants indicate that Figures 6B-6C of the application
show that “the intermediate layer 5 is removed from the component 2'" and
from the area of the carrier 3 where the component 2'" was removed, where
the size of the intermediate layer 5 removed from the area of the carrier 3 is
a same size of the carrier 3.” App. Br. 7 (emphasis added). However,
Appeal 2010-006382
Application 10/515,470
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Figures 6B and 6C merely appear to show that the intermediate layer 5
removed has a horizontal dimension that may be the same size as the
horizontal dimension of the component 2'". These figures do not show,
however, that the size of the intermediate layer 5 that is removed is the same
size as the carrier 3. For example, the carrier horizontal dimension is
significantly larger than the horizontal dimension of the removed
intermediate layer 5. The area of the carrier 3 shown is also significantly
larger than the area of the removed intermediate layer 5. Accordingly, it is
not apparent to us what “size” of the intermediate layer 5 that is removed is
“a same size of the carrier 3.” Appellants do not appear to identify any other
disclosure in the Specification that supports the claimed limitation.
To satisfy the written description requirement, the specification of
Appellants’ application must describe the claimed invention in sufficient
detail that one skilled in the art can reasonably conclude that the inventor
had possession of the claimed subject matter as of the filing date of the
application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.
Cir. 1991). We find that the Specification as originally filed (including the
drawings) does not convey to an ordinary skilled artisan that Appellants had
possession of the claimed subject matter, and thus, fails to meet the
requirements of 35 U.S.C. §112, first paragraph, written description
requirement. We designate our rejection of claim 8 and dependent claim 9
under 35 U.S.C. § 112, first paragraph, as a new ground of rejection under
37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity
to respond.

Appeal 2010-006382
Application 10/515,470
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New ground of rejection of claims 8 and 9 under
35 U.S.C. § 112, second paragraph
As discussed supra, claim 8 recites the limitation “wherein a size of
the intermediate layer removed from the area of the carrier is a same size of
the carrier.” We find that the meaning of the language “a same size of the
carrier” is indefinite because it is not clear what particular “size” of the
intermediate layer and carrier is meant. Figures 6B and 6C do not appear to
show any size of the removed intermediate layer 5 being the “same size” as
that of the carrier 3 from which it is removed. 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.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Here, because the
Specification does not appear to provide any guidance as to the meaning of
the claim limitation, we determine that claims 8 and 9 do not comply with
the requirements of 35 U.S.C. § 112, second paragraph. We designate our
rejection of claims 8 and 9 under 35 U.S.C. § 112, second paragraph, as a
new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants
with a full and fair opportunity to respond.

Rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Han, Brod, Schutze, and Fujitsu
In light of the new grounds of rejection of claims 8 and 9 under 35
U.S.C. § 112, first paragraph and second paragraph, discussed supra, we
exercise our discretion to not address the rejection of claims 8 and 9 over the
prior art. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).

Appeal 2010-006382
Application 10/515,470
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DECISION
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Han, Brod, Schutze, and Fujitsu is reversed.
This decision also contains new grounds of rejection of claims 8 and 9
pursuant to 37 C.F.R. § 41.50(b), which 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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).

REVERSED; 37 C.F.R. § 41.50(b)

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