KYOCERA Corporation

Patent Trials and Appeals Board

Sep 2, 2020

2020000517 (P.T.A.B. Sep. 2, 2020)

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.
14/702,634 05/01/2015 Toru Fukano 114324-631RI1 1068
109007 7590 09/02/2020
Procopio / KYOCERA Corporation
Procopio, Cory, Hargreaves & Savitch LLP
525 B Street
Suite 2200
San Diego, CA 92101
EXAMINER
WHITTINGTON, KENNETH
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
09/02/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@procopio.com
pattric.rawlins@procopio.com
uspatents@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORU FUKANO, YOSHIHIRO OOKUBO, and JUNYA NISHII
Appeal 2020-000517
Reissue Application 14/702,6341
Patent 8,436,514 B2
Technology Center 3900
Before ALLEN R. MACDONALD, ERIC B. CHEN, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

MCKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 14–30, 52, and 53 in the application for
reissue of U.S. Patent 8,756,495. Claims 1–13 and 31–51 are cancelled.
Notice of Appeal, filed May 17, 2019, 7. We have jurisdiction under
35 U.S.C. § 6(b).

1 Filed May 1, 2015, seeking to reissue U.S. Patent 8,436,514 B2, issued
May 7, 3013, based on Application 12/678,989, filed October 30, 2008.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Kyocera Corp.
Appeal Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed invention relates generally “to an acoustic wave device
mainly used in a wireless communication circuit of a mobile communication
device etc.” Spec., col. 1, ll. 19–21. The Specification describes, “[a]
surface acoustic wave device has to be provided with a hollow portion to
secure a vibration space in a portion where an acoustic wave vibrates.”
Spec., col. 1, ll. 40–43. Figure 4, reproduced below, depicts an exemplary
acoustic wave prior art device with a protective cover 46 forming hollow
vibration space 47.

Figure 4 depicting a cross-sectional view of an exemplary
conventional surface acoustic wave device including
an excitation electrode with a vibration space

The Specification further explains that “a high pressure is applied to the
[device during transfer molding] under a high temperature atmosphere” may
cause deformation of the protective cover 46. This may result in a “large
distortion of the vibration space, or the like [] causing the problem of a large
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deterioration of electrical characteristics of the surface acoustic wave
device.” Spec. col. 2, ll. 4–15. Therefore, to solve this problem, the claimed
invention forms a conductive layer on the protective cover continuously with
columnar outside connection-use electrode, such that “the outside
connection-use electrode [is] a support column.” Spec. col. 2, ll. 37–42.
According to the Specification, the additional support column will suppress
the deformation of the protective cover forming the hollow structure and the
acoustic wave device will have “hardly any deterioration of electrical
characteristics due to the deformation of the vibration space.” Spec. col. 2,
ll. 43–45.
Reissue claims 14 and 16, reproduced below, are illustrative of the
claimed subject matter (emphasis added):
14. (Reissue claim) An acoustic wave device comprising:
a substrate having a first edge and a second edge
substantially perpendicular to the first edge [configured to
propagate an acoustic wave];
an excitation electrode arranged on a first main surface of
the substrate;
at least two columnar outside connection-use electrode~
electrically connected to the excitation electrode;
a [protective] cover comprising a hollow
[accommodating] space in which the excitation electrode is
accommodated, the cover being on the first main surface;
a conductive layer connected to the outside connection-use
electrode on the [protective] cover, and
an insulation layer covering a top surface of the conductive
layer, wherein the top surface of the conductive layer is
roughened;
wherein the at least two columnar outside connection-use
electrodes include a plurality of input/output-use electrodes
inputting/outputting electric signal to/from the excitation
electrode,
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wherein the plurality of input/output-use electrodes are
present in a perspective plane view at a level of the conductive
layer and do not cover any hollow space in the cover in the
perspective plane view at the level of the conductive layer,
wherein at the level of the conductive layer a first of the
input/output-use electrodes faces the conductive layer in a first
direction substantially parallel to the first edge and faces the
conductive layer in a second direction substantially parallel to the
second edge.
16. (Reissue claim) An acoustic wave device comprising:
a substrate having a first edge and a second edge
substantially perpendicular to the first edge;
an excitation electrode arranged on a first main surface of
the substrate;
a cover comprising a hollow space in which the excitation
electrode is accommodated, the cover being on the first main surf
ace;
at least two outside connection-use electrodes electrically
connected to the excitation electrode; and
a conductive layer on the cover,
wherein the hollow space is between two outside
connection-use electrodes,
wherein the conductive layer covers at least 50% of a top
surface of the cover and covers at least a part of the hollow space
in a perspective plan view,
wherein the at least two outside connection-use electrodes
include a plurality of input/output-use electrodes
inputting/outputting electric signal to/from the excitation
electrode and each of the plurality of input/output-use electrodes
is electrically unconnected to the conductive layer,
wherein the plurality of input/output-use electrodes are
present in a perspective plane view at a level of the conductive
layer and do not cover any hollow space in the cover in the
perspective plane view at the level of the conductive layer,
wherein at the level of the conductive layer a first of the
input/output-use electrodes faces the conductive layer in a first
direction substantially parallel to the first edge and faces the
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conductive layer in a second direction substantially parallel to the
second edge.
REJECTIONS
The Examiner objected to the drawings under 37 C.F.R. 1.83(a) as
failing to show the subject matter as claimed. Final Act. 4–5.
The Examiner rejected claims 16–30 and 53 as failing to comply with
35 U.S.C. § 112, first paragraph (pre-AIA) as failing to provide sufficient
written description support and under 35 U.S.C. § 251 as introducing new
matter. Final Act. 8–10.
The Examiner rejected claims 14–30, 52, and 53 under 35 U.S.C.
§ 112, first paragraph (pre-AIA) as failing to provide sufficient written
description support and under 35 U.S.C. § 251 as introducing new matter.
Final Act. 5–8.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Cf. Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (citing In
re Oetiker, 977 F.2d 1443, 1445).

THE OBJECTION TO THE DRAWINGS AND THE WRITTEN
DESCRIPTION/ NEW MATTER REJECTION OF CLAIMS 16–30 AND 53
The Examiner determines that the drawings do not show and the
Specification does not support the limitation, “the conductive layer. . .
covers at least a part of the hollow space. . . ,” as recited in claim 16. While
objecting to the drawings, the Examiner explains that the scope of the
claimed limitation includes “a range of coverages of the hollow space by the
conductive layer.” For example, the Examiner states the claimed limitation
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would include “covering ‘a part’ of the hollow space up to covering the
entire hollow space.” Final Act. 4. The Examiner then reasons that the
drawings only depict covering the entire hollow space and, thus, “the entire
scope of the claim is not shown.” Id.
Similarly, while rejecting the claims for lack of written description
and new matter, the Examiner determines that “the portion of this new range
wherein the conductive layer only covers ‘a part’ of the hollow space was
not disclosed or described in the [originally filed Application].” Final Act.
9. For example, the Examiner identifies that covering “at least a part of
would include covering 98%, 50%, 25% or even 1% of the hollow space and
“[s]uch a partial coverage was not contemplated, disclosed, shown or even
described at the filing of the [original] Application.” Final Act. 9–10. The
Examiner acknowledges that the Specification describes the conductive
layer “preferably” covering the entire accommodating space, but finds that
“th[is] disclosure [] only provides support and intention for the conductive
layer to cover the entire hollow space.” Id.
On the other hand, Appellant asserts that the Examiner incorrectly
rejected the claims for lack of written description support and as new matter
under the original disclosure clause of § 251. Appeal Br. 8–10. Appellant
notes that the original disclosure requirement of § 251 and the written
description analysis are the same (Appeal Br. 9; Reply Br. 3), namely
“whether one skilled in the art, reading the specification, would identify the
subject matter of the new claims as invented and disclosed by the patentees.”
Reply Br. R-5 (quoting In re Amos, 953 F.2d 613, 618 (Fed. Cir. 1991)).
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According to Appellant, a skilled artisan would understand the
Specification’s disclosed preference for covering the entire hollow space to
be “a preference over other alternatives,” such as covering part of the hollow
space. Reply Br. 4. Therefore, Appellant argues that the Specification
sufficiently supports covering at least a part of the hollow space.
Appellant also asserts the Examiner conceded this point. Appeal
Br. 9. Specifically, Appellant points out that the Examiner, considering the
same text of the Specification in an earlier indefiniteness rejection, stated:
There are three reasonable possibilities for covering the hollow
space: not covering at all, partially covering or entirely covering.
Furthermore, “preferably” merely implies a preference that the
conductive layer covers the hollow space, but “preferably”
merely implies a preference that the conductive layer covers the
hollow space, but is not required or optional, which could imply
that the conductive layer does not cover the hollow space at all
or only partially covers the hollow space.
Appeal Br. 9–10 (quoting Office Action, dated April 3, 2017 (“4/3/2017
Office Action”), p. 10)(emphasis added). Appellant additionally argues that
original claim 13 is nearly identical to the disputed claim language – that the
conductive layer covers at least a part of the hollow accommodating space.
Appeal Br. 10.

PRINCIPLES OF LAW
35 USC 251(c) states that “[t]he provisions of this title relating to
applications for patent shall be applicable to applications for reissue of a
patent.” As such, the written description requirement of 35 USC 112(a)
equally applies to reissue applications. To satisfy the written description
requirement under § 112, the specification must “reasonably convey[] to
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those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. at 1351.
35 USC 251(a) authorizes reissue of a patent “for the invention
disclosed in the original patent.” 35 USC 251(a). To satisfy the original
patent requirement of 251 (a), the “original” patent “must clearly and
unequivocally disclose the newly claimed invention as a separate invention.”
Antares Pharma Inc. v. Medac Pharma, Inc., 771 F.3d 1354, 1362 (Fed. Cir.
2014). See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed.
Cir. 2019) (citing Indus. Chems., 315 U.S. at 676, 62 S.Ct. 839 (interpreting
35 U.S.C. § 64 (1934)) (“It is well settled that for broadening reissue claims,
‘it is not enough that an invention might have been claimed in the original
patent because it was suggested or indicated in the specification.’”).

ANALYSIS3
Appellant’s arguments with respect to the original patent requirement
are misplaced. As the Examiner points out, the basis for rejection is lack of

3 Generally, objections are petitionable matters. However, the objection to
the drawings here turns on the same issue as the written description/new
matter rejection of claims 16–30 and 53. Compare Final Act. 4–5 with Final
Act. 8–10. Accordingly, we address the objection to the drawings and the
written description/new matter rejection of claims 16–30 and 53 together.
See Ex Parte Edward J. Domanico, 2009-014289, 2011 WL 4484144 (BPAI
Sept. 21, 2011) (deciding an objection to the Specification for lack of
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written description support, not the original patent requirement. Ans. 9–10;
Final Act. 8–10. In other words, the Examiner rejects the claims under 35
USC 251(c), not 35 USC 251(a).
Nevertheless, we agree with Appellant that the Examiner erred in
objecting to the drawings and rejecting claims 16–30 and 53 for lack of
written description support and for introducing new matter. Notably, the
claimed limitation recites covering at least a part of the hollow space. As
shown in Figure 1B below, conductive layer 18 covers the entire hollow
space 8, therefore Figure 1B also depicts covering at least a part of the
hollow space.

antecedent basis along with a written description rejection because the
objection turned on the same issue and noting that the MPEP sets forth that a
new matter objection is appealable when the issue is the basis for both an
objection and a rejection).
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Figure 1B showing a cross-section view of a surface acoustic wave device
including a conductive layer covering the entire hollow space.
Moreover, as Appellant points out, the Specification describes preferably
covering the entire hollow space. A skilled artisan at the time of the
invention would understand “preferably” covering entirely to be a preference
over alternatives, such as covering part of the hollow space. Thus, we are
persuaded that the Examiner erred in concluding that the drawings do not
show and Specification lacks sufficient written description support for
covering at least part of the hollow space.
Accordingly, based on the record before us, we reverse the objection
to the drawings and the written description/new matter rejection of claims
16–30 and 53.

THE WRITTEN DESCRIPTION/ NEW MATTER
REJECTION OF CLAIMS 14–30, 52, AND 53
To understand the context of the Examiner’s rejection, we first review
the earlier prosecution of the disputed claim language. In the Office Action,
dated April 3, 2017, the Examiner rejected the independent claims, which
recited that “none of the plurality of input/output-use electrodes cover any
portion of the hollow space,” as anticipated by U.S. Pub. No. 2007/0200462
to Takano (“Takano”). 4/3/2017 Action, p. 16 (citing Figures 6 and 10 of
Takano). The Examiner, as shown in annotated Figure 10 reproduced
below, identifies Takano’s cavity as the claimed hollow space.
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Figure 10 of Takano annotated by the Examiner
to identify the claimed hollow space
4/3/2017 Action, p. 15.
Appellant, in the Reply to Final Office Action, dated August 3, 2017,
amends the claims to recite the plurality of input/output-use electrodes “do
not cover any portion of any hollow space” and argues that Takano does not
disclose this limitation. Reply to Final Office Action, dated August 3, 2017
(“8/3/2017 Reply”), pp. 19–20. Appellant highlights portions of Takano’s
pads that cover portions of cavities in Figure 10, as shown in Appellant’s
annotated Figure 10 reproduced below, and asserts that in Takano “at least
some portion of these input/output electrodes cover some portion of a hollow
space.”
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Figure 10 of Takano highlighting pads 23 and 24 covering cavities 11
Id.
As shown in the side by side depiction of the annotated figures below,
Appellant’s annotation to Figure 10 points to the overlap in the two left
cavities with pads 23 and 24, whereas the Examiner’s annotation to Figure
10 points to a cavity on the right side.

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Appellant’s annotated Figure 10 next to
the Examiner’s annotated Figure 10
Notably, none of pads 23, 24, or 25 cover the cavity identified by the
Examiner as the claimed hollow space. As such, according to the Examiner,
by amending from “any portion of the hollow space” to “any portion of any
hollow space,” Appellant broadens the scope of the claim to include
additional or alternative cavities.4 In Non-Final Action, dated October 20,
2017, the Examiner then rejects the claims for new matter and lack of
written description support. Non-Final Office Action, dated October, 20,
2017, pp. 6–8. The Examiner explains the cited Takano prior art was
directed to
acoustic wave device having one hollow space as well as
input/output-use electrodes that did not cover this one hollow
space. This Takano prior art reference also disclosed other
hollow spaces, some of which were covered at least partially by
the input/output-use electrodes. In response to the application of
this reference, Applicant in the Aug 2017 Amendment thus
created a new limitation to distinguish what happens when other
hollow spaces are present in the acoustic wave device, i.e., the
input/output-use electrodes do not cover "any portion of any
hollow space."
Id.
In the appealed Final Action, dated December 19, 2018, the Examiner
maintains the new matter/written description rejection. The Examiner
explains the recited “any hollow space” implies “additional hollow spaces”

4 We note that Appellant deletes the “any portion” for clarity in a later
Amendment resulting in the claim language before us, only “any hollow
space.” See Reply to Non-Final Office Action, dated November 1, 2018, p.
15.
.
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as the claim “identifies a single ‘hollow space’ but [then recites] no coverage
of ‘any hollow space’ and not just the identified hollow space.” Final Act. 6.
The Examiner points out the Specification describes an acoustic wave device
with “only a single hollow portion (item 8 in the figures)” and the
input/output-use electrodes (items 10) not covering “any portion of that
single hollow space (item 8).” Final Act. 6.
The Examiner explains “there is no discussion or disclosure of any
additional hollow spaces in the cover or the manner to which those
input/output-use electrodes are positioned with respect to the additional
hollow spaces.” Final Act. 6. In particular, according to the Examiner, there
is no disclosure “that discusses the relationship between the input/output-use
electrodes and all hollow spaces such that these input/output-use electrodes
do not cover ‘any hollow space’” (Final Act. 6) and, therefore, there is
claimed “any hollow space” is new matter and there is insufficient written
description support for this limitation.
Appellant, on the other hand, contends that “[a]lthough the rejection is
characterized as a § 112 / § 251 rejection, the issue is one of claim
interpretation with respect to the "do not cover any hollow space" language.”
Appeal Br. 4. Appellant.asserts that the Examiner interpretation of “any
hollow space” is unreasonably broad. Appeal Br. 4–6. Specifically,
according to Appellant, the broadest reasonably interpretation is that “any
hollow space” is only the previously introduced single hollow space in the
cover. Id. Appellant explains that the Examiner is improperly requiring the
recited “any hollow space” to include multiple hollow spaces. Appeal Br. 5;
see also Reply Br. R-2 (arguing that “the Answer is contrasting ‘any hollow
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space’ to ‘a single hollow space’ and asserting the ‘any hollow space’
language must be interpreted to require more than a single hollow space.”).
As such, Appellant argues “[t]he interpretation of the claim language to
require more than one hollow space is improper because the interpretation
goes beyond the broadest reasonable interpretation.” Appeal Br. 5.
Additionally, Appellant argues “any interpretation of the ‘any hollow space’
claim language that requires more than one hollow space is contrary to
controlling Federal Circuit precedent.” Reply Br. R-3.

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Although the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993). See also Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir.
2005) (en banc) (internal quotation marks and citations omitted) (noting that
the Specification is the single best guide to a disputed term’s meaning and
acts as a dictionary when it expressly defines terms recited in the claims).

ANALYSIS
Based on the record before us, we are unpersuaded of error. Contrary
to Appellant’s assertions, the Examiner does not interpret “any hollow
space” to require multiple hollow spaces. Instead, the Examiner determines
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the amended “any hollow space” broadens the claim scope to include
additional hollow spaces in the cover. In other words, if an acoustic wave
device has additional hollow spaces in the cover, those hollow spaces would
be within the scope of the claimed “any hollow space.”
Considering the claim language itself, the claim only recites any
hollow space in the cover, not any of the hollow space, to refer to the
previously introduced hollow space in the cover. Based on the plain
language, a skilled artisan then would understand the claimed any hollow
space is not limited to only that hollow space and may include other hollow
spaces in the cover. This interpretation is consistent with the plain and
ordinary meaning of any. For example, “any” is defined as “some, no matter
how much or how little, how many, or what kind,” “without limit,” or
“every.” Webster's New World College Dictionary (2014). (available at
https://www.yourdictionary.com/any).
Appellant’s argument, during the Oral Hearing, clarifying that “any
space” refer to any part or portion of the space is not persuasive.
Specifically, Appellant contends
“So, we were having discussing about the word any. So, the
word any is interesting because when you're talking about objects
then maybe one or more makes sense. But when you're talking
about space, any space refers to the space. It could be any of the
space. So, it's like any air, so air is everywhere but any air doesn't
mean one or more air, it just means any. The same is true for the
hollow space.”
Oral Hearing Tr. p. 11, ll. 17–21. While we agree that the claimed any can
refer to some, no matter how much or little of a hollow space, notably absent
in the claim here is the critical article, the, to refer back only to the
previously introduced hollow space.
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Further, while the Specification does not expressly describe multiple
hollow spaces in the cover, the Specification does not limit the invention to
only one single hollow space. For example, the Specification describes that
the claimed invention is explained focusing on at least one excitation
electrode. Specification, col. 3, ll. 44–46. A skilled artisan would
understand “at least one” electrode reasonably suggest including more than
one electrode and may reasonably suggest including a corresponding
accommodating hollow space for each of the more than one electrode. See,
e.g., Takano, Figs. 1, 4F (depicting multiple cavities, one for each electrode,
showing it was known in the art at the time of the invention). The
Examiner’s interpretation, thus, is at least consistent with the Specification.
Therefore, based on the record before us, we are not persuaded the
Examiner erred in defining the claimed any hollow space to broadly, but
reasonably, include additional hollow space in the cover or, in other words,
any hollow space is not limited only to the previously introduced single
hollow space in the cover.
Accordingly, we sustain the written description/new matter rejection
of claims 14–30, 52, and 53.

CONCLUSION
The Examiner’s rejection under 35 U.S.C. 112, first paragraph and 35
U.S.C. § 251 of claims 14–30, 52, and 53 is affirmed, but the additional
rejection under 35 U.S.C. 112, first paragraph and 35 U.S.C. § 251 of claims
16–30 and 53 and the objection to the drawings are reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16–30, 53 251/112 New Matter/Written
Description

16–30, 53
14–30, 52,
53
251/112 New Matter/ Written
Description
14–30,
52, 53
Overall
Outcome
14–30, 52,
53

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