Ex Parte Ackerman et al

Board of Patent Appeals and Interferences

Jun 20, 2011

09844947 (B.P.A.I. Jun. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BRADFORD G. ACKERMAN, KENNETH E.
HRDINA, LISA A. MOORE,
NIKKI J. RUSSO, and C. CHARLES YU
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Appeal 2010-004881
Application 09/844,947
Technology Center 1700
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Before CHARLES F. WARREN, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-9, 13, 15, 20, 21, 23 and 24. The Appellants state
that rejected claim 23 is not under appeal and that the rejection of that claim
is not being contested. Thus, claims 1, 2, 4-9, 13, 15, 20, 21 and 24 are
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before us for consideration on appeal.1 We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for producing a titania-containing
fused silica glass. Claim 1 is illustrative:
1. A method for producing a fused silica glass containing titania,
comprising:
synthesizing particles of silica and titania by delivering a mixture of
silica precursor and a titania precursor to a burner;
growing a column of solid porous preform by successively depositing
the particles on a deposition surface at a temperature below a minimum
temperature at which the particles can consolidate into dense glass while
successively translating the deposition surface away from the burner; and
subsequently consolidating the porous preform into dense glass.

The Rejections
Claims 1, 2, 4-9, 13, 15, 20, 21, and 24 stand rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention, and under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
OPINION
We reverse the rejections.

1 The Examiner should have canceled claim 23 prior to this appeal. See
Manual of Patent Examining Procedure § 1215.03 (8th ed. Rev. 6, Sep.
2007) and Ex parte Ghuman,
http://www.uspto.gov/ip/boards/bpai/decisions/prec/rm081175.pdf at 5-6
(BPAI 2008).
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Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that “while successively translating the deposition surface” is
indefinite and does not have written descriptive support in the Appellants’
Specification?
Analysis
Rejection under 35 U.S.C. § 112, second paragraph
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner argues (Ans. 5):
The phrase “while successively translating” [in] claim 1,
line 7 is indefinite as to its meaning. The phrase is self-
contradictory since “while” and “successively” are mutually
exclusive terms. If a claim contradicts itself [it] necessarily
fails to particularly point out and distinctly set forth what is
being claimed. One cannot reasonably understand how one
could perform a step while successively doing something else.

The Appellants’ Specification discloses (Spec. 4:21-24):
When drive motor 38 is energized, the spindle 36 and the
bait 34 rotate in unison and ascend within the chamber 33 at
predetermined speeds. The speed at which the bait 34 ascends
is critical to the temperature profile and shape of the porous
preform 40 formed on the bait 34. A typical bait speed is 0.3 to
0.5 mm/min.

Thus, the Specification indicates that as the porous preform (40) grows, the
bait (34) ascends at a particular rate. Although the Appellants’ claim phrase
“while successively translating the deposition surface away from the burner”
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does not use the Specification term “ascend”, the successively translating
appears to refer to that ascending such that one of ordinary skill in the art
would have considered that phrase to be equivalent to “while causing the
deposition surface to ascend away from the burner”. Hence, “successively
translating” circumscribes the Appellants’ disclosed ascending with a
reasonable degree of precision and particularity.2
Rejection under 35 U.S.C. § 112, first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008), quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991).
The Examiner argues (Ans. 4):
The limitation lacks implicit support because “while” and
“successively” are mutually exclusive conditions: ‘while’
means simultaneously, and ‘successively’ means following
each other. It is undisputed that they are mutually exclusive.
The depositing occurs “while” translating, however it
cannot also occur “successively” with the translating. Also, the
translating cannot be successive with itself – nothing can be
successive with itself.

2 Although by “successively” the Appellants appear to mean
“progressively”, the term “successively”, when interpreted in view of the
Specification, does not cause the claims to fail to circumscribe a particular
area with a reasonable degree of precision and particularity.
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The Examiner’s argument does not explain why one of ordinary skill
in the art would not have considered the Appellants’ Specification to convey
with reasonable clarity to one of ordinary skill in the art that the Appellants
were in possession of a method wherein a deposition surface is successively
translated away from a burner. As argued by the Appellants (Br. 17-18),
that claim language appears to refer to the disclosed ascending of the
bait (34) at a particular speed (Spec. 4:21-24).
Conclusion
The Appellants have indicated reversible error in the Examiner’s
determination that “while successively translating the deposition surface” is
indefinite and does not have written descriptive support in the Appellants’
Specification.
DECISION/ORDER
The rejections of claims 1, 2, 4-9, 13, 15, 20, 21, and 24 under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention, and under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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