Ex Parte BRUN et al

Board of Patent Appeals and Interferences

Dec 8, 2003

09068999 (B.P.A.I. Dec. 8, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEAN BRUN, FABRICE VINCENT,
JEAN-SEBASTIEN DANEL, and HENRI BLANC
____________
Appeal No. 2003-1263
Application No. 09/068,999
____________
HEARD: November 18, 2003
____________
Before HAIRSTON, BARRETT, and GROSS, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2, 4, 5,
15 and 21.
The disclosed invention relates to a substrate structure in
which at least one joint of insulating material provides the only
mechanical link between first and second parts formed in a wafer
material.
Claim 21 is the only independent claim on appeal, and it reads
as follows:
Appeal No. 2003-1263
Application No. 09/068,999
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21. A substrate structure comprising:
a first part formed on a wafer of material;
at least one second part formed on said wafer in substantially
the same plane as said first part and having a same thickness as
said first part, said first and second parts having at least one
set of opposing edges separated by a spacing; and
at least one joint of insulating material arranged in the
spacing and mechanically joining at least a portion of said first
and second parts and extending substantially over the entire
thickness of said parts,
wherein said first and second parts are electrically insulated
from one another, and
said joint of insulating material provides the only mechanical
link between said first and second parts.
The reference relied on by the examiner is:
Nishizawa et al. (Nishizawa) 5,607,875 Mar. 4, 1997
Claims 2, 4, 5, 15 and 21 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Nishizawa.
Reference is made to the final rejection (paper number 20),
the briefs (paper numbers 22 and 24) and the answer (paper number
23) for the respective positions of the appellants and the
examiner.
Appeal No. 2003-1263
Application No. 09/068,999
3
OPINION
We have carefully considered the entire record before us, and
we will reverse the anticipation rejection of claims 2, 4, 5, 15
and 21. On the other hand, a new ground of rejection is entered
infra under 37 CFR § 1.196(b) because of the indefiniteness of
claims 2, 4, 5, 15 and 21.
Anticipation is only established when a single prior art
reference discloses every limitation of the claimed invention,
either explicitly or inherently. Glaxo Inc. v. Novopharm Ltd., 52
F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir.), cert. denied,
516 U.S. 3378 (1995). The examiner is of the opinion (final
rejection, page 2) that Nishizawa discloses all of the limitations
of claims 2, 4, 5, 15 and 21. Appellants argue (brief, pages 6
through 8) that the joint in the spacing 20 between the first part
14 and the second part 14 formed in the substrate 13 in Nishizawa
(Figure 1d) is comprised of an insulator 30, a semiconductor 40 and
an insulator 30 as opposed to “at least one joint of insulating
material” as claimed, and that the presence of the underlying
layers of insulation material 12 and semiconductor material 11
means that the noted joint in Nishizawa does not provide “the only
mechanical link between said first and second parts” as claimed.
In response, the examiner acknowledges (answer, pages 3 through 5)
Appeal No. 2003-1263
Application No. 09/068,999
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the presence of the semiconductor 40 in the joint, but does not
come to grips with the appellants’ argument that it is not an
insulator. The examiner acknowledges (answer, pages 4 and 5)
appellants’ argument concerning the presence of other mechanical
links in Nishizawa, but fails to address this argument. In the
absence of a response by the examiner, and the lack of any evidence
in the record that counters appellants’ arguments, we will reverse
the anticipation rejection of claims 2, 4, 5, 15 and 21.
Pursuant to the provisions of 37 CFR § 1.196(b), the following
new rejection of claims 2, 4, 5, 15 and 21 is hereby entered.
Claims 2, 4, 5, 15 and 21 are rejected under the second
paragraph of 35 U.S.C. § 112 for indefiniteness. The use of the
preposition “on” in the claimed phrases “formed on a wafer of
material” and “formed on said wafer” implies that the first and
second parts are formed on the surface of the wafer material as
opposed to in or within the wafer material as described in the
disclosure. Thus, the claims on appeal are indefinite because they
are misdescriptive of the disclosed and claimed invention.
Appeal No. 2003-1263
Application No. 09/068,999
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DECISION
The decision of the examiner rejecting claims 2, 4, 5, 15 and
21 under 35 U.S.C. § 102(e) is reversed.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 196(b) provides that a new ground of
rejection shall not be considered final for purposes of judicial
review.
37 CFR § 1.196(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection
to avoid termination of proceedings (37 CFR § 1.197 (c)) as to the
rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by
the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2003-1263
Application No. 09/068,999
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136.(a).
REVERSED
37 CFR § 1.196(b)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
KWH/lp
Appeal No. 2003-1263
Application No. 09/068,999
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OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
Letty
JUDGE HAIRSTON
APPEAL NO. 2003-1263
APPLICATION NO. 09/068,999
APJ HAIRSTON
APJ GROSS
APJ BARRETT
DECISION: REVERSED; 37 CFR (196 b)
PREPARED: Jan 19, 2005
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