Ex parte DULL

Board of Patent Appeals and Interferences

May 10, 2001

08465077 (B.P.A.I. May. 10, 2001)

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written for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DENNIS L. DULL
__________
Appeal No. 1998-1224
Application No. 08/465,077
__________
ON BRIEF
__________
Before CAROFF, KIMLIN, and PAK, Administrative Patent
Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This decision on appeal relates to the final
rejection of claims 25-27. Claims 3-18 and 24, all the
other pending claims in appellant’s application, have
been indicated by the examiner as being allowable.
The appealed claims relate to an etching method
involving the use of an etching solution containing
cupric chloride and NaCl; the claims requiring that the
Appeal No. 1998-1224
Application No. 08/465,077
2
etch rate of the solution decrease “to less than 0.01
mil/min when the desired etch is complete.” We shall
refer to this rate as the terminal etch rate of the
solution. Claim 25, the sole independent claim on
appeal, is representative:
25. A method for etching a curved copper film to
produce a patterned film with fine-line elements
etched to a tolerance of about + 0.25 mil on all
lines, the patterned film being a frequency
selective surface suitable for use in a radome,
comprising the steps of:
(a) patterning a photolithographic mask
deposited on the copper film to expose line widths
approximately 1 mil narrower than the desired final
width; and
(b) etching the exposed copper to create
fine- line elements in the film to a tolerance of
about + 0.25 mil on all lines by immersing the
masked film in a quiescent, dilute cupric chloride
etching solution having at least about 125 gm/1NaC1
sufficient to eliminate any migration or
electrolytic effects, the etch rate of the solution
declining to less than 0.01 mil/min when the desired
etch is complete.
All of the claims on appeal stand rejected under the
first paragraph of 35 U.S.C. § 112 for lack of an
adequate written description in the specification of
appellant’s invention as claimed.
After having considered the entire record in light
Appeal No. 1998-1224
Application No. 08/465,077
3
of the respective positions of the examiner and the
appellant, we agree with appellant that the examiner has
failed to establish noncompliance with any of the
provisions of 35 U.S.C. § 112, first paragraph.
Accordingly, we cannot sustain the rejection at issue.
The rejection is framed in language which appears to
focus upon the written description requirement of 35
U.S.C. § 112. On the other hand, appellant interprets
the rejection as translating into an issue of enablement.
In either case, it is the examiner who has the burden of
persuasion to establish noncompliance with the provisions
of 35 U.S.C. § 112. In this regard, see In re Edwards,
568 F.2d 1349, 1354, 196 USPQ 465, 469 (CCPA 1978) as to
the written description requirement; and In re Marzocchi,
439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971) as
to the enablement requirement. We find that the examiner
has failed to provide persuasive reasons to support the
rejection at issue.
The examiner merely asserts that there is no written
disclosure of the terminal etch rate, as claimed, in a
generic sense, and that that particular terminal etch
Appeal No. 1998-1224
Application No. 08/465,077
4
rate is associated in appellant’s specification only with
one particular etchant solution, viz., the preferred
etchant composition. However, this is not dispositive as
regards compliance with the provisions of 35 U.S.C. §
112.
First of all, with regard to the written description
requirement, we fail to see how the specification can be
found deficient inasmuch as all the relevant claim
limitations apparently are described verbatim in the
specification.
As for enablement, the claims appear to be limited
to use of those etchant solutions which are capable of
exhibiting the recited terminal etch rate, and there is
no dispute that appellant has disclosed at least one
particular etchant solution that satisfies this criteria,
i.e., the preferred etchant composition. In other words,
we read the claims as being limited to using only etchant
solutions which are conducive to reaching the recited
terminal etch rate, viz., the claims are limited to
operable embodiments.
In this regard, it must be borne in mind that in
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Application No. 08/465,077
5
general it is not the function of the claims to
specifically exclude possible inoperative embodiments.
In re Dinh-Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48
(CCPA 1974).
See also In re Kamal, 398 F.2d 867, 872, 158 USPQ 320,
324 (CCPA 1968); In re Anderson, 471 F.2d 1237, 1242, 176
USPQ 331, 334-35 (CCPA 1973) and In re Sarett, 327 F.2d
1005, 1019, 140 USPQ 474, 486 (CCPA 1964).
The decision of the examiner is reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
EDWARD C. KIMLIN ) APPEALS
AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
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Application No. 08/465,077
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MLC:hh
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JOHN C. HAMMAR
THE BOEING COMPANY
P.O. Box 3707 M/S S 13 08
Seattle, WA 98124-2499