Ex Parte Lutz et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10679115 (B.P.A.I. Sep. 28, 2010)

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.
10/679,115 10/03/2003 Markus Lutz 11403/86 2230
26646 7590 09/28/2010
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
SY, MARIANO ONG
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARKUS LUTZ and AARON PARTRIDGE
____________________

Appeal 2009-006937
Application 10/679,115
Technology Center 3600
____________________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006937
Application 10/679,115

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STATEMENT OF THE CASE
Markus Lutz and Aaron Partridge (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 27-45. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to resonators which have
“increased immunity to process-tolerance-induced variations in geometry.”
Spec. 3, ll. 2-3. Claim 27, reproduced below, is representative of the subject
matter on appeal.
27. A resonator comprising:
a spring-mass mechanism having an effective mechanical
stiffness, an effective mechanical mass, and a geometry that
defines the effective mechanical stiffness and mass;
wherein the geometry is defined by application of a
fabrication process to a constituent material, and
wherein the geometry is such that one or more variations
of the fabrication process to the constituent material results in
little change to a ratio of the effective mechanical stiffness to
the effective mechanical mass.

THE REJECTIONS
1. Claims 27-45 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention;
and
2. Claims 27-45 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Adams (US 5,914,553, issued Jun. 22, 1999).
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OPINION
All of the claims on appeal, claims 27-45, are the subject of both of
the rejections before us. For both rejections, Appellants argue the claims as
a group. App. Br. 4, 6. We select claim 27 as the representative claim, and
claims 28-45 stand or fall with claim 27. 37 C.F.R. § 41.37(c)(1)(vii).

The rejection of claims 27-45 as indefinite
The primary purpose of the definiteness requirement of § 112, second
paragraph, is to provide notice to the public of the metes and bounds of the
claimed invention. See In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).
The test for definiteness 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). During prosecution, the
threshold standard of ambiguity for indefiniteness is lower than it might be
during litigation of an issued patent. Ex parte Miyazaki, 89 USPQ2d 1207,
1212 (BPAI 2008).
Claim 27 recites a spring-mass mechanism having a geometry
“wherein the geometry is such that one or more variations of the fabrication
process to the constituent material results in little change to a ratio of the
effective mechanical stiffness to the effective mechanical mass.” Appellants
have, in effect, defined the claimed geometry in terms of a desired result.
The Examiner concluded that the claims are indefinite because it is not clear
as to what geometry is required. Ans. 3.
Appellants argue that the Specification discloses certain exemplary
embodiments and therefore the Specification fully supports the claims and
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enables one of ordinary skill to practice the claimed invention without undue
experimentation. App. Br. 5-6. This argument is not persuasive. The
Examiner rejected the claims as indefinite under the second paragraph of
§ 112, not for lack of enablement under the first paragraph. Appellants
do not argue, and we do not conclude, that the Specification’s disclosure
provides enough guidance to the person of ordinary skill in the art such that
the boundaries of the world of encompassed embodiments are clear.
To the extent that Appellants address the proper standard for
definiteness under § 112, second paragraph, the arguments consist of little
more than a recitation of the claim language and the conclusory assertion
that the claims are clear because the standard is met. See App. Br. 4-5, 6
(citing Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870 (Fed. Cir. 1993)).
Such assertions do not point out error in the Examiner’s rejection.
We agree with the Examiner’s conclusion that claim 27 is indefinite.
Appellants have not claimed their invention in such a way that one of
ordinary skill would understand which geometries achieve the desired result
recited in the claim. Thus, one of ordinary skill cannot discern which
geometries fall within or without the metes and bounds of the claim. We
affirm the rejection of claim 27, and of claims 28-45 which fall therewith, as
indefinite under § 112, second paragraph.

The rejection of claims 27-45 as anticipated by Adams
The Examiner found that Adams’ figures 8 and 9 disclose Appellants’
claimed resonator. Ans. 3. Appellants argue: “figures 8 and 9 of the
‘Adams’ reference do not have a geometry like that of claim 27 since
its geometry is not such that variations of the fabrication process of the
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mechanical structures shown in figures 8 and 9 of the ‘Adams’ reference
results in little change in the ratio of stiffness to mass.” App. Br. 7.
However, Appellants do not explain how Adams’ disclosed geometries are
different than the claimed geometry or why Adams’ geometries are not such
that a process fabrication variation will result in a little ratio change. In
other words, Appellants have not articulated why the Examiner’s finding is
incorrect.
Appellants note that Adams recognizes that, in fabricating resonators,
processing variations can significantly impede reproducibility and that
Adams discloses an electrostatic actuator to tune the resonant frequency to
compensate for such variation. App. Br. 4 (citing Adams, col. 1, ll. 49-62;
col. 5, ll. 57-62; col. 8, ll. 51-56). Thus, argue Appellants, Adams does not
address the process variation problem by the use of resonator geometry, but
rather by tuning. App. Br. 7. However, as the Examiner points out (Ans. 4),
claim 27 is an apparatus claim. A reference that discloses the claimed
apparatus anticipates regardless as to how a problem was addressed in the
prior art reference. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
(“A reference … may be directed to an entirely different problem from
the one addressed by the inventor, yet the reference will still anticipate if
it explicitly or inherently discloses every limitation recited in the claims.”)
Additionally, Adams’ disclosure that the design allows for tuning to
account for some process variations is not at odds with Appellants’
claimed invention which is still susceptible to at least some (or, as recited
in the claim, a “little”) change due to processing variations. See Spec. 10
(“By designing and fabricating a spring mechanism in accordance with the
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present invention, resonators having much greater accuracy … may be
produced without extensive trimming.” (emphasis added)).
Appellants appear to argue that Adams, to anticipate, must disclose
the fabrication process used to create the resonator geometry and must
disclose that variations in that process will result in little change to the
stiffness-mass ratio. See Reply Br. 6. While the claim does recite that “the
geometry is defined by application of a fabrication process to a constituent
material,” the claim covers a spring-mass mechanism having such a
geometry, not the fabrication process itself. Thus, as the Examiner implies
(Ans. 4-5), anticipation is determined based upon a comparison of Adams’
spring-mass mechanism to the claimed mechanism. Cf. In re Thorpe, 777
F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim
is unpatentable even though the prior art product was made by a different
process.”)
The embodiments shown in Adams’ figures 8 and 9 are similar to
some of Appellants’ embodiments, such as the one shown in Appellants’
Figure 3B depicting a mass 19 having indentions 17. See Spec. 15, ll. 11-15;
see also Spec. 17, ll. 3-14 and Fig. 4A (voids in Appellants’ beam, like those
shown in Adams’ fig. 9); Spec. 17, ll. 15-19 and Fig. 4B (indentions in beam
to maintain “little change” in the ratio.) As such, it is reasonable to find that
Adams discloses a geometry for which a variation of the fabrication process
results in little change to the stiffness-mass ratio. Appellants have not
persuaded us that the Examiner erred in finding that Adams discloses spring-
mass mechanisms with the geometry of Appellants’ claim 27. We affirm the
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rejection of claim 27 and claims 28-45, which fall with claim 27, as
anticipated by Adams.
DECISION
The decision of the Examiner to reject claims 27-45 is affirmed.
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) (2007).
AFFIRMED

JRG

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