Ex parte Mayer

Board of Patent Appeals and Interferences

Nov 30, 2000

08580823 (B.P.A.I. Nov. 30, 2000)

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publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BERND MAYER
_____________
Appeal No. 1998-2151
Application No. 08/580,823
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON, and JERRY SMITH, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2
through 11.
The disclosed invention relates to a process for
detecting small irregularities on a conducting surface, and to
a process for high-resolution measurement of impedance and
non-homogeneities in a surface.
Appeal No. 1998-2151
Application No. 08/580,823
2
Claims 9 and 11 are illustrative of the claimed invention
and they are appended to this decision.
Claims 2 through 11 stand rejected under the first
paragraph of 35 U.S.C. § 112 for lack of enablement. The
examiner’s rejection (Answer, pages 3 and 4) is as follows:
There is one and only one approach to extracting
the surface (three-dimensional) distribution of
values as described in the specification: two
(surface) integral equations are setup based on
multimode readings of the cavity Q. Any
measurements carried out are to be supported by the
only disclosed approach.
Appellant’s arguments that any non-disclosed feature
is conventional would imply that no specification is
really needed. The examiner’s position in this
regard is that any claim has to be supported by the
particular approach being disclosed in detail in the
specification, especially when the inventor himself
so states (page 3 in the specification).
The entire purpose of the measurements is
“solving the first system and the second system to
find the surface resistance and the surface
reactance distribution” (claim 11 step “c”). The
only reading recited or described is that of the
“unloaded quality factor Qo”. Note that there are
no details in the disclosure of how to “set up” the
given equations. There are no details of how to
read the tangential magnetic field (which is needed
for the set up). There are no details of how to set
up the second equation, which requires non-
dissipative readings (note that Qo does not show
up). There are no details of how to solve the
particular types of equations described.
Appeal No. 1998-2151
Application No. 08/580,823
3
Appeal No. 1998-2151
Application No. 08/580,823
Even if the burden had shifted to appellant, we find1
that pages 197 through 199 of Appendix D to the brief provide
an adequate explanation of Q.
4
Reference is made to the briefs and the answers for the
respective positions of the appellant and the examiner.
OPINION
The lack of enablement rejection is reversed as to claims
9 and 10, and is sustained as to claims 2 through 8 and 11.
As indicated supra, the examiner’s reasoning for finding
lack of enablement pertains to the more narrow claims 2
through 8 and 11, and not to the broad claims 9 and 10. The
Court clearly stated in In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), the burden shifts to appellant to
prove enablement only after the examiner has successfully1
mounted a challenge to the adequacy of the disclosure for the
claimed invention. For this reason, the rejection of claims 9
and 10 is reversed because the examiner has not provided us
with any reasoning for finding lack of enablement as to claims
9 and 10.
Turning to the rejection of claims 2 through 8 and 11, we
are of the opinion that the examiner has mounted a successful
Appeal No. 1998-2151
Application No. 08/580,823
5
challenge to the adequacy of the disclosure for these claims.
We agree with the examiner that in the disclosure “there are
no details . . . how to ‘set up’ the given equations,”
“[t]here are no details of how to read the tangential magnetic
field (which is needed for the set up),” “[t]here are no
details of how to set
up the second equation, which requires non-dissipative
readings
. . . , ” and “[t]here are no details of how to solve the
particular types of equations described.” While the evidence
submitted by appellants in the appendices to the brief offers
interesting background reading for the claimed invention, it
does not adequately address the questions raised by the
examiner concerning the lack of disclosure for the
specifically claimed equations. Thus, the rejection of claims
2 through 8 and 11 is sustained because to the skilled artisan
the scope of these narrow claims does not bear a reasonable
correlation to the scope of enablement provided by the
specification. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997).
Appeal No. 1998-2151
Application No. 08/580,823
6
DECISION
The decision of the examiner rejecting claims 2 through
11 under the first paragraph of 35 U.S.C. § 112 is affirmed as
to claims 2 through 8 and 11, and is reversed as to claims 9
and 10. Accordingly, the decision of the examiner is
affirmed-in-part.
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-IN-PART
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
KWH:hh
Appeal No. 1998-2151
Application No. 08/580,823
7
BROWDY & NEIMARK
419 SEVENTH STREET, N.W.
WASHINGTON, D.C. 20004
Appeal No. 1998-2151
Application No. 08/580,823
A1
APPENDIX
9. A process for detecting small irregularities on a
conducting surface, comprising:
providing a first electrical cavity resonator having a
first open end and at least one additional electrical cavity
resonator having a second open end, the first open end
and the second open end having different dimensions;
exciting the resonators in the microwave region;
moving the resonators over the surface;
finding integrated surface impedance measurements over
the first open end and the second open end by variations in
Q-factors of the resonators in moving over the surface;
Fourier-transforming the impedance measurements; and
determining locations of the small irregularities by
correlating respective Fourier transforms;
whereby the locations are determined when the
irregularities are smaller than any resonator open end.
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A2
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A3
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A4