Ex Parte Morizane

Board of Patent Appeals and Interferences

Oct 30, 2001

08813953 (B.P.A.I. Oct. 30, 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written for publication and is not binding precedent of the Board.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. 37

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TOSHINORI MORIZANE
_____________
Appeal No. 1999-0787
Application 08/813,953
______________
HEARD: October 11, 2001
_______________
Before PAK, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL

This is an appeal from the examiner’s final rejection of
claims 1-3 and 7, which are all of the claims remaining in the
application.
THE INVENTION
The appellant’s claimed invention is directed toward a
Appeal No. 1999-0787
Application No. 08/813,953
1. A method for producing a metal oxide film, which
comprises: subjecting a hydrolyzable organic metal
compound to hydrolysis in a mixed solution consisting
of water and organic solvent, containing halogen ions
and boron ions followed by dehydration and condensation
to obtain a reaction product; thereafter, applying the
reaction product onto the surface of a base material;
and maintaining said reaction product at a temperature
of 200ºC or below to obtain said metal oxide film.
REFERENCE RELIED UPON BY THE EXAMINER
Kondo et al. (Kondo) 5,160,358 Nov. 3, 1992
THE REJECTIONS
Claims 1-3 and 7 stand rejected as follows: under 35 U.S.C.
§ 101, as being inoperable, and under 35 U.S.C. § 112, enablement
and written description requirements.
OPINION
We reverse the aforementioned rejections.
Rejections under 35 U.S.C. § 101 and
35 U.S.C. § 112, enablement requirement
Before utility, which is a question of fact, is determined,
the claims must be interpreted as a matter of law to define the
invention to be tested for utility. See Raytheon Co. v. Roper
Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed. Cir. 1983),
Appeal No. 1999-0787
Application No. 08/813,953
The claimed invention is a method for making a metal oxide
film by subjecting a hydrolyzable organic metal compound to
hydrolysis in a recited solution followed by dehydration and
condensation to obtain a reaction product, and then applying the
reaction product to a surface and maintaining the reaction
product at a temperature of 200ºC or below to form the metal
oxide film. 1
The examiner argues that the appellant’s claims, when read
in light of the specification, are limited to a method for making
a transparent, nonporous metal oxide glass film by vitrifying a
reaction product at 200ºC or below (answer, pages 3-4). It
reasonably appears that “metal oxide film” in the appellant’s
claims and “metal oxide glass film” in the appellant’s
specification have the same meaning. Each term refers to the
film formed by the appellant’s method. Also, “maintaining ... at
a temperature” reasonably appears to be the same as “vitrifying
... at a temperature”, both meaning holding the reaction product
at a particular temperature to produce the metal oxide film.
Appeal No. 1999-0787
Application No. 08/813,953
Although the appellant’s specification (page 19) states that the
film is transparent and nonporous, the specification does not
indicate that the claimed method is limited to one which produces
a metal oxide film having these characteristics.
Regarding utility, a predecessor of our appellate reviewing
court stated in In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288,
297 (CCPA 1974):
[A] specification which contains a disclosure of
utility which corresponds in scope to the subject
matter sought to be patented must be taken as
sufficient to satisfy the utility requirement of § 101
for the entire claimed subject matter unless there is
reason for one skilled in the art to question the
objective truth of the statement of utility or its
scope.
The examiner argues that the appellant’s claimed method
cannot work because glass cannot be vitrified at temperatures as
low as 200ºC or below (answer, page 4). In support of this2
argument the examiner relies upon Kondo, which discloses making a
porous silica gel plate by a sol-gel method and then calcining
the plate at a temperature of as least 900ºC to render it
Appeal No. 1999-0787
Application No. 08/813,953
nonporous and suitable for use as a base for a planar optical
waveguide (col. 3, line 67 - col. 4, line 11; col. 8, lines 49-
59).
The appellant, however, distinguishes the claimed method
over the sol-gel method which, the appellant states, requires
heat treatment at 1,100ºC or higher (specification, page 2). The
appellant states that the appellant’s method permits a metal
oxide glass film to be produced at 200ºC or below (specification,
page 3), and provides five examples wherein a metal oxide film is
produced using heat treatment of the reaction product at
temperatures within this range (specification, pages 11-16). 3
The examiner has provided no evidence that if the appellant’s
claimed method rather than Kondo’s sol-gel method is used, a
metal oxide film cannot be formed at 200ºC or below.
Consequently, we are not persuaded by the examiner’s argument
that the appellant’s claimed method lacks utility.
In the rejection under 35 U.S.C. § 112, first paragraph,
enable requirement, the examiner relies upon the same rationale
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Application No. 08/813,953
used in the rejection under 35 U.S.C. § 101 (answer, page 5). 4
We are not convinced by the examiner’s argument for the reasons
set forth above regarding that rejection.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of lack of
utility or of nonenablement. Accordingly, we reverse the
rejections under 35 U.S.C. §§ 101 and 112, first paragraph,
enablement requirement.
Rejection under 35 U.S.C. § 112,
written description requirement
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707
F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978);
Appeal No. 1999-0787
Application No. 08/813,953
In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
The examiner argues that the specification does not provide
adequate written descriptive support for the term “maintaining”
in claim 1 (answer, page 6).
As stated above regarding the rejection under 35 U.S.C.
§ 101, the maintaining at 200ºC or below in claim 1 reasonably
appears to be the vitrifying at 200ºC or below described in the
specification (page 3). This maintaining or vitrifying
necessarily must be maintained for the time period required for
the metal oxide film to be produced. Moreover, the specification
discloses examples wherein the reaction product is heated
at 120ºC for 30 minutes (page 12), 180-200ºC for 20 minutes
(page 12), and 120-150ºC for 20-30 minutes (page 14) to produce
metal oxide films. Hence, the specification would have conveyed
with reasonable clarity to those skilled in the art that the
inventor was in possession of a method in which the reaction
product is maintained at 200ºC or below to obtain a metal oxide
film. Accordingly, we reverse the rejection under 35 U.S.C.
Appeal No. 1999-0787
Application No. 08/813,953
DECISION
The rejections of claims 1-3 and 7 under 35 U.S.C. § 101 and
under 35 U.S.C. § 112, enablement and written description
requirements, are reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
tjo/vsh
Appeal No. 1999-0787
Application No. 08/813,953
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