Ex Parte SHUM et al

Board of Patent Appeals and Interferences

Oct 17, 2002

09259890 (B.P.A.I. Oct. 17, 2002)

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for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VICTOR WING-CHUN SHUM
and RANDALL GEORGE SIMMONS
____________
Appeal No. 2001-1760
Application No. 09/259,890
____________
ON BRIEF
____________
Before PAK, DELMENDO, and NAGUMO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the examiner’s final rejection of
claims 1 through 13, which are all the claims pending in the above-identified application.
Appeal No. 2001-1760
Application No. 09/259,890
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Claim 1 is representative of the subject matter on appeal and reads as follows:
1. A method for manufacturing an integrated lead suspension for a hard disk drive, comprising:
(a) providing a metal support layer, a pair of dielectric layers, and a pair of conductor
layers;
(b) forming a void in at least one of the dielectric layers; then
(c) laminating each of the layers together to form a laminate such that the support layer
and the conductor layers are separated from one another by at least one of the
dielectric layers;
(d) etching at least one of the conductor layers of the laminate of step (c) to form traces;
and then
(e) deforming at least one of the traces through said void toward and into contact with
one of the support layer and the other of the conductor layers to form a shunt
therebetween.
Claims 1 through 13 stand rejected under 35 U.S.C. § 112, first paragraph, as lacking an
enabling disclosure for the subject matter presently claimed.
We reverse.
Under 35 U.S.C. § 112, first paragraph, the examiner has the initial “burden of giving
reasons, supported by the record as a whole, why the specification is not enabling... Showing that
the disclosure entails undue experimentation is part of the PTO’s initial burden...” In re Angstadt,
537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). In determining whether any given disclosure
would require undue experimentation, the examiner must consider not just the breadth of the claims,
but also the quantity of experimentation necessary, the amount of direction or guidance presented,
the presence or absence of working examples, the nature of the invention, the state of the prior art,
Appeal No. 2001-1760
Application No. 09/259,890
1 To the extent that the examiner’s allegations regarding unpredictability and criticality of
the claimed invention relate to “undue” experimentation (Answer, pages 3, 6 and 7), we do not
find them persuasive since they are not supported by any objective evidence.
3
the relative skill of those in the art and the predictability or unpredictability of the art. In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), citing Ex parte Forman, 230 USPQ
546, 547 (Bd. Pat. App. & Int. 1986).
Here, the examiner has not demonstrated that one of ordinary skill in the art would not be
able to practice the claimed invention, without undue experimentation, based on the guidance
provided in the specification and the information known in the art (the state of the art). See also In
re Stephens, 529 F.2d 1343, 1345,188 USPQ 659, 661 (CCPA 1976)(the test of enablement is
whether one skilled in the art could make or use the claimed invention from the disclosure coupled
with information known in the art without undue experimentation). The examiner not only ignores
the state of the art in his analysis, but also does not explain why undue experimentation would be
required.1 See the Answer in its entirety. Moreover, the examiner’s focus on the disclosure of a
limited number of specific embodiments in the specification does not render claims to a broader
invention non-enabling. The specification is “not required to disclose every species [every
embodiment] encompassed by their claims...” Angstadt, 537 F.2d at 503, 190 USPQ at 218; see
also In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981)(“An inventor need not,
however, explain every detail since he is speaking to those skilled in the art. What is conventional
knowledge will be read into the disclosure.”) Absent a showing of undue experimentation, the
Appeal No. 2001-1760
Application No. 09/259,890
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claims drawn to a broader invention than the specific embodiments described in the specification
would not violate the enablement requirement of the first paragraph of 35 U.S.C. 112. See, e.g., In
re Dinh-Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974).
In view of the foregoing, the examiner, on this record, has not established a prima facie case
of unpatentability under 35 U.S.C. § 112, first paragraph. Therefore, we reverse the examiner’s
decision rejecting claims 1 through 13 under 35 U.S.C. § 112, first paragraph.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MARK NAGUMO )
Administrative Patent Judge )
CKP/lp
FELSMAN BRADLEY VADEN GUNTER & DILLON
LAKEWOOD ON THE PARK #350
7600 B NORTH CAPITAL OF TEXAS HIGHWAY
Appeal No. 2001-1760
Application No. 09/259,890
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AUSTIN, TX 787331