Ex Parte Surh et al

Board of Patent Appeals and Interferences

May 15, 2007

10262510 (B.P.A.I. May. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL P. SURH,
WILLIAM D. WILSON,
TROY W. BARBEE, JR., and
STEPHEN M. LANE
____________

Appeal 2007-0170
Application 10/262,510
Technology Center 1700
____________

Decided: May 15, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
THOMAS A. WALTZ, 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 refusal to allow claims 1, 3 through 5, 7, and 11, all of the claims
pending in the above-identified application. We have jurisdiction pursuant
to 35 U.S.C. § 6.
Appeal 2007-0170
Application 10/262,510

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to “sensors using nano-
laminates,” such as “electrophoretic/electrochemical devices with
nanometer-scale metallic components (Specification 1, paragraphs 0002 and
0004).”
Further details of the appealed subject matter are recited in illustrative
claims 1, 3, and 11, which are reproduced below:
1. An apparatus, comprising:

a first nano-laminate component comprising a first plurality of
alternating layers of metal and insulator material and a first exposed
cross-section of metal and insulator material of said first nano-
laminate component, wherein no portion of any layer of insulator
material of said first plurality of alternating layers contacts any other
layer of insulator material of said first plurality of alternating layers;

a second nano-laminate component comprising a second
plurality of alternating layers of metal and insulator material and a
second exposed cross-section of metal and insulator material of said
second nano-laminate component, wherein no portion of any layer of
insulator material of said second plurality of alternating layers
contacts any other layer of insulator material of said second plurality
of alternating layers;

a first piece of insulating material that connects in a first
spaced relationship a first side of said first nano-laminate component
to a first side of said second nano-laminate component; and

a second piece of insulating material that connects in a second
spaced relationship a second side of first nano-laminate component
with a second side of said second nano-laminate component;

wherein said first exposed cross-section and said second
exposed cross-section face each other, wherein said first piece of
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Application 10/262,510

insulating material and said second piece of insulating material face
each other, wherein said first exposed cross-section and said second
exposed cross-section and said first piece of insulating material and
said second piece of insulating material form a closed fluid channel
having four sides and two openings.

3. The apparatus of claim 1, wherein said first spaced
relationship and said second spaced relationship both comprise a
distance of about d, and wherein said distance d defines a width of
said fluid channel.

11. The apparatus of claim 3, wherein said d comprises a
distance of at least 1 µm.

II. PRIOR ART
The Examiner has relied upon the following sole reference as
evidence of unpatentability:
Pisharody US 2004/0146863 A1 Jul. 29, 2004

III. REJECTIONS
The Examiner has rejected the claims on appeal as follows:
1) Claim 11 under 35 U.S.C. § 112, first paragraph, as containing
subject matter not described in the application disclosure as originally filed;
2) Claims 1, 3, 4, and 7 under 35 U.S.C. § 102(e) as anticipated by
the disclosure of Pisharody; and
3) Claims 5 and 11 under 35 U.S.C. § 103 as unpatentable over the
disclosure of Pisharody.
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IV. DISCUSSION

35 U.S.C. § 112, FIRST PARAGRAPH
In rejecting claim 11 under 35 U.S.C. § 112, first paragraph, the
Examiner takes the position that the newly added limitation “d comprises a
distance of at least 1 μm” in claim 11 does not have written descriptive
support in the application disclosure as originally filed (Answer 3). On the
other hand, the Appellants contend that such a limitation is supported by the
phrase “a distance in the range of μ m to millimeters” recited in original
claim 11 (Br. 3-4).
As our reviewing court in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991) stated:
35 U.S.C. [§] 112, first paragraph, requires a “written
description of the invention” which is separate and distinct from
the enablement requirement. The purpose of the “written
description” requirement is broader than to merely explain how
to “make and use”; the applicant must also convey with
reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention. The
invention is, for purposes of the “written description” inquiry,
whatever is now claimed.

. . . drawings alone may be sufficient to provide the “written
description of the invention” required by § 112, first paragraph.

Any claims in the application as originally filed may also provide the
“written description of the invention” required by § 112, first paragraph.
In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397 (CCPA 1973).
The dispositive question is, therefore, whether the newly added
limitation in question has written descriptive support in the application
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Application 10/262,510

disclosure, as originally filed, within the meaning of 35 U.S.C. § 112, first
paragraph. On this record, we answer this question in the negative.
As indicated supra, the Appellants rely on the phrase “a distance in
the range of μ m to millimeters” recited in original claim 11 as written
descriptive support for the newly added limitation “. . . a distance of at least
1 μm ” in present claim 11. However, the newly added limitation clearly
embraces embodiments outside of the distance described in the application
disclosure as originally filed. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 263, 191
USPQ 90, 97 (CCPA 1976). Specifically, as in Wertheim, 541 F.2d at 263-
64, 191 USPQ at 97, the phrase “. . . at least 1 μm” encompasses a distance
greater than millimeters which are the upper limit of the distance originally
recited and described in the application disclosure. The Appellants
nevertheless proffer no evidence that the upper limit of the distance
originally described (i.e., millimeters) is inherent in “. . . a distance of at
least 1 μm” as that limitation appears in present claim 11 (Br. 3-4).
Wertheim, supra.
Thus, based on this record, we concur with the Examiner’s finding
that claim 11, as written, lacks written descriptive support within the
meaning of 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 102(e):
In rejecting claims 1, 3, 4, and 7 under 35 U.S.C. § 102(e), the
Examiner finds that Pisharody

discloses an apparatus (Figure 6C; Paragraph 0081) comprising:
two nanolaminate components comprising alternating metal and
insulator layers (Paragraphs 0058, 0073-0075, and 0080) facing
each other across a channel, as claimed, with pieces of
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Application 10/262,510

insulating material at either side of each nanolaminate
component, connecting the two nanolaminate components in a
spaced relationship. (Figure 6C)
(Answer 4)

The Appellants do not dispute the Examiner’s finding that Pisharody teaches
an apparatus comprising nano-scale laminates components arranged in the
claimed manner (Br. 4-6). The Appellants only argue that Pisharody does
not teach “nanolaminate materials as recited in claim 1 of the present
invention.” (Br. 4-5) In support of this argument, the Appellants rely on
paragraph 39 of U.S. Patent Application 10/167,926, filed June 11, 2002,
mentioned (but not incorporated by reference) in paragraph 0004 of the
present application (Br. 4). According to the Appellants, the claimed
nanolaminate components are limited to those made of the materials
described at paragraph 39 of U.S. Patent Application 10/167,926 (id). The
Appellants specifically state at page 4 of the Brief that:
U.S. Patent Application S.N. 10/167,926, filed June 11, 2002
. . . states . . . : "Nano-laminate materials are a new class of
materials for technological application. At this time, nano-
laminate structures have been synthesized by PVD in elemental
form, as alloys, or a compounds-from [sic] at least 82 of the 92
naturally occurring elements. The microstructure scale of these
materials is determined during synthesis by controlling the
thickness of the individual layers. These layers are from one
monolayer (0.2 nm) to hundreds of monolayers (>500 nm) thick
and, except in special cases, generally define the in-depth
crystalline grain size."

The Examiner takes the position that the claimed nanolaminate
components are not limited to those produced by the materials described at
paragraph 39 of a patent application not incorporated into the present
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application (Answer 5-6). In other words, the term “nanolaminate” recited
in claim 1 defines laminate sizes, not laminate materials (Answer 6).
The dispositive question is, therefore, whether the Examiner’s
interpretation of the claimed “nanolaminate component” as “a nano-scale
laminate component” is unreasonable when it is properly construed in light
of the Specification. On this record, we answer this question in the negative.
As indicated by our reviewing court in In re Morris, 127 F.3d 1048,
1053-54, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997), in proceedings before
the U.S. Patent and Trademark Office (PTO), claim language must be given
the broadest reasonable meaning in ordinary usage, taking into account the
written description found in the Specification. Applying this principle of
law to the present situation, we determine that the Examiner’s interpretation
is reasonable. Initially, we observe that the words in claim 1 do not
expressly limit the materials of the nanolaminate components to those
referred to in paragraph 39 of Application 10/167,926. Phillips v. AWH
Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321, 1328 (Fed. Cir. 2005)
(en banc) (our claim construction analysis begins with the words of the
claims themselves); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978) (“We have consistently held that no ‘applicant should have limitations
of the specification read into a claim where no express statement of the
limitation is included in the claim.”). Secondly, we observe that the
Specification at page 1, paragraph 0003, defines “nano” in terms of
dimensions, sizes and scales. Consistent with this written description, the
Specification at page 1, paragraph 0004, indicates that “[t]he present
invention involves electrophoretic/electrochemical devices with nanometer-
scale metallic components.” [Emphasis added]. At page 5 of the
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Specification [0018], materials used to form nanolaminate components are
described in an unlimited manner as shown below:
By way of example, each of the nano-laminated
components 11, 12 and 11’[,] 12’ may be composed of from
two pair to an arbitrary number of multilayers, each composed
of alternating layers of metal, such as aluminum, gold, and
molybdenum, and layers of insulation, such as alumina, silica,
and ceria, with layer thicknesses in the range of nm to μm.
[Emphasis added.]

The Appellants’ reference to paragraph 39 of a different patent application
(not incorporated into the present Specification) does not negate the explicit
disclosure of the present application. We observe nothing in this record
relied upon by the Appellants, which requires us to import embodiments,
i.e., materials used to form nanolaminate components, from a patent
application not part of the present application. The Appellants simply have
not demonstrated that the Examiner’s interpretation is unreasonable.
Accordingly, we concur with the Examiner that Pisharody would have
rendered the subject matter of claims 1, 3, 4, and 7 anticipated within the
meaning of 35 U.S.C. § 102(e).
35 U.S.C. § 103(a):
In rejecting claims 5 and 11 under 35 U.S.C. § 103(a), the Examiner
takes the position (Answer 4-5) that:
Pisharody et al disclose[s] an apparatus as described
above in addressing claims 1, 3, 4, and 7.
Pisharody do [sic, does] not explicitly disclose distances
d as claimed.
However, it would have been obvious to one having
ordinary skill in the art at the time the invention was made to
modify the apparatus of Pisharody et al by widening the
channel such that it is either wider than the height of the
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Application 10/262,510

nanolaminate or at least one micron wide, as required in these
claims, depending on desired flow characteristics in the system.

The Appellants only argue that Pisharody does not teach non-claimed
materials for forming nanolaminate components (Br. 5). Specifically, the
Appellants only contend (id.) that:
The rejection of claim[s] 5 and 11 should be withdrawn because
they depend from claim 1, which should be allowable over the
reference as discussed above.

Thus, for the reasons indicated above, we determine that Pisharody would
have rendered the subject matter of claims 5 and 11 obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103(a).

V. CONCLUSION
Having carefully evaluated the claims, Specification and prior art
reference, including the arguments advanced by the Appellants and the
Examiner in support of their respective positions, we determine that the
Examiner’s § § 112, 102(e), and 103(a) rejections are well founded.
Accordingly, we will sustain the Examiner’s decision rejecting the claims on
appeal for the factual findings and conclusions set forth in the Answer
above.

VI. ORDER
The Examiner’s decision rejecting the claims on appeal under
35 U.S.C. §§ 112, 102(e) and 103(a) is affirmed.
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VII. TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

tf/ls

The Regents of the University of California
Lawrence Livermore National Laboratory
P.O. Box 808, L-703
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