Ex Parte Walton et al

Board of Patent Appeals and Interferences

Sep 25, 2007

10644567 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT G. WALTON,
DARRIN LEONHARDT,
ROBERT A. MEGER,
RICHARD FERNSLER AND
CHRISTORPHER MURATORE
____________

Appeal 2007-1470
Application 10/644,567
Technology Center 1700
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Decided: September 25, 2007
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Before BRADLEY T. GARRIS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
We remand the above identified application to the Examiner for action
consistent with our comments below.
The Appellants' Brief filed January 23, 2006 includes an Evidence
Appendix which contains two pieces of evidence, namely, (1) a graph of
Appeal 2007-1470
Application 10/644,567

cross section vs. electron energy, and (2) an article entitled "Applications of
Electron-Beam Generated Plasmas to Materials Processing." Moreover, the
Brief contains arguments for nonobviousness which specifically refer to this
evidence (Br. 3-4). However, the record of this application contains no
indication that the Examiner has acknowledged the submission of this
evidence and approved or disapproved the entry of the evidence. See the
Answer mailed February 27, 2007 and the Advisory Action mailed
September 7, 2005 (i.e., in response to Appellants' August 29, 2005 filing
which first provided the afore-noted evidence). Likewise, the Answer
contains no response by the Examiner to the arguments in the Brief
concerning this evidence.
Under these circumstances, the Examiner must respond to this
Remand by clarifying the application record as to whether this evidence is
entered (and if not why not). Further, if the evidence is entered, the
Examiner must respond to Appellants' arguments in the Brief concerning
this evidence. Specifically, if the evidence and corresponding arguments do
not persuade the Examiner that the § 103 rejections of record should be
withdrawn, the Examiner must thoroughly explain why the evidence and
arguments are considered to be inadequate to successfully rebut the § 103
rejections.
In addition, we observe that independent claim 1 contains language
which may render the appealed claims in violation of the second paragraph
of 35 U.S.C. § 112. The language in question reads "having a width much
larger in dimension than its thickness" (claim 1; emphasis added). This
language may offend the second paragraph of § 112 because the term
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Appeal 2007-1470
Application 10/644,567

"much" is a word of degree and the Specification appears to provide no
standard for measuring that degree. Thus, it is unclear whether one of
ordinary skill in the art would understand what is being claimed even when
claim 1 is read in light of the Specification. See Seattle Box Co. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 574, 221 USPQ 568, 573-74 (Fed.
Cir. 1984).
In response to this Remand, the Examiner must address and resolve on
the written record whether and why the appealed claims do or do not satisfy
the second paragraph requirements of 35 U.S.C. § 112.
Finally, appealed claim 1 recites three "means" and Appellants
expressly acknowledge this fact albeit "[w]ithout admitting any applicability
of 35 U.S.C. § 112, sixth paragraph" (Br. 2). Notwithstanding Appellants'
desire to avoid admitting any sixth paragraph applicability, the Examiner
must respond to this Remand by providing the written record of this
application with an interpretation of the claim 1 "means" language in
accordance with the guidelines set forth in the Manual of Patent Examining
Procedure (MPEP) § 2181(8th ed., Rev. 5, Aug. 2006). As explained in these
guidelines, such an interpretation is a necessary part of the examination
process for determining compliance with the various requirements for
patentability.
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Appeal 2007-1470
Application 10/644,567

This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
not made (solely) for further consideration of a rejection. Accordingly, 37
C.F.R. § 41.50(a)(2) does not apply.
REMAND

cam

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