Ex Parte WECKESSERDownload PDFPatent Trials and Appeals BoardJun 5, 201914899143 - (D) (P.T.A.B. Jun. 5, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/899,143 12/17/2015 22045 7590 06/07/2019 Brooks Kushman 1000 Town Center 22nd Floor SOUTHFIELD, MI 48075 FIRST NAMED INVENTOR Dirk WECKESSER UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. W ASN0241PUSA 7842 EXAMINER NGUYEN, NGOC YEN M ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 06/07/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIRK WECKESSER Appeal2018-007034 Application 14/899, 143 Technology Center 1700 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 9-21 under 35 U.S.C. § l 12(a) as failing to comply with the written description requirement (Final Act. 2, 3; Ans. 2, 3); and claims 9-21 under 35 U.S.C. § l 12(b) as being indefinite (Final Act. 3, 4; Ans. 4). 2 We have jurisdiction over the Appeal under 35 U.S.C. § 6(b). 1 Appellant is the applicant, Wacker Chemie AG, which is also stated to be the real party in interest (Appeal Br. 1 ). 2 The claims on appeal are those presented in the Response to Notice of Non-Compliant Appeal Brief filed Jan. 17, 2018; this same set of claims was filed again with the Reply Brief filed on June 27, 2018. While Appellant laments that the Examiner did not enter a proposed amendment submitted after the final action (Appeal Br. 11 ), we have no jurisdiction to comment on this proposed claim. Appeal2018-007034 Application 14/899,143 We affirm. CLAIMED SUBJECT MATTER Claim 9 is representative ( emphasis added to highlight key disputed limitations): 9. A process for operating a fluidized bed reactor in an operation for preparing trichlorosilane from silicon and HCl or from silicon and H2/tetrachlorosilane or in an operation for preparing silicon from trichlorosilane, comprising purging the reactor and the input gas lines at room temperature with an inert gas at a gas rate of 10 to 500 m3 (STP)/h for 0.5 to 10 hours in a purge (a); then purging the reactor and input gas lines with H2 heated by a gas heater in a purge (b) to a temperature of 100-1000°C, and the purging is conducted for 2 to 100 hours with a gas flow rate of 200 to 1000 m3 (STP)/h; and purging the reactor and the input gas lines with trichlorosilane or with a mixture comprising trichlorosilane heated by a gas heater to a temperature of from 100°C to 1000°C in a purge ( c) for 2 to 50 hours with an amount of purge gas such that a concentration of a trichlorosilane or trichlorosilane mixture based on a total gas rate conveyed through a fluidized bed is 10 mol% to 50 mol% and a concentration of the trichlorosilane or trichlorosilane mixture based on a total gas rate conveyed through a reaction gas nozzle is 20 mol% to 50 mol%, and wherein reactor heaters are energized during or after purge c), to raise the temperature in the reactor to between 700°C and l 200°C, and recovering trichlorosilane or polycrystalline silicon granules from the reactor. OPINION Upon consideration of the evidence of record and each of Appellant's contentions as set forth in the Appeal Brief filed January 17, 2018, as well as the Reply Brief filed June 27, 2018, we determine that Appellant has not demonstrated reversible error in the Examiner's rejection based on a lack of written description (e.g., Ans. 2, 3, 5-8 (mailed May 9, 2018)). In re Jung, 2 Appeal2018-007034 Application 14/899,143 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining the Board's long-held practice of requiring Appellants to identify the alleged error in the Examiner's rejection.). We sustain the rejection based on lack of written description for the reasons expressed by the Examiner in the Final Office Action and the Answer; except as noted below. On the other hand, we reverse the Examiner's rejection based on indefiniteness for reasons explained below. We add the following for emphasis. § 112 (a): Written Description rejection The written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Ariad Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ( citation and quotations omitted, alteration in the original). The test is whether the disclosure "conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. Moreover, the Federal Circuit also stated that the written description clause of section 112 has been construed to mandate that the specification satisfy two closely related requirements - it must describe the manner and process of making and using the invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation and "it must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344--45 (Fed. Cir. 2005) (while the inventor had the intent to cover generic methods with his patent, he did not disclose enough in the 3 Appeal2018-007034 Application 14/899,143 specification to enable one skilled in the art to make and use the generic invention and thus did not show possession of the generic claims). The Examiner found that the Specification lacks written description for the limitation of "and wherein reactor heaters are energized during or after purge c) to raise the temperature in the reactor to between 700°C and 1200°C" for several reasons (see, Ans. 2, 3). There is no dispute that claim 9 encompasses three reaction process options, and that only one of these three options (preparing silicon from trichlorsilane) was described as having such a temperature range (Appeal Br. 9). Appellant urges that even though the original Specification gives a preferred range of 350°C to 450°C for the option of preparation of trichlorosilane from Si and HCL, one of ordinary skill would have known the reaction may also occur at higher temperatures (id.). Appellant urges that this situation "might apply to an issue of non- enablement, but not [a] lack of written description" (id.). Appellant restates his position that while there are three options in claim 9, and the claim "may not be a model of total clarity," there is clear support for the temperature range "even though that temperature range is the preferred temperature range for polycrystalline silicon deposition as opposed to trichlorosilane synthesis" (Reply Br. 2). These arguments are not persuasive of reversible error in the Examiner's rejection. As the Examiner stated, there is no disclosure in Appellant's Specification for this temperature range for the preparing of trichlorosilane options explicitly encompassed by claim 9 (Ans. 5). The test is not whether one of ordinary skill in the art would find the invention obvious after reading the disclosure, it is whether the disclosure itself conveys that Appellant had 4 Appeal2018-007034 Application 14/899,143 possession of the later-claimed subject matter. A disclosure that merely renders the later-claimed subject matter obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations. Tronzo v. Biomet, Inc., 156 F .3d 1154, 1158 (Fed. Cir. 1998); Lockwoodv. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). "That a person skilled in the art might realize from reading the disclosure that such a step is possible is not a sufficient indication to that person that that step is part of appellants' invention." In re Barker, 559 F.2d 588,593 (CCPA 1977) (quoting In re Winkhaus, 527 F.2d 637, 640 (CCPA 1975)). In light of this, it cannot be said that Appellant was in possession of the full scope of the invention as now recited ( that is, two of the three options encompassed by claim 9 are not adequately described to be performed at the recited temperature range). A preponderance of the evidence also supports the Examiner's finding that there is no written description support for the reactor heaters being energized "during" purge c since the Specification describes separate heaters for heating the purging gases (e.g., Ans. 7; Appeal Br. 10; Reply Br. 2--4). On the other hand, we do agree with Appellant that there is written description support for "heaters" (plural) since the Specification describes the use of radiators (plural) (Reply Br. 4, citing Spec. 3 :9-11 ). Accordingly, we affirm the rejection of claims 9-21 as lacking written description support in the Specification. 5 Appeal2018-007034 Application 14/899,143 § 112 (b): Indefiniteness rejection During prosecution, "the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claims are definite if they set out and circumscribe a particular area with a reasonable degree of precision and particularity. It is here where the definiteness of the language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). However, "breadth [of a claim] is not to be equated with indefiniteness." In re Miller, 441 F.2d 689, 693 (CCPA 1971). The Examiner found the preamble language of claim 9 describing the three options indefinite because "claim 9 does not have any positive process step to produce any product" (Ans. 4). Appellant aptly points out that the process of claim 9 applies to any one of the three fluidized bed reactions recited, and claim 9 further recites "recovering trichlorosilane or polycrystalline silicon granules from the reactor" (Appeal Br. 13, 14; Reply Br. 3, 4). Appellant reasonably points out that the addition of reactants to prepare the recited products recovered in claim 9 is "part and parcel of the reaction" (Reply Br. 4). 6 Appeal2018-007034 Application 14/899,143 We find Appellant's argument persuasive. Accordingly, we reverse the Examiner's§ 112 rejection based on indefiniteness. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this Appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation