Ex Parte WECKESSER

Patent Trials and Appeals Board

Jun 5, 2019

14899143 - (D) (P.T.A.B. Jun. 5, 2019)

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,
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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
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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
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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.
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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).
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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
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