Ex Parte Whitlock

Board of Patent Appeals and Interferences

Jul 30, 2007

10643597 (B.P.A.I. Jul. 30, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WALTER H. WHITLOCK
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Appeal 2007-0630
Application 10/643,597
Technology Center 1700
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Decided: July 30, 2007
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This case is not ripe for review and pursuant to 37 C.F.R. § 41.50(a)
(2004), we remand this application to the Examiner to take appropriate
action consistent with our comments below.
Any initial inquiry into the propriety of the Examiner’s prior art
rejections requires the determination of the scope of the claimed subject
matter. In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed.
Appeal 2007-0630
Application 10/643,597

Cir. 1994). We observe that independent claims 13 and 14, as well as
dependent claim 15, on appeal, are drawn to a system for cleaning
semiconductor wafer surfaces having, inter alia, mechanical elements
defined by means-plus-function limitations. Claim 13 recites “a means for
applying an elevated pressure …”, and claim 14 requires two separate such
means. Claim 15 requires “a means adapted to receive and mix ….” The
appealed process claims recite corresponding steps.
When the claimed elements are defined by means-plus-function
and/or step-plus-function limitations, we must interpret them as being
limited to the corresponding structures described in the specification and the
equivalents thereof consistent with 35 U.S.C. § 112, 6th paragraph. In re
Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.
1994)(en banc). The Specification must disclose the corresponding
structures of the claimed means-plus-function limitations in such a manner
that one skilled in the art would know and understand what structures
correspond to the claimed means-plus-function limitations. Atmel Corp. v.
Information Storage Devices, Inc., 198 F.3d 1374, 1382, 53 USPQ2d 1225,
1230 (Fed. Cir. 1999).
According to 37 C.F.R. § 41.37(c)(1)(v)(2004), the Appellant is
required to identify “every means plus function and step plus function as
permitted by 35 U.S.C. [§] 112, sixth paragraph,” and set forth “the
structure, material, or acts described in the specification as corresponding to
each claimed function . . . with reference to the specification by page and
line number, and to the drawing, if any, by reference characters” in the
Summary of Claimed Subject Matter section of the Brief. However, the
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Application 10/643,597

Appellant has not done so. For example, Appellant refers to page 4, lines
15-21 of the Specification for claim 13 and page 4, lines 22-31 of the
Specification for claim 14 (Br. 8). However, those referred to passages in
the Specification do not define structure corresponding to the claimed means
plus function limitations. Nor has Appellant clearly specified every
corresponding structure that may be disclosed in the Specification and linked
the functions of any such structures to each respective means-plus-function
limitation recited in the appealed claims.
37 C.F.R. § 41.37(d)(2004) states that:
If a brief is filed which does not comply with all the
requirements of paragraph (c) of this section, appellant will be
notified of the reasons for non-compliance and given a time
period within which to file an amended brief. If appellant does
not file an amended brief within the set time period, or files an
amended brief which does not overcome all the reasons for non-
compliance stated in the notification, the appeal will stand
dismissed.

Thus, upon return of this application, the Examiner must notify
Appellant of the above deficiency in the Brief and require the Appellant to
submit an amended Brief to correct it within an appropriate time period.
Upon receiving the amended Brief, the Examiner must review the Brief to
determine (1) whether it meets the requirements set forth in 37 C.F.R.
§ 41.37(c)(1)(v)(2004) and (2) whether the structures disclosed in the
Specification are clearly defined and linked to the claimed means-plus-
function limitations in compliance with 35 U.S.C. § 112, second paragraph.
Also, the Examiner should submit a Substitute or Supplemental Answer
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Application 10/643,597

directed to any such amended Brief submitted if the rejections are to be
maintained.
The Supplemental or Substitute Answer can be used to further explain
the rejection of record in terms of the specific structures described in the
Specification allegedly corresponding to the claimed means-plus-function
limitations or equivalents thereof. The Examiner is reminded that the
structures taught or suggested in the prior art reference are considered
“equivalents thereof” if they, relative to the corresponding structures,
1) perform substantially the same function in substantially the same
way to produce substantially the same result, Odetics, Inc. v. Storage Tech.
Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30 (Fed. Cir. 1999);
2) have insubstantial differences, Valmount Indus., Inc. v. Reinke
Mfg. Co., 983 F.2d 1039, 1042-44, 25 USPQ2d 1451, 1453-56 (Fed. Cir.
1993);
3) are structurally equivalent, In re Bond, 910 F.2d 831, 833,
15 USPQ2d 1566, 1568 (Fed. Cir. 1990); and
4) would have been recognized by one of ordinary skill in the art as
interchangeable, Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1316,
50 USPQ2d 1161, 1165 (Fed. Cir. 1999).
If the Specification fails to adequately describe the structures
corresponding to the claimed means-plus-function limitations in a manner
such that that one skilled in the art would know and understand what
structures correspond to the claimed means-plus-function limitations, the
Examiner must set forth a new ground of rejection under 35 U.S.C. § 112,
second paragraph, and reopen the prosecution of this application.
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Appeal 2007-0630
Application 10/643,597

This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) applies if a Supplemental Examiner's Answer is written in
response to this remand by the Board.
REMANDED

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