Ex Parte Yi et alDownload PDFPatent Trial and Appeal BoardSep 5, 201310849848 (P.T.A.B. Sep. 5, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHANG BOK YI, TATSURU TANAKA, and PAUL McLEOD ____________ Appeal 2011-008721 Application 10/849,848 Technology Center 3700 ____________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and ADAM V. FLOYD, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 33-52. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-008721 Application 10/849,848 2 Claimed Subject Matter The claimed subject matter relates to “the manufacture of planar workpieces or other articles, including recording disks, and more particularly, to systems and methods for cooling the workpieces during the manufacturing process.” Spec. 1, para. [02]. Claim 33, reproduced below, is illustrative of the appealed subject matter. 33. An apparatus for cooling a planar workpiece in an evacuated environment, said apparatus comprising: a heat exchanging structure having at least two heat sinks with substantially parallel facing surfaces disposed within a vacuum chamber and having a first distance between the substantially parallel facing surfaces to admit a workpiece; and means for dynamically adjusting a distance between the substantially parallel facing surfaces during operation, such that the distance is dynamically adjusted to a second distance between the substantially parallel facing surfaces after the workpiece is positioned between the substantially parallel facing surfaces. App. Br., Clms. App’x. Similar to claim 33, independent claims 41 and 47 are both directed to “[a]n apparatus for cooling a planar workpiece.” However, instead of claim 33’s means-plus-function language, claims 41 and 47 include, inter alia, “a drive arrangement configured to dynamically adjust a distance between the substantially parallel flat surfaces to a second distance after the workpiece is positioned between the substantially parallel facing surfaces.” Id. Appeal 2011-008721 Application 10/849,848 3 Rejections and Objection The following Examiner’s rejections are before us for review: I. claims 33-52 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention (Ans. 14-19); and II. claims 33-52 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement (Ans. 19-24). The Examiner also objected, under 35 U.S.C. § 132(a), to amendments to Specification paragraphs [33], [34], [36], and [38] (Ans. 8- 10) filed on February 10, 2010, on the ground that the amendments introduced new matter into the original disclosure. See also Ans. 4-8. The Examiner’s rejection of claims 33-52 under 35 U.S.C. § 112, second paragraph, as indefinite, is related to the Examiner’s objection, under 35 U.S.C. § 132(a), to Appellants’ February 10, 2010 amendment of Specification paragraphs [33], [34], [36], and [38] for introducing new matter into the disclosure. See Ans. 4-10 (objection) and 14-19 (indefiniteness).1 1 Appellants also request review of the Examiner’s drawing objection under 35 U.S.C. § 132(a) as introducing new matter into the disclosure. App. Br. 12. However, the propriety of the Examiner’s objection (Ans. 10-11) relates to a petitionable matter and not to an appealable matter. Thus, the relief sought by the Appellants should have been presented by a petition under 37 C.F.R. § 1.181 instead of by appeal to this Board. See Ex Parte Frye, 94 UPSQ2d 1072, 1077-78 (BPAI 2010) (precedential); see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, and holding that “the kind of adverse decisions of examiners which are Appeal 2011-008721 Application 10/849,848 4 OPINION Prosecution History On June 11, 2003, Appellants filed provisional application 60/477,858 having a 24 page specification describing a “PCSIII Phase2 Stepper Motor Control Feedback System.” See Prov’l. Spec. 2. Page 23 of the provisional Specification is entitled “PCS 3 Control System BOM [or Bill of Materials],” and lists specific structure for a “controller” (i.e., Mitsubishi’s PLC, FX1N-14-MT-ESS/UL, Analog Adaptor Board, FX1N-2A-BD, and Programming Software FX-PCS/WIN), a “stepping motor/driver” (i.e., Vexta’s 5 phase motor/drive, CSK596-NBTA), and an “inductive displacement sensor” (i.e., Keyence’s sensor head, EX-022, 10 mm range, and controller, EX-510). Prov’l. Spec. 23. Emphasis by all upper case letters omitted. On May 21, 2004, the present non-provisional application was filed in which the Specification claimed priority to provisional application 60/477,858 and incorporated by reference the entire contents of the provisional application. See Spec. 1, para. [01]; see also Prelim. Amdt. 2 (filed concurrently with Spec.). Original Specification paragraphs [33] and [34] introduced controller 50 and proximity sensor 60, respectively, but the Specification did not explicitly contain the specific structure of controller 50 and proximity sensor 60 as was listed in the provisional application specification. In response to a Non-Final Office Action mailed November 12, 2009, Appellants filed an amendment on February 10, 2010, in which Appellants reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”)). Appeal 2011-008721 Application 10/849,848 5 amended Specification paragraphs [33], [34], [36], and [38], to insert the specific structure of stepper motors 40, controller 50, and proximity sensor 60 as were listed in the provisional specification, and to clarify that the heat sinks 30 are moved between first and second distances D1 and D2. The Examiner’s Final Rejection of May 27, 2010 objected to the Specification under 35 U.S.C. § 132(a) as introducing new matter into the original disclosure. Indefiniteness Rejection and New Matter Objection The Examiner determines that independent claim 33’s means-plus- function recitation under 35 U.S.C. § 112, sixth paragraph, and the recitation of “a drive arrangement configured to dynamically adjust a distance . . .” in independent claims 41 and 47, both lack sufficient corresponding structure in the Specification. Ans. 14-19. The Examiner acknowledges that independent claims 41 and 47 do not recite the same means-plus-function language as claim 33, but determines that “it is merely a semantic change in language to specify the same recitation of function with the ‘means for’ replaced by . . . ‘a drive arrangement configured to . . .’ recitation to cover the same function of ‘dynamically adjusting a distance.’” Ans. 14-15; see Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (Generic terms like “mechanism,” “means,” “element,” and “device” typically do not have enough structure to avoid means-plus-function treatment). In other words, the Examiner determines that claims 33, 41, and 47 are indefinite because the Specification simply references controller 50 and proximity sensor 60 without disclosing structure for these elements. Ans. 14-15 (citing Biomedino LLC v. Waters Technologies Corp., 490 F.3d Appeal 2011-008721 Application 10/849,848 6 946, 950 (Fed. Cir. 2007) (“If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid for infiniteness.”)). Thus, the issue before us is whether Appellants’ incorporation by reference of the entirety of the provisional application, on page 1, paragraph [01], of the Specification, can be relied upon to insert the essential material2 of the specific structure of controller 50 and proximity sensor 60. We agree with Appellants that it can. App. Br. 15. First, the present non-provisional application was filed prior to October 21, 2004 such that “essential material” can be incorporated by reference for a United States unpublished application, i.e., provisional application. The eight edition of the MPEP provided that: [E]ssential material may not be incorporated by reference to (1) patents or applications published by foreign countries or a regional patent office, (2) non-patent publications, (3) a U.S. patent or application which itself incorporates ‘essential material’ by reference, or (4) a foreign application. MPEP § 608.01(p)(I)(A) (8th ed., Rev. 2, 2003); see also MPEP 2 “‘Essential material’ is material that is necessary to: (1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by the first paragraph of 35 U.S.C. [§] 112; (2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by the second paragraph of 35 U.S.C. [§] 112; or (3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by the sixth paragraph of 35 U.S.C. [§] 112.” See 37 C.F.R. § 1.57(c) Appeal 2011-008721 Application 10/849,848 7 § 608.01(p)(I)(A) (8th ed., Rev. 8, 2010) (“The practice of permitting incorporation by reference of material from unpublished applications . . . was discontinued by rule on October 21, 2004.”). The Examiner has not provided any persuasive evidence that Appellants’ incorporation by reference falls within any of the enumerated categories (1) through (4) mentioned supra. Moreover, the Examiner’s reliance on Modine Manufacturing Co. v. U.S. International Trade Commission, 75 F.3d 1545 (Fed. Cir. 1996) is misplaced because the facts of the present case are not analogous to the facts presented in Modine and thus, Modine is inapplicable here. We thus conclude that because Appellants correctly incorporated by reference the specific structure of the controller and the proximity sensor from the provisional application into the present non-provisional application, the original disclosure includes a description of the structure of controller 50 and proximity sensor 60 in accordance with 35 U.S.C. § 112, sixth paragraph and thus, the claims are not invalid for indefiniteness. Accordingly, we do not sustain the Examiner’s rejection of claims 33- 52 under 35 U.S.C. § 112, second paragraph, as being indefinite. With respect to the Examiner’s objection to the Specification in the Final Rejection mailed May 27, 2010, we note that ordinarily an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. However, when the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. See MPEP § 2163.06 II, entitled “Review of New Matter Objections And/Or Rejections” (8th Ed., Rev. 8, July 2010); see also MPEP § 608.04(c) (“where the alleged new matter is introduced into or affects the Appeal 2011-008721 Application 10/849,848 8 claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also.”). To the extent that the objection to the Specification in the Final Rejection turns on the same issues as the rejection under 35 U.S.C. § 112, second paragraph, our decision with respect to the rejection is dispositive as to the corresponding objection. Enablement Rejection The Examiner determines that independent claims 33, 41, and 47 fail to comply with the enablement requirement as the claims contain subject matter which was not described in the Specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Ans. 20. According to the Examiner, “the specification/disclosure does not properly teach how to make the invention by failing to disclose any of the pertinent details of both functional elements [controller] 50 and [proximity sensor] 60 that are disclosed as proverbial ‘black-boxes.’” Id. In particular, the Examiner states that Appellants have “failed to make any colorable attempt to answer any of the [E]xaminer’s basic questions about how a controller responding to the signal from a single proximity sensor can be used to control two independently moveable heat sinks.” Ans. 13. Appellants argue that “the Specification adequately describes at least one embodiment of how a controller responding to a signal from a single proximity sensor can be used to control two independently movable heat sinks.” App. Br. 18. According to Appellants, “the heat sinks are controlled Appeal 2011-008721 Application 10/849,848 9 by the controller to move between a first position and a second position, such movement only taking place when the controller has received (via a position signal) confirmation.” Id. The PTO bears the initial burden when rejecting claims for lack of enablement. When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). It is by now well-established law that the test for compliance with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the necessity for some experimentation . . . . However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue,’ not ‘experimentation.’” Id. at 736-37. To evaluate whether a disclosure would require undue experimentation, the Federal Circuit has adopted the following factors to be considered: Appeal 2011-008721 Application 10/849,848 10 (1) The quantity of experimentation needed to make or use the invention based on the content of the disclosure; (2) The amount of direction or guidance presented; (3) The existence of working examples; (4) The nature of the invention; (5) The state of the prior art; (6) The relative skill of those in the art; (7) The level of predictability in the art; and (8) The breadth of the claims. See Wands, 858 F.2d at 737. The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. Id. Although the Examiner addresses all eight of the Wands’ factors (see App. Br. 21-23), we are not persuaded that the Examiner’s analysis provides a reasonable explanation as to why the scope of protection provided by the claims is not adequately enabled by the description of the invention provided in the Appellants’ Specification. For instance, with respect to the quantity of experimentation needed to make or use the invention based on the content of the disclosure, the Examiner states that “[u]ndue experimentation is required,” because “the lack of even one working example coupled with the broadest reasonable interpretation of the intended result of ‘dynamically adjusting the spacing’ between the heat sinks . . . suggest[s] . . . a great deal of experimentation.” Ans. 23. We do not agree with the Examiner’s reasoning. Figure 10 depicts a flow chart which is explained in Specification paragraphs [46]-[49] and which shows a control of the process. More particularly, original Specification paragraph [47] indicates that “[c]ontrolling the stepper motors 40, the controller 50 closes the heat sinks 30 from the first, open position in which the heat sinks 30 are separated by the first distance D1 to a second Appeal 2011-008721 Application 10/849,848 11 position, the closed position, in which the heat sinks 30 are separated by the second distance D2.” From this disclosure and the structure of controller 60 and proximity sensor 50 described supra, a person of ordinary skill in the art would be able to understand how proximity sensor 60 communicates a position signal to a controller 50 to control the movement of heat sinks between distances D1 and D2. Thus, the Examiner has failed to sufficiently show why the Appellants’ disclosure would require undue experimentation in order to make and use the claimed invention. As such, the Examiner has failed to show lack of enabling disclosure. Accordingly, we do not sustain the Examiner’s rejection of claims 33- 52 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. DECISION We reverse the Examiner’s decision to reject claims 33-52. REVERSED Klh Copy with citationCopy as parenthetical citation