Ex Parte YOON et al

Patent Trial and Appeal Board

Dec 6, 2017

13081981 (P.T.A.B. Dec. 6, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/081,981 04/07/2011 So Young YOON 0297.1018 5114
49455 7590
STEIN IP, LLC
1990 M STREET, NW
SUITE 610
WASHINGTON, DC 20036
EXAMINER
CARLSON, MARC
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
12/08/2017 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@steinip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SO YOUNG YOON, JOO HAN LEE,
and JONG JAE LEE
Appeal 2016-004593
Application 13/081,981
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
So Young Yoon et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 7, 9, 10, 12, 14, 15, 20, and
24.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Claims 22 and 23 are withdrawn. Br. 17 (Claims App.).
Appeal 2016-004593
Application 13/081,981
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A pad conditioner having reduced friction,
comprising:
a substrate having a plurality of protrusions having
different heights which are formed upwards and separated from
each other by a same distance on part or all of one surface of the
substrate, tops of the protrusions forming a plane parallel to the
surface of the substrate; and
a diamond layer disposed on the plurality of protrusions or
on the entire surface having the protrusions,
wherein a diamond crystalline structure of the diamond
layer has a (1,0,0) growth plane,
wherein the diamond layer is deposited using Chemical
Vapor Deposition (CVD) under conditions including a filament
temperature of 1900 ~ 2000°C and a substrate temperature of
1000- 1100°C, and
wherein the plurality of protrusions comprise a first height
group comprising a plurality of first protrusions having a first
height, a second height group comprising a plurality of second
protrusions having a second height, and a third height group
comprising a plurality of third protrusions having a third height,
in which the second height is lower than the first height, the
third height is lower than the second height, and a difference
between the first height and the second height is 10-70 pm.
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Application 13/081,981
REJECTIONS
1) Claims 1, 7, 9, 10, 12, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yilmaz (US 2008/0014845 Al,
published Jan. 17, 2008), Myoung (US 2003/01140894 Al, published
June 19, 2003), and Physics and Applications of CVD Diamond, 42,
43 (S. Koizumi et al., ed. John Wiley & Sons, 2008)(“Koizumi”).
2) Claims 20 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yilmaz, Myoung, Koizumi, and Slutz (US
2005/0276979 Al, published Dec. 15, 2005).
DISCUSSION
New Ground of Rejection: 35 U.S.C. § 112, Second Paragraph,
Claims 1, 7, 9, 10, 12, 14, 15, 20, and 24
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1, 7, 9, 10, 12, 14, 15, 20, and 24
under 35 U.S.C. § 112, second paragraph, as being indefinite for failure to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. “As the statutory language of
‘particular[ity]’ and ‘distinctness]’ indicates, claims are required to be cast
in clear—as opposed to ambiguous, vague, indefinite—terms.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “It is the . . . [Appellants’]
burden to precisely define the invention, not the PTO’s.” In re Morris, 127
F.3d 1048, 1056 (Fed. Cir. 1997). “The definiteness inquiry focuses on
whether those skilled in the art would understand the scope of the claim
when the claim is read in light of the rest of the [Specification.” Union
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Appeal 2016-004593
Application 13/081,981
Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed.
Cir. 2001) (citation omitted).
Claim 1 recites “a substrate having a plurality of protrusions having
different heights which are formed upwards and separated from each other
by a same distance on part or all of one surface of the substrate, tops of the
protrusions forming a plane parallel to the surface of the substrate.” Br. 14
(Claims App.) (emphasis added). Independent claims 10 and 14 contain the
same limitation and claim 20 contains substantially the same limitation. Br.
15-16 (Claims App.).
Appellants’ Specification illustrates various configurations of the
plurality of protrusions that are formed upward from substrate 110. We note
that Appellants indicate that support for claim 1 is provided in Figures 8 and
9; support for claim 10 is provided in Figures 12 and 13; and support for
claim 14 is provided in Figures 14 and 15. See Br. 6-7. Figure 8, for
example, shows that the top of individual protrusions 121a, 122a, and 123a
may be parallel to a surface of the substrate 110. However, claim 1 recites
“tops of the protrusions,” which refers to the recited “plurality of
protrusions.” It is unclear from these disclosed embodiments how the tops
of all of the plurality of protrusions shown form “<2 plane parallel to the
surface of the substrate.” Although certain groups within the plurality of
protrusions that have the same height may, as a group, be considered to form
a plane parallel to the surface of the substrate, none of the embodiments
discloses an arrangement wherein the tops of all protrusions form “a plane,”
much less “a plane” that is parallel to the surface of the substrate. In order to
satisfy the claimed limitation, it appears that each of the plurality of
protrusions would need to have the same height, but such arrangement is
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Appeal 2016-004593
Application 13/081,981
precluded by each of claims 1,10, and 14. Consequently, we determine that
one of ordinary skill in the art after reviewing Appellants’ Specification
would not understand the scope of the presently appealed claims. We,
therefore, enter a new ground of rejection against claims 1, 10, 14, and 20 as
indefinite under 35 U.S.C. § 112, second paragraph, as well as claims 7, 9,
12, 15, and 24 which depend from claims 1, 10, 14, or 20.
Rejections 1 and 2
We do not sustain the rejection of claims 1, 7, 9, 10, 12, 14, and 15
under 35 U.S.C. § 103(a) as unpatentable over Yilmaz, Myoung, and
Koizumi, or the rejection of claims 20 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Yilmaz, Myoung, Koizumi, and Slutz, because this would
require us to make speculative assumptions as to the meaning of the
limitation “tops of the protrusions forming a plane parallel to the surface of
the substrate” in claims 1, 10, 14, and 20. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). It must be understood, however, that our decision
regarding these prior art rejections is based solely on the indefmiteness of
the claims and does not reflect in any manner on the adequacy of the prior
art evidence relied upon in the Examiner’s rejections.
DECISION
The Examiner’s decision rejecting claims 1, 7, 9, 10, 12, 14, 15, 20,
and 24 is reversed.
We enter a new ground of rejection against claims 1, 7, 9, 10, 12, 14,
15, 20, and 24 under 35 U.S.C. § 112, second paragraph.
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Application 13/081,981
FINALITY OF DECISION
This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellants],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground[s] of rejection to avoid termination of the appeal as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground[s] of
rejection [are] binding upon the examiner unless an amendment
or new Evidence not previously of Record is made which, in
the opinion of the examiner, overcomes the new ground[s] of
rejection designated in the decision. Should the examiner reject
the claims, [Appellants] may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th
Ed., Rev. 07.2015, Nov. 2015).
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Application 13/081,981
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, § 41.50(b)
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