TOSHIBA MITSUBISHI-ELECTRIC INDUSTRIAL SYSTEMS CORPORATION

Patent Trials and Appeals Board

May 8, 2020

14992839 - (D) (P.T.A.B. May. 8, 2020)

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.
14/992,839 01/11/2016 Akio Yoshida 13791US02DIV 2177
154930 7590 05/08/2020
XSENSUS LLP
200 Daingerfield Road
Suite 201
Alexandria, VA 22314
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
Faith.Baggett@xsensus.com
Sandy.Miles@Xsensus.com
anaquadocketing@Xsensus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AKIO YOSHIDA and MASAHISA KOGURA
____________________

Appeal 2019-004289
Application 14/992,839
Technology Center 1700
____________________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Non-Final
Action, dated June 14, 2018, rejecting claims 2, 5–11, 15, and 16. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as TOSHIBA
MITSUBISHI-ELECTRIC INDUSTRIAL SYSTEMS CORPORATION.
Appeal Br. 2.
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Application 14/992,839

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The invention relates to methods for manufacturing an ultrasonic
bonding tool. App. Br. 2–5. Claim 2 illustrates the subject matter claimed
and is reproduced below from the Claims Appendix to the Appeal Brief:
2. A method for manufacturing an ultrasonic bonding
tool, said ultrasonic bonding tool comprising a chip portion at a
distal end portion of the tool, the chip portion comprising a
surface portion, the surface portion comprising a plurality of
planar portions and a plurality of concavities between planar
portions of the plurality of planar portions, and the tool being
capable of applying ultrasonic vibration, said method for
manufacturing the tool comprising:

preparing a tool original material comprising a distal
planar portion with a flatness of more than 2 μm;

grinding the tool original material to enhance the flatness
of the distal planar portion to a flatness of 2 μm or less;

selectively forming the plurality of concavities by wire
cutting or with a cutting wheel, wherein the plurality of
concavities separate the distal planar portion into the plurality
of planar portions;

shot-blasting an edge of an outer peripheral portion of
planar portions in the plurality of planar portions, thereby
rounding the edge; and

shot-blasting to form an uneven shape in each planar
portion in the plurality of planar portions so as to maintain a
flatness of 2 μm or less in the plurality of planar portions and
form an uneven shape with a flatness of 2 μm or less in the
plurality of concavities.

Independent claim 16 is directed to a method similar to claim 2.

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Application 14/992,839

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Appellant requests review of the following rejections the Examiner
maintains:2
I. Claims 2, 5–11, 15, and 16 rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement.

II. Claims 2, 5–11, 15, and 16 rejected under 35 U.S.C. § 112 (pre-
AIA), second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter the applicant regards as the invention.

Appellant presents arguments only for claims 2 and 16. See generally
Appeal Br. Accordingly, we decide the appeal as to all grounds of rejection
based on the arguments Appellant makes in support of claims 2 and 16.

OPINION
35 U.S.C. § 112, 1st paragraph - Written Description Requirement
After review of the respective positions Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Non-Final Action
and the Answer, we reverse the Examiner’s rejection of claims 2, 5–11, and
15 under 35 U.S.C. § 112, first paragraph, for lack of written description, for
the reasons Appellant provides. However, we affirm the Examiner’s
rejection of claim 16 under 35 U.S.C. § 112, first paragraph, for the reasons
the Examiner provides.
The Examiner finds that claim 2 recites the language “form an uneven
shape with a flatness of 2μm or less in the plurality of concavities.” Non-
Final Act. 3. The Examiner also finds that claim 16 recites the language
“uneven level.” Id. The Examiner determines that the Specification, as

2 The Examiner withdrew all grounds of rejection under 35 U.S.C. § 103(a).
Ans. 3.
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originally filed, does not provide adequate descriptive support for the noted
language. Id.
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc). “This inquiry . . . is a question of fact. . . . [T]he level
of detail required [in the Specification as originally filed] to satisfy the
written description requirement varies depending on the nature and scope of
the claims and on the complexity and predictability of the relevant
technology.” Id. Compliance with the written description requirement is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991).
Application No. 14/992,839 is a division of Application No.
13/379,669, now abandoned. For purposes of this opinion, we look to the
Specification of Application No. 13/379,669, dated December 21, 2011
(hereinafter, referred to as the “Specification, as originally filed,” the “’669
Specification,” or as “’669 Spec.”), to determine whether there is sufficient
written description for the contested language.

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(a) Claim 2 (“form an uneven shape with a flatness of 2μm or less in the
plurality of concavities”)3
According to the Examiner, the concavities having the claimed
flatness4 are not recited anywhere in the Specification, as originally filed.
Ans. 4. The Examiner further contends that concept of a flatness, as is
known in the art and as described in the Specification, as originally filed, is
never discussed as it relates to the concavities. Id.
After consideration of Appellant’s arguments (Appeal Br. 6–7), we
agree with Appellant that there is reversible error in the Examiner’s
determination that the disputed language lacks adequate written descriptive
support.
Moreover, referring to Figure 8, the ’669 Specification expressly
describes:
In this manner, the chip portion 1c of the ultrasonic bonding
tool 1 according to the embodiment 3 is characterized in that
the plurality of planar portions 10a have fine unevenness in a
range that satisfies a flatness of 2 μm or less. Additionally, it is
also characterized in that each of the plurality of concavities 11
has fine unevenness.
’669 Spec. ¶ 32 (emphasis added).
In addition, referring to Figure 9c, the ’669 Specification describes:
Furthermore, as shown in FIG. 9(c), if the shot-blasting
process is used, fine unevenness is also formed in each of the
plurality of concavities 11. Accordingly, the fine unevenness

3 The Examiner finds claim 16 includes similar language with the alternative
phrase “uneven level” instead of “flatness.” We address all issues with
respect to claim 16 separately because the Examiner discusses the alternative
phrase later in the rejection.
4 There is no dispute between Appellant and the Examiner that the terms
“unevenness” and “flatness,” as they are used in the ’669 Specification, are
similar to “roughness.” See generally Non-Final Action; Reply Br. 2.
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formed in the plurality of concavities 11 also provides the effect
that the holding function of the chip portion 1c for holding the
lead wire 2 during the ultrasonic bonding operation increases.
Id. ¶ 41 (emphasis added).
In view of these disclosures, we agree with Appellant that the
Specification, as originally filed, provides adequate written descriptive
support for concavities having the claimed fine unevenness. That is, the
Specification, as originally filed, reasonably conveys to the artisan that the
inventor had possession of the claimed subject matter at the time of filing the
’669 Specification.
Accordingly, we reverse the Examiner’s rejection of claims 2, 5–11,
and 15 under 35 U.S.C. § 112, first paragraph, for the reasons Appellant
presents and we give above.

(b) Claim 16 (“uneven level”)5
According to the Examiner, the Specification, as originally filed, does
not support the terms “uneven level” and “level.” Ans. 4. The Examiner
further asserts that the Specification, as originally filed, does not equate the
term “uneven level” to flatness. Id.
Appellant argues that the ’669 Specification interchangeably uses the
terms “uneven” and “flat.” Appeal Br. 7 (citing paragraph 44 of the
corresponding published application). Appellant contends that this provides
sufficient written descriptive support for the disputed language. Id.
Appellant has not identified reversible error in the Examiner’s
determination.

5 Claim 16, including the disputed language, was added as a new claim by
amendment on February 15, 2018.
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Although the ’669 Specification may use the forms of the terms
“uneven” and “flat” interchangeably, “levelness,” as the Examiner explains,
has to do with the orientation of an object’s surface with respect to gravity,
while flatness has to do with the curvature of or protrusions on a surface
(i.e., surface roughness). Non-Final Act. 4. In other words, the Examiner
asserts that one skilled in the art would not have associated “uneven level”
with the term “roughness” in the manner that Appellant and the Examiner
associate the terms “unevenness” and “flatness” as similar to “roughness.”
See generally Non-Final Action; Reply Br. 2. Of particular note, Appellant
directs us to no portion of the ’669 Specification that provides adequate
written descriptive support for the disputed language expressly or impliedly.
In fact, although Appellant expressly concedes that the terms “unevenness”
and “flatness” are similar to “roughness” (Reply Br. 2), Appellant does not
address how the phrase “uneven level” relates to “roughness.” Appellant
also does not explain adequately why the disputed language reasonably
conveys to the artisan that the inventor had possession of the later claimed
subject matter at the time of filing the ’669 Specification.
Our determination concerning the lack of descriptive support for the
term “uneven level” also renders the claim language “form an uneven shape
with an uneven level of 2μm or less in the plurality of concavities” as
lacking written descriptive support for the reasons we give above.
Accordingly, we affirm the Examiner’s rejection of claim 16 under
35 U.S.C. § 112, first paragraph, based on this portion of the rejection for the
reasons the Examiner presents and we give above.

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35 U.S.C. § 112, 2nd paragraph - Indefiniteness6
After review of the respective positions Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Non-Final Action
and the Answer, we reverse the Examiner’s rejection of claims 2, 5–11, and
15 under 35 U.S.C. § 112, second paragraph, for the reasons Appellant
provides. However, we affirm the Examiner’s rejection of claim 16 under
35 U.S.C. § 112, second paragraph, for the reasons the Examiner provides.
The Examiner finds that claim 2 recites the language “form an uneven
shape with a flatness of 2μm or less in the plurality of concavities.” Non-
Final Act. 4. The Examiner also finds that claim 16 recites the language
“uneven level.” Id. The Examiner determines that the noted language for
each claim creates an indefiniteness issue. Id.
The text of 35 U.S.C. § 112, second paragraph, requires “[t]he
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
the invention.” “As the statutory language of ‘particular[ity]’ and
‘distinct[ness]’ 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). Thus, the test for determining the question of
indefiniteness may be formulated as whether the claims “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an

6 The Examiner withdrew the portion of this rejection based on the language
“tool original material.” Ans. 3.
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imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, while exact precision is not required, an applicant
is required to use language as precise as the subject matter reasonably
permits. Id.

(a) Claim 2 (“form an uneven shape with a flatness of 2μm or less in the
plurality of concavities”)7

According to the Examiner, the disputed language is unclear as to how
the concavities can have the claimed “flatness” when they are inherently
curved. Non-Final Act. 4; Ans. 5. The premise of the Examiner’s rejection
is that the concavities are curved and, thus, cannot have the claimed
“flatness.” Ans. 5. However, this premise ignores that “flatness,” as
described in the Specification, as originally filed, relates to the fine
unevenness or “roughness” of the surface of the concavity and not to the
curvature of the concavity. ’669 Spec. ¶¶ 7, 40. This is illustrated in
Figures 8 and 9(c) and best described in paragraph 41 of the ’669
Specification.
In view of the above, we agree that Appellant has identified reversible
error in the Examiner’s conclusion of indefiniteness based on this language.

7 The Examiner finds that claim 16 includes similar language with the
alternative phrase “uneven level” instead of “flatness.” We address all
issues with respect to claim 16 separately because the Examiner discusses
the alternative phrase later in the rejection.
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Accordingly, we reverse the Examiner’s rejection of claims 2, 5–11,
and 15 under 35 U.S.C. § 112, second paragraph, for the reasons Appellant
presents and we give above.

(b) Claim 16 (“uneven level”)
According to the Examiner, it is not clear what the term “uneven
level” means because it appears to equate levelness to flatness. Non-Final
Act. 4. The Examiner explains that levelness has to do with the orientation
of an object’s surface with respect to gravity, while flatness has to do with
the curvature of or protrusions on a surface. Id. That is, the Examiner
determines that “level” does not refer to a surface structure or to roughness
in the same way as the terms “flatness” and “fine unevenness” do.
Appellant argues that the term “uneven level,” when interpreted in
light of the Specification, as originally filed, is synonymous with
“unevenness.” Appeal Br. 10.
Appellant has not identified reversible error in the Examiner’s
determination.
We first note that Appellant does not direct us to any portion of the
Specification, as originally filed, that defines “uneven level.” Although
Appellant argues that the disputed language is synonymous with
“unevenness,” Appellant does not provide an adequate explanation why one
skilled in the art would understand this is so. Nor does Appellant address
adequately the Examiner’s analysis that “level” and “flatness” refer to
different aspects of an object. Further, as previously noted, Appellant
expressly concedes that the terms “unevenness” and “flatness” are similar to
“roughness” (Reply Br. 2), but Appellant does not address how the phrase
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“uneven level” relates to “roughness.” Thus, Appellant has not explained
how the claim notifies the public of what they are excluded from making and
using.
Our determination concerning the indefiniteness of the term “uneven
level” also renders the claim language “form an uneven shape with an
uneven level of 2μm or less in the plurality of concavities” as indefinite for
the reasons we give above.
Accordingly, we affirm the Examiner’s rejection of claim 16 under
35 U.S.C. § 112, second paragraph, for the reasons the Examiner presents
and we give above.

CONCLUSION
Because neither of the affirmed rejections reach all the claims, our
decision is an affirmance in part.
In summary:

Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
2, 5–11, 15,
16
112, first
paragraph
Written description 16 2, 5–11,
15
2, 5–11, 15,
16
112, second
paragraph
Indefiniteness 16 2, 5–11,
15
Overall
Outcome
16 2, 5–11,
15

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)(1)(iv).
AFFIRMED IN PART