Ex Parte Ikenaga

Patent Trial and Appeal BoardSep 20, 2012

11712367 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/712,367 03/01/2007 Osamu Ikenaga 04329.4123 8180 22852 7590 09/21/2012 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER YOUNG, CHRISTOPHER G ART UNIT PAPER NUMBER 1721 MAIL DATE DELIVERY MODE 09/21/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte OSAMU IKENAGA ________________ Appeal 2011-009836 Application 11/712,367 Technology Center 1700 ________________ Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 12 and 15-17 of Application 11/712,367 under 35 U.S.C. § 102(b) as anticipated. Appellant seeks reversal of this rejection pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. Appeal 2011-009836 Application 11/712,367 2 BACKGROUND The ’367 application describes a method for making photomasks for use in semiconductor fabrication. Spec. 1. In particular, information that can be used to control inspection of the mask for defects is encoded on the photomask in the form of one or more two-dimensional barcode(s). Id. at 10, 16. Claim 12 is the ’367 application’s only independent claim and is reproduced below: 12. A photomask comprising a pattern obtained by coding information including inspection information for inspecting the photomask and an information attribute which identifies a type of the inspection information, wherein the pattern comprises a two-dimensional barcode, and wherein a plurality of two-dimensional barcodes are arranged when information is not expressed by one two-dimensional barcode or information attributes to be expressed by another two-dimensional barcode are different. App. Br. 16 (emphasis added). REJECTIONS The Examiner finally rejected claims 12 and 15-17 of the ’367 application under 35 U.S.C. § 102(b) as anticipated by Patent Abstracts of Japan Publication No. 03-013945 (“Yasuo,” published Jan. 22, 1991). DISCUSSION Appellant argues that the Examiner’s rejection errs because Yasuo does not disclose the use of a two dimensional barcode to encode inspection information for a photomask. App. Br. 12. The Examiner found that Yasuo Appeal 2011-009836 Application 11/712,367 3 did disclose the use of two dimensional barcodes because Yasuo describes the use of barcodes to encode inspection information. Ans. 4. The Examiner states that the barcodes described in Yasuo must be two-dimensional barcodes because “a barcode, by basic definition, must exist in at least an[] x-y plane[;] [thus] it is clearly two-dimensional.” Id. We agree with the Appellant. During prosecution, we give the claims in an application a broad interpretation consistent with the ordinary meaning of the term in the art. See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms but otherwise apply a broad interpretation.”). In this case, it is clear that the broadest reasonable interpretation of the term “two-dimensional barcode” is a barcode that encodes information in a two-dimensional pattern. This is the ordinary meaning of the term in the art. It also is consistent with Appellant’s disclosure. See, e.g., ’367 application Fig. 4. The Examiner’s interpretation, which encompasses linear barcodes because the pattern is extended in a direction perpendicular to the direction in which information is encoded, is not reasonable. A person of ordinary skill in the art, armed with the proper interpretation of the term “two-dimensional barcode,” would understand that Yasuo does not use such barcodes to encode inspection information. The Examiner’s conclusion to the contrary is erroneous. Appeal 2011-009836 Application 11/712,367 4 CONCLUSION For the reasons set forth above, we cannot sustain the Examiner’s rejection of claims 12 and 15-17 of the ’367 application as anticipated by Yasuo. REVERSED tc/cam