Ex Parte Longoni et al

Patent Trials and Appeals BoardJul 19, 2018

12526307 - (D) (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/526,307 08/07/2009 72932 7590 07/19/2018 Steinfl + Bruno LLP 155 N. Lake Ave. Ste 700 Pasadena, CA 91101 FIRST NAMED INVENTOR Giorgio Langoni 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Pl412-US 5297 EXAMINER PAGAN, JENINE MARIE ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 07/19/2018 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 GIORGIO LONGONI and MARCO AMIOTTI Appeal2018-001599 Application 12/526,307 1 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Giorgio Longoni and Marco Amiotti ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision (mailed Jan. 6, 2017, hereinafter "Final Act.") rejecting claims 29--32, 35--42, 57, and 58. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to Appellants, the real party in interest is SAES GETTERS S.P.A. Appeal Br. 2 (filed May 26, 2017). 2 Claims 1-28, 33-34, and 43--49 have been canceled and claims 50-56 have been withdrawn. Appeal Br. 2. Appeal2018-001599 Application 12/526,307 INVENTION Appellants' invention relates to "alkali or alkaline-earth metal dispensers stable to environmental gases, in particular air, especially adapted for use in the fabrication of miniaturized devices." Spec. 1. Claim 29, reproduced below, is the sole independent claim from which the remaining claims on appeal depend and is representative of the claimed subject matter: 29. A dispenser of an alkali or alkaline-earth metal stable to environmental gases, wherein the dispenser comprises a support carrying a deposit of a getter material and wherein the dispenser contains a deposit of an alkali or alkaline-earth metal and releases the alkali or alkaline-earth metal, and wherein the alkali or alkaline-earth metal is in a form of elemental metal in contact with and completely covered by said deposit of getter material, wherein the alkali or alkaline-earth metal is mechanically and chemically protected from the environment by being in contact with said deposit of getter material, and wherein said getter material is selected from the group consisting of hafnium, niobium, vanadium, titanium, zirconium, and titanium- and/or zirconium-based alloys with one or more elements selected from transition elements, Rare Earths and aluminum. Appeal Br. 30 (Claims App.). REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 29--32, 35--42, 57, and 58 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. II. The Examiner rejected claims 29--32, 35--42, 57, and 58 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement. 2 Appeal2018-001599 Application 12/526,307 III. The Examiner rejected claims 29--32, 35--42, 57, and 58 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. IV. The Examiner rejected claims 29--32, 35--42, 57, and 58 under 35 U.S.C. Â§ I03(a) as unpatentable over Nakamura (US 2004/0212297 Al, pub. Oct. 28, 2004) and Boffito (US 6,753,648 B2, iss. June 22, 2004). V. The Examiner rejected claims 29--32, 35--42, 57, and 58 under 35 U.S.C. Â§ I03(a) as unpatentable over Boffito and Nakamura. VI. The Examiner rejected claims 35, 36, and 40--42 under 35 U.S.C. Â§ I03(a) as unpatentable over Boffito, Nakamura, and Hasegawa (US 2004/0235209 Al, pub. Nov. 25, 2004). ANALYSIS Rejection I (Written Description) The Examiner determines claims 29--32, 35--42, 57, and 58 do not comply with the written description requirement because "[t]he specification does not sufficiently describe how the alkali or alkaline-earth metal is contained and dispensed in the elemental metal form." Final Act. 3; Ans. 3. The problem, the Examiner finds, is Appellants are relying on the "elemental" limitation and several prior art references, as well as the Specification, describe alkali or alkaline-earth metals "are usually not usually used in their elemental form." Id. (citing US 7,842,194, US 2005/0145179, US 2006/0257296). Appellants challenge this rejection as lacking sufficient support and argue the claims comply with the written description requirement. See Appeal Br. 7-10. 3 Appeal2018-001599 Application 12/526,307 The Examiner's analysis appears directed to enablement rather than written description. Written description and enablement are separate requirements under 35 U.S.C. Â§ 112, first paragraph. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). As such, they require different evaluations. See id. at 1352. Written description requires an evaluation of whether the Specification "clearly allows persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Id. at 1351. Enablement requires an evaluation of whether the Specification allows a skilled artisan to make and use the claimed invention without undue experimentation. See id. at 1352; see also United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (The enablement test evaluates "whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent [application] coupled with information known in the art without undue experimentation."). Thus, the appropriate question for testing the written description requirement is whether what is claimed is described sufficiently in the Specification, and not whether the Specification describes sufficiently how the alkali or alkaline-earth metal is contained and dispensed in the elemental metal form. The Examiner does not make a persuasive showing the Specification fails to describe what is claimed. In fact, the Examiner does not identify any specific claim limitation that the Specification does not describe expressly. Regarding a dispenser containing a deposit of alkali or alkaline-earth metal in its elemental metal form, the Specification states: the "present invention" relates to "a dispenser of an alkali or alkaline-earth metal, characterized by comprising a support carrying a deposit of a getter material and in that the alkali or alkaline-earth metal is present in the 4 Appeal2018-001599 Application 12/526,307 dispenser in the form of elemental metal protected from the environment by said deposit of getter material." Spec. 2-3. Therefore, we do not sustain the Examiner's written description rejection of claims 29-32, 35--42, 57, and 58. Rejection II (Enablement) The Examiner finds, "[t]he level of ordinary skill in the art appears to be that the use of elemental alkali or alkaline-earth metal is difficult and/ or unusual." Final Act. 6. In addition, "[t]he level of predictability in the art appears to be that using elemental alkali or alkaline-earth metal would present significant issues with regard to handling and construction of the resulting dispensers on account of the high reactivity of these metals with the environment." Id. In the Specification, the Examiner finds, "there is no specific disclosure regarding how the dispenser was formed, ... how [ elemental] metal, including the claimed cesium, was handled and placed on/in the dispenser, how the getter material was deposited on the elemental metal, etc., etc." Id. As a result, the Examiner determines, "[t]he quantity of experimentation needed to construct the claimed invention, based on the content of the disclosure ... , and taking into consideration the difficulty in using elemental alkaline earth metals such as cesium, ... would be undue in the examiners opinion." Id. The Examiner concludes, "[t]he claim(s) contains 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." Id. at 3. Appellants argue the Examiner's non-enablement analysis is improper because it fails to take into consideration all that the Specification teaches. See Appeal Br. 11-22. For the following reasons, we agree the Examiner's non-enablement rejection is flawed. 5 Appeal2018-001599 Application 12/526,307 As noted above, enablement requires an evaluation of whether the Specification allows a skilled artisan to make and use the claimed invention without undue experimentation. See Ariad Pharms., Inc., 598 F.3d at 1352; see also United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (The enablement test evaluates "whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent [application] coupled with information known in the art without undue experimentation."). While we appreciate that making and/or using the claimed invention may require difficult and/or unusual steps to be taken, the Examiner fails to establish properly that undue experimentation would also be necessary. The Specification specifically sets forth "a process for producing the dispenser" illustrated in Figures 1-6. Spec. ,r 3 7. In particular, the Specification teaches, "[ t ]he dispensers of the invention are produced with techniques typical of the semiconductors industry, with subsequent depositions of the various materials, delimiting the area of the support onto which the depositions take place by masking." Id. at ,r 38. Subsequent paragraphs 39-47 of the Specification detail a process and techniques for forming the claimed dispenser. Nevertheless, wholly missing from the Examiner's non-enablement rejection is any reference to these portions of the Specification. In particular, the Examiner provides no reasoning for why the disclosed "controlled thermal evaporation," "sputtering," and masking techniques are inadequate for making the claimed inventions. Nor does the Examiner explain, in view of these techniques and the described processes, what unknowns a skilled artisan still has that would require "undue 6 Appeal2018-001599 Application 12/526,307 experimentation." Therefore, we do not sustain the Examiner's non- enbalement rejection of 29--32, 35--42, 57, and 58. Rejection III (Indefiniteness) The Examiner determines claims 29-32, 35--42, 57, and 58 are indefinite because "it is unclear how to properly interpret ["alkali or alkaline-earth metal is in a form of elemental metal"] since the written description does not adequately describe the same." Final Act. 7. To determine whether a claim is sufficiently definite, a determination must be made "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." Morton Int'!, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). The Examiner fails to explain what is unclear about the meaning of the claim language, however. Therefore, we do not sustain the Examiner's indefiniteness rejection. Rejections IV-VI (Obviousness) For each of the obviousness rejections, the Examiner relies on Boffito to disclose the recitation in claim 29 that "the dispenser contains a deposit of an alkali or alkaline-earth metal and releases the alkali or alkaline-earth metal, and wherein the alkali or alkaline-earth metal is in a form of elemental metal in contact with and completely covered by said deposit of getter material." Final Act. 9, 12, 15; see also Appeal Br. 30 (Claims App.) ( emphasis added). Appellants contend Boffito does not support this finding because Boffito discloses the getter material surrounding the alkali or alkaline-earth metal as a "porous body 32." Appeal Br. 25-26 (quoting Boffito 4:32). Appellants rely on this same argument for each of the Examiner's obviousness rejections. See id. at 25-28. 7 Appeal2018-001599 Application 12/526,307 The Examiner does not dispute Appellants' characterization of Boffito' s disclosure, but asserts, "the material being porous does not negate from the fact that the getter material completely covers the metal." Ans. 7. 3 However, the Examiner does not offer any support from the Specification or the claims to support such a broad interpretation. Although the "porous body 32" of Boffito may "cover" the alkine material, we cannot agree it "completely covers" the material because there are openings (pores). Our understanding of the phrase "completely covered" finds support in the Specification, which consistently describes the getter material as forming a "layer" and having a "thickness" indicating getter material forms a total barrier (i.e., "completely covered"). Additionally, claim 29 recites, "wherein the alkali or alkaline-earth metal is mechanically and chemically protected from the environment by being in contact with said deposit of getter material," which also suggests the getter material forms a total barrier, rather than one with openings. Accordingly, the Examiner's finding that the "porous body 32" of Boffito discloses an alkali or alkaline-earth metal "completely covered" is dependent upon an unreasonably broad interpretation. Therefore, we do not sustain the Examiner's obviousness rejections. 3 We note that Boffito describes the porous body 3 2 as being formed by depositing getter material "on a supporting open structure, such as a wire net having meshes." Boffito 5:2-8. In this context, we understand the Examiner's statement that "the material being porous" to be referring to the openings in the mesh-type construction rather than an inherent property of the getter material itself. 8 Appeal2018-001599 Application 12/526,307 DECISION We reverse the Examiner's decision to reject claims 29--32, 35--42, and 57-58. REVERSED 9