Board of Patent Appeals Rejects Key SONY Invention under 35 U.S.C. 112, 1st Para. – Florida Patent Lawyer Blog

Written by Mark Terry   

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal.

Sony’s invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed “a main body with a plurality of substrates bonded together.” Representative claim 11 recited a first glass with a first substrate and a second glass with a second substrate. The Examiner rejected claim 11 under 35 U.S.C. sec. 112, first paragraph, arguing the written description did not disclose the second glass with the second substrate.

As the BPAI stated: “Appellants appear to argue that because the original Specification describes bonding a plurality of substrates where the base material is silicon or glass, then it must follow that the original Specification also describes bonding a ‘plurality of glass substrates,’ i.e., a first glass substrate and a second glass substrate.”

The BPAI decided against the Appellants, stating: “We agree with the Examiner that the Specification discloses a device that is composed of only a glass substrate and a silicon substrate … The Specification conveys with reasonable clarity to a person of ordinary skill in the art only that the claimed micro heat-transport device includes a silicon substrate … and a glass substrate … Just because Appellants’ Specification describes bonding a plurality of substrates of glass or silicon, we do not find that this by itself, without more, conveys with reasonable clarity to a person of ordinary skill in the art bonding a plurality of glass substrates. To follow Appellants’ logic would mean that the Specification also describes bonding a plurality of silicon substrates. We do not find that Appellants’ Specification conveys with reasonable clarity such embodiments, i.e., bonding a plurality of glass substrates or a plurality of silicon substrates. Rather, the Specification conveys with reasonable clarity only bonding a glass substrate and a silicon substrate.”

The lesson learned here is the criteria for meeting the written description requirement: conveying with reasonable clarity to a POSITA. To satisfy the written description requirement, the disclosure must convey with reasonable clarity to skilled artisans that the Appellants were in possession of the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Thus, when writing your written description, be careful to make a list of all embodiments you are or may be claiming in the future, and make sure it is disclosed with reasonable clarity to a POSITA.

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