Interference 104,530
Jurgenson v. Dunfield
broader in scope or coverage than the particular embodiments
described.
Dunfield has failed to sufficiently demonstrate that its
earlier application conveys to one of ordinary skill in the
art that the microactuator must necessarily be mounted on the
distal end of the load beam. In In re Berger, 279 F.3d 975,
61 USPQ2d 1523 (Fed. Cir 2002), applicant’s inherency
argument was rejected as the court made clear that the
applicant could not rely on the content of his specification
and drawings to satisfy section 135(b). As stated therein,
precedent makes clear that “[t]he inquiry here is not whether
such a step is inherently disclosed, as it might be in a
right-to-make case. Rather, the question is whether the step
necessarily occurs in the process as claimed” (quoting Parks
v. Fine, 773 F.2d 1577, 1580, 227 USPQ 432, 434 (Fed. Cir.
1985)).
Furthermore, Dunfield has not demonstrated that “the
distal end of the load beam” is substantively the same as
“the rigid part of the load beam.” Even if the distal end is
a portion of the rigid portion, that is still not sufficient
basis to equate the two. For instance, if the rigid portion
includes areas other than the distal end, then the
- 21 -
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: November 3, 2007