Appeal No. 2001-0570
Application No. 09/049,591
Barry, Administrative Patent Judge, concurring-in-part and dissenting-in-part:
I agree with the majority’s decision to affirm the examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as obvious over Tatsumi. In addition, I would affirm his
rejection of the claim under 35 U.S.C. § 112, ¶ 2, as indefinite.
I agree with the majority that, as a general proposition, the word "about" "is
acceptable language in patent claims. . . ." There are, however, situations wherein "the
word 'about' may lead to indefiniteness under Section 112, Para. 2." Eiselstein v.
Frank, 52 F.3d 1035, 1040, 34 USPQ2d 1467, 1471 (Fed. Cir. 1995) (citing Amgen, Inc.
v. Chugai Pharm. Co., 927 F.2d 1200, 1218, 18 USPQ2d 1016, 1031 (Fed. Cir.
1991)). One such situation is "especially when, as is the case here, there is close prior
art. . . ." Amgen, 927 F.2d at 1218, 18 USPQ2d at 1031.
Prior art does not get much closer to a claimed limitation than it does in the
instant appeal. More specifically, claim 1 specifies in pertinent part the following
limitation: "a maximum thickness of less than about 30 nm. . . ." For its part, Tatsumi
discloses a thickness down to 30 nm. To wit, "it is possible to make grain size smaller
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