Frohlich argues that Baldwin claims 20-40 and 44-49 are unpatentable under 35 U.S.C. §
112. Although Frolich does not specify which paragraph of section 112 Baldwin has violated, it
appears that Frohlich disagrees that there is written description support for Baldwin claims 20-40
and 44-492. Specifically, Frohlich argues that the claims are “not supported in the specification”
of Baldwin (motion at 5-6).
Frohlich advances two arguments. The first is that Baldwin’s claims be interpreted in
light of Frohlich’s specification, and in doing so, the Baldwin specification lacks written
description for certain claim terms. Frohlich additionally argues that even if Baldwin’s claims
are interpreted in light of Baldwin’s specification, the Baldwin specification lacks written
description for certain claim terms. Frohlich has failed to sufficiently demonstrate that Baldwin
lacks written description in either case.
Baldwin independent claims 20, 30, and 40 recite “a layer of phase change material.”
Frohlich relies on In re Spina, 975 F.2d 854, 24 USPQ2d 1142, 1144 (Fed. Cir. 1992) for the
proposition that a copied claim is interpreted in light of the patent from which it was copied.
Frohlich argues that the term “a layer of phase change material”, when interpreted in light of
Frohlich’s specification, does not mean a phase change material in any form, but means a solid,
discrete layer of phase change material (motion at 8).
In contrast to Spina, Rule 633(a) expressly provides that:
In deciding an issue raised in a motion filed under this paragraph (a), a claim will be
construed in light of the specification of the application or patent in which it appears.
In Rowe v. Dror, 112 F.3d 473, 42 USPQ2d 1550 (Fed. Cir. 1997), the court distinguished Spina
2 Note, that the movant must clearly state the reason for the relief requested. 37 CFR §
1.637(a).
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