Interference No. 105,028
meet the written description requirements of 35 U.S.C. § 112, first paragraph, and as anticipated
under 35 U.S.C. § 102(b).
Bacchi asserts that Holbrooks’ sole independent claims 17 and 26 require a distal rest pad
with a “pad portion for supporting” a wafer. It is urged that Holbrooks relies on surface 42 in
finger 105 of Figure 2b to support a pad portion for supporting a wafer. Bacchi argues that
Holbrooks does not explicitly describe or illustrate that surface 42 supports a wafer, and that
such support is not inherent. Bacchi submits that Holbrooks’ most relevant disclosure is that
groove 126 having surface 42 holds the wafer by gripping or grasping it. Referring to identical
sketches in the upper-right portions of pages 8 and 11 of its motion, Bacchi argues that
Holbrooks’ groove -- which is described by Holbrooks as small -- can grip the wafer without the
wafer contacting lower surface 42. Thus, Holbrooks’ actual disclosure does not necessitate that
Holbrooks’ surface 42, its alleged pad portion, supports the peripheral edge of the wafer.
Reliance is had on the Expert Declaration of Dr. John Davies (Exhibit 1025, paragraphs E12-
E16) to the effect that the wafer can be held, grasped, or gripped by the groove without being
supported, or even contacted, by surface 42. The position is taken that Holbrooks is not entitled
to rely on its amendment to its disclosure of June 2002, to the extent that it adds a written
description which supports the recitation of a “pad portion for supporting” the wafer.
Bacchi also argues that the involved application does not receive priority from any earlier
Holbrooks application because the claimed “pad portion for supporting” is also absent from the
disclosures of Holbrooks’ earlier applications. Accordingly, the effective filing date of
Holbrooks’ involved application is its actual filing date, August 28, 2001, and the involved
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007