Interference No. 105,028
Figure 2b, the width of the side of the finger is substantially uniform, not recessed at one end
from the location of the notch or groove 126. In the embodiments presented in the Holbrooks
application, the plurality of fingers or posts grip or grasp the wafer, without a lower surface 42 of
the grooves being disclosed as a pad portion for supporting the wafer. It is not sufficient for
inherency that a person following the disclosure of Holbrooks might obtain the result set forth in
the claims, it must invariably happen. Scaltech Inc. v. Retec/Tetra, LLC., 178 F.3d 1378, 1384,
51 USPQ2d 1055, 1059 (Fed. Cir. 1999); Snitzer v. Etzel, 531 F.2d 1062, 189 USPQ 415 (CCPA
1976). Bacchi has established that a person following Holbrooks’ disclosure would not
invariably obtain the subject matter set forth in the claims of a pad portion for supporting the
edge of a specimen or wafer.
The fact that the primary examiner ultimately found that Holbrooks’ specification
complied with the requirements of 35 U.S.C. § 112, first paragraph, is not controlling as to the
written description issued raised by Bacchi. The Board is not bound by a primary examiner’s
decision on an issue of patentability because 37 CFR § 1.633(a) provides for motions for
judgment against a party by an opponent on the grounds of unpatentability of the party’s
involved claims. As to the Fiers case, it is not controlling here. Fiers stands for the proposition
that once a primary examiner in ex parte practice accepts the sufficiency of a specification such
as Holbrooks’, the inventor has no further burden to prove before the examiner by extrinsic
evidence that its application satisfies the written description requirement of 35 U.S.C. § 112, first
paragraph. In contrast, this is an inter partes proceeding before the Board. Bacchi filed its
Motion 3 under 37 CFR § 1.633(a) and challenged Holbrooks’ compliance with the written
description requirement of the above statute. Whereas that portion of Fiers relied on by
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