Appeal No. 2006-1164
Application No. 10/139,185
specifically, the Examiner considers the foam or bubbles in patentee’s method to
read on the particles in the here claimed method. We agree with the Appellants’
position, however, that the claim term “particle” must be read in the context of
their specification (Phillips v. AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321,
1326 (Fed. Cir. 2005)) and that, when so read, the here claimed “particle” in an
ultra pure liquid would be interpreted by an artisan as a solid in liquid rather than
gas bubbles in liquid.
In any event, as previously noted, neither Stahlecker nor Mekata contains
any express or inherent teaching or suggestion of handling ultra pure liquids. The
Examiner’s opposing viewpoint is not supported by evidence or techncial
reasoning of any kind.
In light of the foregoing, it is our determination that the Examiner has failed
to establish a prima facie case of unpatentability under Section 102 and under
Section 103 with respect to the method claims on appeal. Therefore, we hereby
reverse: The Section 102 rejection based on Stahlecker of method claims 1, 10, 14-
16 and 46; the Section 103 rejection based on Stahlecker of method claims 2 and
25; and the Section 103 rejection based on Mekata of method claims 1-5, 10, 13-
16, 24, 25 and 46.
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