Appeal 2006-3235
Reexamination Control No. 90/006,696
1 if it were explicitly contained therein.” Advanced Display Sys.,
2 Inc. v. Kent State Univ., 212 F.3d 1272, 1282 [54 USPQ2d
3 1673] (Fed. Cir. 2000) (citations omitted). “To incorporate
4 material by reference, the host document must identify with
5 detailed particularity what specific material it incorporates and
6 clearly indicate where that material is found in the various
7 documents.” Id. (citations omitted). Whether and to what
8 extent material has been incorporated by reference into a host
9 document is a question of law. Id.
10 (Bracketed citations in USPQ2d version.)
11 Expert testimony can be useful to establish that a term had a particular
12 meaning in the art as well as to provide background on the technology at
13 issue and explain how an invention works. Phillips, 415 F.3d at 1318,
14 75 USPQ2d at 1330. However, “the Board is entitled to weigh the
15 declarations and conclude that the lack of factual corroboration warrants
16 discounting the opinions expressed in the declarations.” Am. Acad.,
17 367 F.3d at 1368, 70 USPQ2d at 1833.
18 Finally, unsubstantiated attorney argument is no substitute for
19 competent, substantiated expert testimony. Invitrogen Corp. v. Clontech
20 Laboratories, Inc., 429 F.3d 1052, 1068, 77 USPQ2d 1161, 1172 (Fed.
21 Cir. 2005.
22 C. Analysis
23 The “Background” portion of the specification of the ‘857 patent
24 begins by explaining that there two known ways of using liquid crystals for
25 “analyzing integrated circuits” col. 1, ll. 6-7, and that the prior art methods
26 disclosed in Hiatt and Fleuren employ the phase transition property. Id. at
27 col. 1, ll. 10-11. The specification then goes on to explain that “[t]he
28 invention uses the phase transition property of the liquid crystal” and that
25
Page: Previous 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 Next
Last modified: September 9, 2013