Appeal 2006-3235
Reexamination Control No. 90/006,696
1 For the foregoing reasons, the testimony of Jung and Lim fails to
2 persuade us that the term “hot spot detection method” in the specification
3 and Claim 11 of the ‘857 patent would have been understood to be limited to
4 failure analysis.
5 Turning now to Burgess/Tan, that article is not even mentioned in the
6 specification of the ‘857 patent, let alone incorporated by reference therein.
7 Appellant is incorrect to treat it as incorporated by reference simply because
8 it was cited during the prosecution of the ‘857 patent (Br. 9-10). Also, while
9 it is true, as Appellant notes, that this article discusses hot spot detection
10 solely in the context of failure analysis, this does not demonstrate that the
11 terms “hot spot” and “hot spot detection method” would have been
12 understood to be limited to failure analysis by persons working in the
13 broader field of endeavor indicated by the ‘857 patent.
14 Appellant’s reliance on Mr. Burgess’s characterization of the field of
15 endeavor of the ‘857 patent as “the field of failure analysis” (Burgess Decl.
16 at 7, para. 27) and “the field of fault analysis” (id. at 12, para. 44) is
17 misplaced because that characterization is unsupported by any analysis.
18 Am. Acad., 367 F.3d at 1368, 70 USPQ2d at 1833.
19 Appellant’s reliance on the fact that the Reexamination Request
20 (signed by Mr. Westerlund) describes hot spots as being produced by failed
21 integrated circuits is misplaced because that description is unsubstantiated
22 attorney argument, which is no substitute for competent, substantiated expert
23 testimony. Invitrogen, 429 F.3d at 1068, 77 USPQ2d at 1172.
24 D. Conclusion
25 We hold that the relevant field of endeavor is the analysis of defective
26 and nondefective integrated circuits by using the phase transition property of
30
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