Appeal 2006-3235
Reexamination Control No. 90/006,696
1 33, or K-36.28 This appears to be the interpretation adopted by the Examiner
2 and Appellant. Had the Examiner been of the view that the claim simply
3 recites the liquid crystals materials in the alternative, he presumably would
4 have rejected the claim for anticipation by K-18, which the specification
5 indicates was obtained from E.M. Chemicals. Specification, col. 1,
6 ll. 61- 64.
7 As support for construing the term “hot spot detection method” in the
8 claim as limited to failure analysis, Appellant, Jung, and Lim essentially
9 repeat their arguments for construing the field of endeavor as limited to
10 failure analysis, arguments which are unconvincing for the reasons given
11 above. Their reliance on the ‘857 patent’s example of a short-circuited
12 diode to limit the claimed “hot spot detection method” to failure analysis
13 constitutes an improper attempt to read a disclosed example into the claim,
14 Constant, 848 F.2d at 1571, 7 USPQ2d at 1064, or limit the claim to the sole
15 disclosed embodiment. Conoco, 460 F.3d at 1357-58, 79 USPQ2d at 1807.
28 In the civil action, it was argued that a new use of a known
composition must be claimed as a process under 35 U.S.C. §§ 101 and
100(b) and that Claim 11 is unpatentable because the limitation "for
detecting hot spot on die or wafer with a hot spot detection method" recites
an intended use rather than a process step. See In re Moreton, 288 F.2d 708,
709, 129 USPQ 227, 228 (CCPA 1961) ("[S]ince one cannot claim a new
use per se, because it is not among the categories of patentable inventions
specified in 35 U.S.C. 101, [the invention] is claimed as a method, as
permitted by 35 U.S.C. 100(b)."); In re Wiggins, 397 F.2d 356, 359 n.4,
158 USPQ 199, 201 n.4 (CCPA 1968). It was further argued that because
Claim 11 attempts to claim a process without reciting any process steps, it
fails the definiteness requirement of 35 U.S.C. § 112, second paragraph.
Because reexamination proceedings may not consider these issues for
original claims, we express no opinion on those issues.
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