Appeal 2006-3235
Reexamination Control No. 90/006,696
1 LEE, Administrative Patent Judge, concurring.
2
3 Claim 11 begins with language introducing a “new use of liquid
4 crystal” and further expressing that the new use is “for detecting hot spot on
5 die or wafer with a hot spot detection method.” The referenced “hot spot
6 detection method” is not the claimed invention, but a redundant recitation of
7 the intended use. No step of any method has been set forth in the claim.
8 While Claims 1-10 are drawn to a method invention, Claim 11 is not. What
9 we have in Claim 11 are just the intended use of a specified material and the
10 material itself. Because the intended use of a material is not itself a
11 recognized class of statutory subject matter for patenting, I would construe
12 Claim 11 as a claim drawn to the material, accompanied by a recitation of
13 the material’s intended use. The law is clear that intended use is of no
14 patentable weight and cannot distinguish the recited material or composition
15 from the same composition or material in the prior art. E.g., In re Schreiber,
16 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The patent
17 owner acknowledges on page 50 of the appeal brief that K-24 nematic liquid
18 crystal, octylcyanobiphenyl, was a known and preexisting material.
19 Accordingly, whether or not Aszodi discloses “hot spot detection” is
20 irrelevant. Aszodi refers to K-24 nematic liquid crystal, octylcyanobiphenyl,
21 which the patent owner acknowledges as old. I would affirm the rejection of
22 Claim 11 for anticipation on that basis alone.
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