BoxInterferences@USPTO.gov Paper 40
`Tel: 571-272-9797
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` Filed: June 14 2011
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
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`
`DAVID SHAFER, WILHELM ULRICH,
`AURELIAN DODOC, RUDOLF VON BUENAU,
`HANS-JUERGEN MANN, ALEXANDER EPPLE,
`SUSANNE BEDER, and WOLFGANG SINGER
`Junior Party
`(Application 12/561,019),
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`v.
`
`YASUHIRO OMURA
`Senior Party
`(Patent 7,309,870).
`_______________
`
`Patent Interference No. 105,753 (SCM)
`(Technology Center 2800)
`_______________
`
`Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C. MEDLEY,
`Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`DECISION – ORDER TO SHOW CAUSE – Bd. R. 104(a)
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`ZEISS 1023
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`Interference 105,753
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`Omura was ordered to show cause why judgment should not be entered
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`against it. (Papers 3 and 32). Omura responded. (Papers 16 and 33). Upon
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`considering Omura‟s responses, and for the reasons that follow, judgment is
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`entered against Omura.
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`ANALYSIS
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`I.
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`A.
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`BACKGROUND AND OVERVIEW
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` The „678 Interference
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`This interference is related to interference 105,678 („678), also between
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`Shafer and Omura. The „678 interference was declared with a single Count 1 (“the
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`„678 count”). Omura was involved based on its 7,309,870 (“‟870”) patent and
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`Shafer was involved based on its 11/653,366 (“‟366”) application. The sole count
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`in the „678 interference was Omura claim 23 or Shafer claim 23. Omura
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`claims 21-24 and Shafer „366 claims 21-24 corresponded to the „678 count.
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`(„678 Paper 1 at 4).
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`On 31 August 2009, judgment was entered against Omura as to the subject
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`matter of the „678 count and Omura claims 21-24, which corresponded to the
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`„678 count, were cancelled pursuant to 35 U.S.C. § 135(a). („678 Paper 49).
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`Omura appealed to the Federal Circuit. Omura v. Shafer, 2010-1357 (Fed. Cir.
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`2011).
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`B.
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`The „753 Interference
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`While the appeal was pending, an examiner recommended that an
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`interference be declared between a different Shafer application, application
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`12/561,019 (“‟019), with a single claim 20, and Omura‟s „870 patent with its
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`Interference 105,753
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`identical claim 20. It came to the Board‟s attention that Omura „870 claim 20 is
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`nearly identical to Omura „870 claim 22, a claim that was cancelled pursuant to
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`35 U.S.C. § 135(a) in „678. (‟678 Paper 1 at 4).
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`On 29 June 2010, this interference („753) was declared with a single count
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`(“the „753 count”). The „753 count is Omura claim 20 or Shafer claim 20.
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`(Paper 1 at 4). Only Omura claim 20 and Shafer claim 20 correspond to the
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`„753 count. The Declaration of Interference was accompanied by an order for
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`Omura to show cause why judgment should not be entered against it.1 (Paper 3).
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`As explained in that paper, although Omura claim 20 is not identical to the lost
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`count in „678, Omura claim 20 is nearly identical to Omura claim 22 that was
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`involved in the „678 interference and was cancelled. On that basis, the Board
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`explained that it was of the impression that Omura claim 20, the sole involved
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`Omura claim in this interference, is not separately patentable from the count that
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`Omura lost in „678. (Paper 3).
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`Omura responded and requested the Board stay the „753 interference
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`pending the outcome of the appeal to the Federal Circuit. (Paper 16 at 2:6-8).
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`An issue before the Federal Circuit was whether the Board abused its discretion by
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`construing Omura‟s actions as a request for adverse judgment as to the contested
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`subject matter, e.g., the „678 count. Omura v. Shafer, 2010-1357 (Fed. Cir. 2011).
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` The Board agreed with Omura that because the Federal Circuit‟s decision would
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`1 The Order to Show Cause requested Omura to show (1) why Omura claim 20 was
`patentable under the written description requirement of 35 U.S.C. § 112, ¶ 1 and
`(2) why judgment should not be entered against Omura based on the „678 count
`Omura lost. (Paper 3). This opinion addresses only the second basis for the show
`cause order.
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`Interference 105,753
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`affect (and likely control) the outcome of this interference (see, e.g., Paper 16 at
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`2:6-8), this interference was stayed pending a decision by the Federal Circuit.
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`(Paper 20). Subsequently, the Federal Circuit affirmed the Board‟s decision in
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`„678. Id. Specifically, the Federal Circuit did not disturb the Board‟s entry of
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`judgment against Omura as to the „678 count.
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`As a result of a subsequent conference call, the Board gave Omura an
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`additional opportunity to show, with supporting evidence, why Omura claim 20 is
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`separately patentable, e.g., patentably distinct, from the „678 count that Omura lost.
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` (Paper 32). Omura responded and argues that its claim 20 is patentably distinct
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`from the count it lost in the „678 interference. (Paper 33 at 5).
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`II.
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` PRINCIPLES OF LAW
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`Claims of a party which are not patentably distinct from the subject matter of
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`an interference count lost by that party are unpatentable to that party. In re
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`Deckler, 977 F.2d 1449, 1452 (Fed. Cir. 1992).
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`A claim is not patentably distinct from the subject matter of a count if the
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`count would have either anticipated or rendered obvious the claim. Aelony v. Arni,
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`547 F.2d 566, 570 (CCPA 1977).
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`The evaluation of obviousness or non-obviousness involves (1) the scope
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`and content of the prior art, (2) the differences between the prior art and the claim
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`at issue, (3) the level of ordinary skill in the pertinent art; and (4) secondary
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`considerations, if any, of nonobviousness. Graham v. John Deere Co. of Kansas
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`City, 383 U.S. 1, 17-18 (1966).
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`Interference 105,753
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`III. OMURA CLAIM 20 AND THE „678 LOST COUNT
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`Omura argues that estoppel under “the doctrine of lost counts,” does not
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`support the entry of judgment against Omura because Omura claim 20 is separately
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`patentable from the „678 count. (Paper 33 at 5:4-16). A side-by-side comparison
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`of Omura claim 20 and Omura claim 23, e.g., the „678 count, is as follows
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`(differences highlighted):
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`Omura claim 20
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`Omura claim 23 („678 count)
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` A catadioptric projection objective for
`imaging a pattern provided in an object
`surface of the projection objective onto
`an image surface of the projection
`objective comprising:
` a first, refractive objective part for
`imaging the pattern provided in the
`object surface into a first intermediate
`image;
` a second objective part for imaging
`the first intermediate image into a
`second intermediate image;
` a third, refractive objective part for
`imaging the second intermediate image
`onto the image surface;
` wherein the second objective part
`includes a first concave mirror having a
`first continuous mirror surface and a
`second concave mirror having a second
`continuous mirror surface;
` pupil surfaces are formed between
`the object plane and the first
`intermediate image, between the first
`and the second intermediate images and
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`A catadioptric projection objective for
`imaging a pattern provided in an object
`surface of the projection objective onto
`an image surface of the projection
`objective comprising:
` a first, refractive objective part for
`imaging the pattern provided in the
`object surface into a first intermediate
`image;
` a second objective part for imaging
`the first intermediate image into a
`second intermediate image;
` a third, refractive objective part for
`imaging the second intermediate image
`onto the image surface;
` wherein the second objective part
`includes a first concave mirror having a
`first continuous mirror surface and a
`second concave mirror having a second
`continuous mirror surface;
` pupil surfaces are formed between
`the object plane and the first
`intermediate image, between the first
`and the second intermediate images and
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`Interference 105,753
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`between the second intermediate image
`and the image plane;
` all concave mirrors are arranged
`optically remote from a pupil surface;
` the first objective part has a first
`number N1AS of aspheric lenses;
` the third objective part has a second
`number N3AS of aspheric lenses;
` an aspheric lens ratio ASR= N1AS/
`N3AS is smaller than 1; and
` an image side numerical aperture
`NA is larger than 1.2.
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`between the second intermediate image
`and the image plane;
` all concave mirrors are arranged
`optically remote from a pupil surface;
` the first objective part has a first
`number N1AS of aspheric lenses; and
` wherein the condition N1AS< 3
`holds.
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`Omura asserts that there are two limitations that are not disclosed or
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`suggested by the „678 count: (1) “an aspheric ratio ASR= N1AS/ N3AS is smaller
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`than 1,” and (2) “an image side numerical aperture NA is larger than 1.2.”
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`(Paper 33 at 6:16-20). Omura has sufficiently demonstrated that the „678 count
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`would not have anticipated Omura claim 20. Omura claim 20 includes limitations
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`not included in the „678 count. That does not end the inquiry, however. In
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`response to the order to show cause, Omura must also show that given the
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`„678 count as prior art, Omura claim 20 would not have been obvious.
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`Aspheric ratio ASR= N1AS/ N3AS smaller than 1
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`Omura argues that the limitation “an aspheric ratio ASR= N1AS/ N3AS is
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`smaller than 1” requires that the first objective part has fewer aspheric lenses than
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`the third objective part. The „678 count, Omura argues, does not specify that the
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`third objective part contain any aspheric lenses, a value without which ASR cannot
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`be calculated. (Paper 33 at 9:10-12). Omura further argues that there is no
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`teaching or suggestion to include fewer aspheric lenses in the first objective part
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`Interference 105,753
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`than the third objective part, and therefore, one of ordinary skill in the art would
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`not have found it obvious to limit an ASR value based on the „678 count. (Id. at
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`9:12-16). Omura relies on the testimony of Dr. Ruda to support these arguments.
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`The pertinent paragraphs (Ex. 1007) to which we are directed are reproduced here:
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`15. Additionally, there is no suggestion in the count of the
`„678 Interference to design a projection objective with any particular
`ASR value at all, let alone one within the claimed range of less that [sic] 1.
`By requiring that the ASR be smaller than 1, Omura claim 20 requires that
`the first objective part have fewer aspheric lenses than the third objective
`part. In contrast, the count of the „678 Interference does not suggest that the
`third objective part contain any aspheric lenses (N3AS), a value without
`which ASR cannot be calculated. There is no teaching or suggestion in the
`count of the „678 Interference to include fewer aspheric lenses in the first
`objective part than the third objective part. One of ordinary skill in the art
`would not have found it obvious to limit an ASR value of a catadioptric
`projection objective based on the count of the „678 Interference. (Ex. 1007).
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`19. Similarly, because one of ordinary skill in the art would not have
`found it obvious to limit an ASR to less than 1, or to limit a numerical
`aperture to greater than 1.2, in a catadioptric projection objective, one of
`ordinary skill in the art would not have understood Omura claim 20 to be
`obvious in view of the count of the „678 Interference if the count was
`considered to be prior art. (Id.).
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`There is no indication that Dr. Ruda takes into account what was known to
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`the person of ordinary skill in the art at the time of the invention with respect to
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`aspheric ratios such as the one claimed in Omura claim 20. Ruda‟s statements that
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`there is no teaching or suggestion in the ‘678 count to include fewer aspheric
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`lenses in the first objective part than the third objective part or that one of ordinary
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`skill in the art would not have found it obvious to limit an ASR value based on the
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`Interference 105,753
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` ‘678 count is insufficient to demonstrate the nonobviousness of Omura claim
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`20 in view of the „678 count. Specifically, what is missing is an accounting for the
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`known prior art at the time of the invention. Dr. Ruda does not discuss any prior
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`art or indicate that he was unaware of any prior art that would, when combined
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`with the „678 count, not result in Omura claim 20. It is not sufficient to say that
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`the count alone does not teach or suggest a certain claimed feature. Nor is it
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`sufficient to say that a claim would not have been obvious based on the count.
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`There must be an accounting of the relevant prior art beyond the „678 count. See,
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`e.g., Pechiney v. Cryovac, 73 USPQ2d 1571, 1577-1578 (BPAI 2004). For
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`example, one might meet its burden by providing testimony by a person skilled in
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`the art that he is unaware of any prior art that would provide a reason to modify the
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`primary reference (e.g., the „678 count). Alternatively, Omura or Dr. Ruda could
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`have discussed the prior art cited during prosecution of either the involved Omura
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`or Shafer cases, or the prior art cited during the „678 Interference. (See e.g.,
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`Interference 105,678, Paper 20 at 5-6; Shafer‟s listing of prior art that allegedly
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`renders Omura claims 21, 22 (which is nearly identical to Omura claim 20), 23 and
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`24 unpatentable.) Based on the record before us, neither Omura nor its expert,
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` Dr. Ruda make an accounting of the relevant prior art.
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`Moreover, even if Dr. Ruda‟s statement in paragraph 19 of his testimony
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`means that, based on his opinion, a person of ordinary skill in the art would not
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`have understood Omura claim 20 to be obvious in view of the count of the
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`„678 Interference based on the known prior art or based on the general knowledge
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`of the person of ordinary skill in the art, such representations are not supported by
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`a factual basis. Cf. UpJohn Co. v. Mova Pharm, Corp., 225 F.3d 1306, 1311
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`Interference 105,753
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`(Fed. Cir. 2000) (“At this critical point in the determination of obviousness, there
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`must be factual support for an expert‟s conclusory opinion.”). Expert testimony
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`that does not disclose the underlying facts or data on which an opinion is based is
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`entitled to little or no weight. Bd.R. 158(a). See also Rohm and Haas Co. v.
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`Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Again, Dr. Ruda should
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`have discussed the known prior art in a meaningful way, which he did not.
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`An image side numerical aperture NA is larger than 1.2
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`Omura recognizes that all catadioptric projection objectives have an image
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`side numerical aperture. Omura contends, however, that one skilled in the art
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`would have found no suggestion in the „678 count that the projection objective
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`would have a numerical aperture value greater than 1.2 or any particular value at
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`all. Omura further argues that one skilled in the art would not have found it
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`obvious to require that the numerical aperture of catadioptric projection objective
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`of the „678 count have a value greater than 1.2. In support of the arguments made,
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`Omura directs us to Dr. Ruda‟s declaration (Ex. 1007) portions of which are
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`reproduced here:
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`17. Additionally, while all catadioptric projection objectives have an
`image side numerical aperture, one of ordinary skill in the art would have
`found no suggestion in the count of the „678 Interference that the projection
`objective have a numerical aperture value greater than 1.2 or any particular
`value at all. Consequently, one of ordinary skill in the art would not have
`found it obvious to limit an NA value of a catadioptric projection objective
`to greater than 1.2 based on the count of the „678 Interference. (Ex. 1007).
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`19. Similarly, because one of ordinary skill in the art would not have
`found it obvious to limit an ASR to less than 1, or to limit a numerical
`aperture to greater than 1.2, in a catadioptric projection objective, one of
`ordinary skill in the art would not have understood Omura claim 20 to be
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`Interference 105,753
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`obvious in view of the count of the „678 Interference if the count was
`considered to be prior art. (Id.).
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`The analysis is similar to that above. There is no indication that Dr. Ruda
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`takes into account what was known to the person of ordinary skill in the art at the
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`time of the invention with respect to numerical aperture values such as the one
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`claimed in Omura claim 20. Ruda‟s statements that one of ordinary skill in the art
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`would have found no suggestion in the count of the „678 Interference that the
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`projection objective have a numerical aperture value greater than 1.2 or any
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`particular value at all is insufficient to demonstrate the nonobviousness of Omura
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`claim 20 in view of the „678 count. Again, what is missing is an accounting for the
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`known prior art at the time of the invention. Dr. Ruda does not discuss any prior
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`art or indicate that he was unaware of any prior art that would, when combined
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`with the „678 count, not result in Omura claim 20. It is not sufficient to say that
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`the count alone does not teach or suggest a certain claimed feature. Nor is it
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`sufficient to say that a claim would not have been obvious based on the count.
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`There must be an accounting of the relevant prior art beyond the „678 count as
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`already explained. For example, in the background section of Omura‟s involved
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`patent, it is described that higher resolving power resolution is required for
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`projection optical systems and that to achieve that goal it is desirable to increase
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`the image-side numerical aperture NA of the projection optical system.
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`(„870 patent, col. 1:29-43). It is further described in Omura‟s patent that there is a
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`“known technology of increasing the numerical aperture NA… .” („870 patent,
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`col. 1:57-58). Yet, neither Omura nor Dr. Ruda explain this technology and how
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`Interference 105,753
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`the technology would or would not account for an image side numerical aperture
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`NA that is larger than 1.2.
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`For reasons already articulated above, with respect to paragraph 19 of
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`Ruda‟s testimony, the testimony is conclusory, not supported by a sufficient factual
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`basis, and is entitled to little, if any, weight.
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`For all of the above reasons, Omura has not sufficiently shown that Omura
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`claim 20 is patentably distinct from the „678 count.
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`IV.
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` OMURA‟S ARGUMENT TO CONTINUE THIS INTERFERENCE
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`Omura argues that because the Board did not include Omura claim 20 in the
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`„678 Interference, the Board effectively made a determination that Omura claim 20
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`is separately patentable from the „678 count. (Paper 33 at 10). Omura also argues
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`that because neither Omura nor Shafer requested to file a motion seeking to
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`designate Omura claim 20 as corresponding to the „678 count during the
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`„678 Interference, neither party believed Omura claim 20 to be to the same
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`patentable invention as the „678 count. (Paper 33 at 11). Omura argues that the
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`Board should not reverse these earlier determinations, but continue with this
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`interference. (Id.).
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`We agree that at the time the „678 Interference was declared, the Board did
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`not designate Omura claim 20 as corresponding to the „678 Count. However,
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`subsequent to that determination, other events took place that led the Board to
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`believe that Omura claim 20 is to the same patentable invention as the „678 count,
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`and thus the Order to Show Cause in this interference. We also agree that neither
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`party sought to include Omura claim 20 in the „678 Interference, but Omura claim
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`20 is nearly identical to Omura claim 22 and Shafer „366 claim 22, claims that
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`Interference 105,753
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`were involved in the „678 interference. We note that neither party sought to
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`undesignate either Shafer claim 22 or Omura claim 22 from corresponding to the
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`„678 count during the „678 Interference. Lastly, before this interference was
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`declared, Shafer filed a terminal disclaimer in its „019 application to “obviate any
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`possible obviousness-type double patenting rejection in view of” the „366 Shafer
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`application. („019 application, 16 September 2009 Remarks). In other words,
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`based on the record before us it seems that Omura claim 20 was overlooked and
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`should have been included in the „678 interference all along. Whatever the reason
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`may be, we do not agree with Omura that we should maintain the status quo and
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`continue with this interference, all the while ignoring that Omura claim 20 is not
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`patentably distinct from the „678 count.
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`Congress did not intend for two patents to be issued to different parties for
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`the same patentable invention. Aelony v. Arni, 547 F.2d 566, 570 (CCPA 1977)
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`(“[sections 102, 103, and 135 of 35 U.S.C. clearly contemplate where different
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`inventive entities are concerned that only one patent should issue for inventions
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`which are either identical to or not patentably distinct from each other.”). If this
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`interference were to continue, Omura as the senior party could possibly prevail.
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`Omura claim 20 is nearly identical to Omura claim 22 that Omura lost in „678.
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`The result would be that Shafer would be issued a patent from its „366 application
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`with its claims 21-24 (Shafer „366 claim 22 nearly identical to Omura claim 20)
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`while Omura would be entitled to its claim 20. The result is that the Office would
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`issue two patents to different parties for the same patentable invention, an outcome
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`that Congress did not intend. For these reasons, we decline Omura‟s suggestion to
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`continue with this interference.
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`Interference 105,753
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`V.
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` ESTOPPEL IS NOT LIMITED
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`Based on a separate theory, apart from the “lost count” theory, Omura
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`alternatively argues that estoppel in this case is limited and does not support the
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`entry of judgment against Omura, because no determination as to who was the first
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`to invent the subject matter of the „678 count was made. (Paper 33 at 3:1 to 5:3).
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`We need not address Omura‟s alternative theory, since Omura has failed to
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`sufficiently demonstrate that Omura claim 20 is patentably distinct from the lost
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`„678 count. In any event, we disagree with Omura that the previous judgment in
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`„678 limits the effect of estoppel in this interference. Judgment was entered
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`against Omura with respect to the „678 count and that determination was not
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`disturbed by the Federal Circuit.
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`VI.
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` ADDING A REISSUE APPLICATION AND A CLAIM
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`Omura submits that it could file a reissue application and include a
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`patentable claim to it and continue with this interference. (Paper 16 at 5-6).
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`Presumably, Omura believes that the claim that it would add to the interference
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`would interfere with Shafer claim 20 which is identical to Omura claim 20;
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`otherwise the claim would not be added. See, Winter v. Fujita, 53 USPQ2d 1234,
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`1248 (BPAI 1999). However, the Board would not authorize Omura to add a claim
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`to the interference where that claim would also suffer from the same problems that
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`Omura‟s current claim does. That is, Omura would not be entitled to such a claim
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`since the claim would not be patentably distinct from the lost „678 count.
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`VII. CONCLUSION
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`Based on the record before us, Omura has not sufficiently shown that Omura
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`claim 20 is patentably distinct from the lost „678 count. We have determined that
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`Interference 105,753
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`this interference should not continue. Accordingly, judgment is entered against
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`Omura in a separate, concurring paper.
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`Interference 105,753
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`cc (via e-mail):
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`Attorney for Shafer:
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`Marc M. Wefers, Ph.D., Esq.
`Chris C. Bowley, Ph.D., Esq.
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`Tel: 617-521-7857
`Email: wefers@fr.com
`Email: bowley@fr.com
`
`Oliver R. Ashe, Jr., Esq.
`ASHE, P.C.
`11440 Isaac Newton Sq. North
`Suite 210
`Reston, VA 20190
`Tel: 703-467-9001
`Email: oashe@ashepc.com
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`Attorney for Omura:
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`Barry E. Bretschneider, Esq.
`Jonathan Bockman, Esq.
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`Tel: 703-760-7700
`Email: bbretschneider@mofo.com
`Email: pdavis@mofo.com
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