Ex parte Kim

Informative decision only: persuasive authority, not binding precedent. When a claim recites a relative limitation (here, that a finger-to-via "width ratio ... is reduced") and neither the claim nor the specification gives the artisan guidance on the baseline against which the comparison is made, the Board may affirm a rejection under 35 U.S.C. 112, second paragraph, as indefinite. Where the claims are indefinite in this way, the Board may reverse a prior art rejection pro forma without reaching its merits, because the claim scope cannot be understood without speculation. No prior precedent directly addressed this issue, as far as the text shows. For an examiner, the decision supports a section 112, second paragraph rejection of a comparative term, such as "reduced," that lacks a stated baseline. For the applicant, it shows that an argument about what is "reasonably assumed" fails without a factual basis. It also shows that a baseline found only in the specification, and not conveyed by the claim language, will not save the claim. A claim found indefinite is not patentable, and the prior art rejection is reversed only pro forma. The Board relied on In re Steele, 305 F.2d 859, 862 (CCPA 1962), and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), for the point that prior art rejections cannot rest on speculative assumptions about claim meaning. It also cited In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006), for the appellant's burden to show error. LEGAL TEST OR STANDARD: The Board asked whether the appellant showed that the examiner erred in finding the claims indefinite under 35 U.S.C. 112, second paragraph. The appellant bears the burden of showing error (In re Kahn). Claims get their broadest reasonable interpretation consistent with the specification (In re Hyatt), and limitations are not read into the claims from the specification (In re Van Geuns). The Board found the claim indefinite because, without some guidance to the artisan about the baseline ratio, the comparison in the claim could not be determined. TRIGGERING FACTS: Claim 1 recited that a width ratio of finger width to via width 'is reduced,' but no claim set an initial or baseline ratio. The appellant argued that a via on a minimum-width finger would not be substantially narrower than a via on a wider finger, but gave no factual basis for that assumption. The specification measured the reduction against the conventional prior art structure 100, and it was silent, as the claims were, on the requirement that the via width be similar to the prior art via width. KEY QUOTE: "Without some guidance to the artisan about the baseline ratio (what the Examiner terms as the "initial ratio R") to which the claimed "width ratio" is being compared, we agree with the Examiner that the claim is indefinite." (Paper N/A, p. 9) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board followed In re Steele, 305 F.2d 859, 862 (CCPA 1962), and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), in reversing the section 102 rejection pro forma. PRACTICE TIP: When a claim uses a relative or comparative term such as 'reduced,' recite the baseline or reference structure in the claim itself. Do not rely on an unstated assumption or on the specification to supply it. In an appeal brief, support any asserted assumption with facts.