Ex Parte Kumar et al

Patent Trial and Appeal Board

Dec 18, 2017

14269836 (P.T.A.B. Dec. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/269,836 05/05/2014 Prabhat Kumar HCS-024C1/7309893001 4588
23517 7590 12/20/2017
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
12/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kcatalano@morganlewis.com
patents @ morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRABHAT KUMAR, CHARLES WOOD,
GARY ROZAK, STEVEN A. MILLER,
GLEN ZEMAN, and RONG-CHEIN RICHARD WU
Appeal 2017-003360
Application 14/269,836
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 10-17. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2017-003360
Application 14/269,836
Claim 10 is illustrative of the subject matter on appeal and is
reproduced below:
1. A sputtering-target plate that is sputterable to form
highly uniform, low-resistivity films of a refractory metal
selected from the group consisting of molybdenum, tungsten,
and an alloy of molybdenum and tungsten, the sputtering-target
plate (i) consisting essentially of pressed powder of the
refractory metal, (ii) having a density greater than 97% of a
theoretical density of the refractory metal, (iii) having a grain
size less than 50 pm, (iv) having a substantially random
crystallographic orientation, and (v) being substantially free of
texture banding.
Appellants1 request review of the Examiner’s rejection in the Final
Action of claims 10-17 under 35 U.S.C. § 103(a) as unpatentable over
Zimmermann (US 2008/0216602 Al, published September 11, 2008). App.
Br. 4; Final Act. 2. Appellants rely on essentially the same line of arguments
to address the rejection of independent claim 10 and dependent claims 15-
17. See generally App. Br. Appellants also present separate arguments for
dependent claim 12 but not for dependent claims 11, 13, and 14. Id.
Accordingly, we select independent claim 10 as representative of the subject
matter before us on appeal. Claims 11 and 13-17 stand or fall with claim
10. Claim 12 will be addressed separately.
1 The real party in interest is identified as H. C. Starck, Inc. App. Br. 2.
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Application 14/269,836
OPINION
Prior Art Rejection
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection under
35 U.S.C. § 103(a) essentially for the reasons presented by the Examiner.
We add the following for emphasis.
Independent Claim 10
Appellants’ invention is directed to a sputtering-target plate consisting
essentially of a pressed powder of refractory material selected from the
group consisting of molybdenum, tungsten, and an alloy of molybdenum and
tungsten.
The Examiner finds Zimmermann discloses a sputtering target
consisting essentially of pressed powders of refractory metals including Mo,
W or mixtures or alloys thereof; having a density of at least 97%, a particle
size (i.e. the grain size as claimed) of 0.5 to 150 pm and a substantially
random crystallographic orientation; and being substantially free of texture
banding. Final Act. 2-3; Zimmermann Abstract, ]|]| 14, 76, 77, 93. The
Examiner determines that density and particle size ranges disclosed by
Zimmermann overlap the respective claimed ranges and the overlaps
establish a prima facie case of obviousness. Final Act. 3.
Appellants argue that Zimmermann does not suggest refractory layers
made of pressed powders. App. Br. 6-7. According to Appellants,
Zimmermann himself teaches that refractory layers formed by cold spray
processes are physically different and distinguishable from layers made from
pressed powder. App. Br. 7; Zimmermann 29, 41, 166, 167. Thus,
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Application 14/269,836
Appellants argue that Zimmermann does not teach or suggest all of the
limitations of claim 10, which requires a pressed powder, and that the
Examiner has therefore failed to make a proper rejection. App. Br. 8.
This argument is unpersuasive of error. As noted by the Examiner
(Ans. 4), claim 10 is directed to a product, in this case a sputtering target
comprising specific refractory layers (Mo, W, or alloys thereof) having a
specific density (greater than 97% of a theoretical density of the refractory
metal) and a metal grain size a grain size less than 50 microns. The
Examiner found that Zimmermann, even though using a cold spray process,
discloses a sputtering target having the same type of refractory layers with
the same density and particle size. Final Act. 2-3; Zimmermann Abstract,
14, 76, 77, 93. Thus, the Examiner provided a reasonable basis for one
skilled in the art to reasonably expect that the sputter target of Zimmermann
is the same or substantially the same as the sputter target of the claimed
invention. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reasonable expectation of
success.”). Therefore, the burden of proof is properly shifted to Appellants
to prove that the prior art sputtering target does not inherently or necessarily
possess the characteristics attributed to the claimed sputtering target. See In
re Best, 562 F.2d 1252, 1255, (CCPA 1977). While Appellants argue that
the metal deposited on the pressed powder layers is not deformed as it would
be in metals deposited by cold spray processes (App. Br. 6-7), Appellants
direct us to no objective evidence establishing an unobvious difference
between the claimed sputtering target and the prior art sputtering target.
We have also reviewed the reference to Zimmermann, including the
portions Appellants rely upon as distinguishing pressed powder layers and
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Appeal 2017-003360
Application 14/269,836
cold spray layers. We are unable to find any mention of pressed powder
layers in any portion of Zimmerman supporting Appellants’ assertion that
the reference distinguishes between pressed powder layers and layers
deposited by cold spray processes. Appellants, at most, have provided mere
attorney argument and such argument of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
Appellants additionally contend Zimmermann’s fabrication of sputter
targets via cold spray techniques cannot be used to produce a deposit of
molybdenum, tungsten, or an alloy of molybdenum and tungsten of any
appreciable thickness because of the extreme hardness, low ductility, and
high yield strength of molybdenum and tungsten powders. App. Br. 4-5. In
support of this contention, Appellants point to a Declaration under 37 C.F.R.
§ 1.132 by co-inventor Steven A. Miller, Ph.D. (hereinafter the Miller
Declaration or Miller Decl.). Id. Declarant Miller conducted 30 different
experimental trials in which the deposition of molybdenum powder and of a
mixture of molybdenum and tungsten powder were attempted. Miller Decl.
6 (including table of results). Declarant concluded from the results of
these experiments that Zimmermann’s techniques simply cannot be used to
fabricate sputtering-target plates such as those claimed. Miller Decl. ^ 7;
App. Br. 4-5.
We are unpersuaded by these arguments and the evidence proffered.
As noted by the Examiner, Zimmermann broadly discloses forming
refractory layers on the sputtering plate from refractory metals including
Mo, W or mixtures or alloys thereof with a thickness between 0.1 and 100
mm. Ans. 3; Zimmermann 72, 73. Appellants have not adequately
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Application 14/269,836
disputed this finding. We have considered the data in the Miller Declaration
allegedly showing that a cold spray process would not deposit an appreciable
layer of these materials on a sputter plate. However, we agree with the
Examiner’s determination that this showing is insufficient to overcome a
prima facie case of obviousness. Ans. 3. Moreover, Declarant does not
explain how the 30 experimental trials relate to Zimmermann’s disclosure in
terms of the type of cold spray process used as well as how the operational
parameters of the experimental trial compare to the operational parameters
of Zimmermann’s cold spray process. In addition, Declarant does not
indicate what is considered an appreciable thickness as no thickness results
are reported. More tellingly, Appellants acknowledge in the Reply Brief that
the Miller Declaration does not purport to clarify what Zimmermann does or
does not disclose. Reply Br. 4. Given this acknowledgement, Appellants
have not adequately distinguished the claimed invention from the invention
of Zimmermann.
Claim 12
Claim 12 requires the powder has a Fischer subsieve size of from
about 2 to about 5 microns as measured according to ASTM B-30-65.
The Examiner found Zimmermann discloses metal powders having a
particle size of -100 mesh (less than 150 pm), which includes the claimed
size range. Final Act. 3; Zimmermann ]} 172.
Appellants argue Zimmermann does not teach the claimed narrow
range of powder sizes with any degree of specificity. App. Br. 9-10.
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We are unpersuaded by this argument for the reasons presented by the
Examiner. Ans. 4-5. While Appellants point to general guidance on
selecting the appropriate particle size (App. Br. 9; Spec. 6), we agree with
the Examiner (Ans. 5) that Appellants have pointed to no objective evidence
showing criticality for the narrow range of powder sizes claimed. Moreover,
Appellants have not explained why one skilled in the art, using no more than
ordinary creativity, would not have been capable of determining the
appropriate particle size for the refractory layers to arrive at a desired
sputtering target. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Bozek, 416
F.2d 1385, 1390 (CCPA 1969).
Accordingly, we affirm the Examiner’s rejection of claims 10-17
under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and
given above.
ORDER
The Examiner’s rejection of claims 10-17under 35 U.S.C. § 103(a) is
affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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