Ex Parte Kumar et alDownload PDFPatent Trial and Appeal BoardDec 18, 201714269836 (P.T.A.B. Dec. 18, 2017) Copy Citation 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. 2 Appeal 2017-003360 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, 3 Appeal 2017-003360 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 4 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 5 Appeal 2017-003360 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. 6 Appeal 2017-003360 Application 14/269,836 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 7 Copy with citationCopy as parenthetical citation