Ex Parte Polcik et al

Patent Trial and Appeal Board

Jun 14, 2017

13641350 (P.T.A.B. Jun. 14, 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.
13/641,350 11/20/2012 Peter Polcik SB-663 8823
24131 7590 06/16/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
BRAYTON, JOHN JOSEPH
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER POLCIK, CONRAD POLZER, MATTHIAS PERL,
STEFAN SCHLICHTHERLE, and GEORG STRAUSS
Appeal 2016-006489
Application 13/641,35c1
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 14—202 and 23—26. We have jurisdiction. 35
U.S.C. § 6(b). We AFFIRM.
1 According to the Appellants, the real party in interest is Plansee SE.
Appeal Br. 1.
2 The cover of the Final Office Action indicates claims 14—21 and 23—26 are
rejected. The Final Office Action does not, however, address a claim 21,
and the Appeal Briefs Claim Appendix does not list a claim 21. We
therefore do not consider claim 21 on appeal.
Appeal 2016-006489
Application 13/641,350
STATEMENT OF THE CASE3
Appellants describe the invention as relating to a coating source for
cathodic arc deposition in a PVD (physical vapor deposition) process.
Appeal Br. 3. The Specification states that the invention’s technique relates
to production of “wear-proof and corrosion-resistant coatings for greatly
varying substrate materials to the production of coated material composites,
in particular in the semiconductor and electronics industry.” Spec. 1:4—9.
Claims 14 and 23, reproduced below with emphasis added to certain key
recitations, is illustrative of the claimed subject matter:
14. A cathodic arc deposition coating source for physical
vapor deposition, comprising:
at least one component formed in a powder-metallurgical
production process from at least one pulverulent starting
material; and
at least one ferromagnetic region embedded in said at least
one component, said at least one ferromagnetic region having
been introduced into said at least one component and fixedly
connected to said at least one component in the powder-
metallurgical production process.
23. A method for producing a cathodic arc deposition coating
source for physical vapor deposition, the method comprising the
following steps:
placing pulverulent starting material for at least one
component of the cathodic arc deposition coating source into
a mold;
introducing ferromagnetic powder and/or at least one
ferromagnetic body into the mold, for placing the ferromagnetic
3 In this decision, we refer to the Final Office Action dated June 5, 2015
(“Final Act.”), the Appeal Brief filed November 13, 2015 (“Appeal Br.”),
the Examiner’s Answer dated April 12, 2016 (“Ans.”), and the Reply Brief
filed June 14, 2016 (“Reply Br.”).
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Application 13/641,350
powder and/or the at least one ferromagnetic body in at least one
region of the pulverulent starting material; and
compacting the component thus formed.
Appeal Br. 11—12 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Hauzer et al. (hereinafter “Hauzer”)
Lee
Cheng et al. (hereinafter “Cheng”)
Yamakoshi
Hatakeyama
US 5,160,595
US 2002/0139662 Al
US 2007/0007130 Al
US 2009/0229975 Al
JP 2000-328240
Nov. 3, 1992
Oct. 3, 2002
Jan. 11,2007
Sep. 17, 2009
Nov. 28, 2000
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 14, 15, 17—19, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Hatakeyama in view of Lee. Final Act. 3.
Rejection 2. Claims 20, 25, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Hatakeyama and Lee in view of Cheng and Hauzer. Id.
at 6.
Rejection 3. Claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Cheng in view of Yamakoshi and Hauzer. Id. at 11.
Rejection 4. Claims 25 and 26 under 35 U.S.C. § 103 as unpatentable
over Cheng, Yamakoshi, and Hauzer in view of Lee. Id. at 13.
As a new ground of rejection, the Examiner maintains:
Rejection 5. Claim 16 under 35 U.S.C. § 103 as unpatentable over
Hatakeyama in view of Lee and further in view of Cheng. Ans. 2.
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error except as
otherwise stated below. Thus, where we affirm the Examiner’s rejections
below, we do so for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Rejection 1, claims 14, 15, 18, 19, and 23. Appellants do not
separately argue against this rejection as applied to claims 15, 18, 19, and
23. We therefore limit our discussion to claim 14. Appeal Br. 3. Claims 15,
18, 19, and 23 stand or fall with claim 14. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
The Examiner rejects claim 14 as obvious over Hatakeyama in view
of Lee. Final Act. 3. The Examiner finds that Hatakeyama teaches each
recited element of claim 14 and that “the only difference is the process
performed on the target body.” Id. (providing citations to Hatakeyama). In
particular, the Examiner finds that Hatakeyama is directed to a sputtering
target rather than “[a] cathodic arc deposition coating source.” Id. at 4. The
Examiner finds, however, that Lee teaches targets that may be used in both
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Application 13/641,350
cathodic arc deposition and magnetic sputtering. Id. at 5 (providing citations
to Lee).
Appellants explain that cathodic arc deposition sources are different
“in essence” from magnetron sputtering coating sources. Appeal Br. 4
(emphasis original). Appellants therefore argue that there would be no
reason to combine Hatakeyama and Lee. See, e.g., Reply Br. 3.
Appellants’ argument misapprehends the scope of claim 14. Our
reviewing court has held that “[t]he preamble of a claim does not limit the
scope of the claim when it merely states a purpose or intended use of the
invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (citation
omitted). Here, “cathodic arc deposition coating source” as recited in claim
14 merely states the purpose of the coating source. It does not impose any
structural limitations on the coating source. Therefore, this preamble
language is not limiting.
The Examiner found that Hatakeyama—even by itself—teaches all
structural recitations of claim 14. Final Act. 3 (“The only difference is the
process performed on the target body.”). Appellants do not present any
argument refuting these findings. This alone is sufficient for us to conclude
that Appellants have not identified reversible error with respect to claim 14.4
Moreover, although it was not necessary for the Examiner to combine
teachings of Lee with Hatakeyama, the Examiner did not err in doing so.
The Examiner uses Lee merely to evidence the Examiner’s finding that a
source for sputtering may also be used as a source for cathodic arc
4 Even if claim 14 were interpreted to require a source capable of being used
for “cathodic arc deposition coating,” Appellants’ arguments still would not
identify reversible error for the reasons we explain in addressing claim 23,
infra.
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deposition. Final Act. 4. We agree the Examiner that Lee supports this
finding by a preponderance of the evidence. See, e.g., Lee 12 (“This
invention relates generally to apparatus and method ... by employing
cathodic arc deposition and magnetic sputtering technologies.”). Moreover,
Appellants do not present argument persuasively rebutting that sources for
sputtering may be used for cathodic arc deposition. Ans. 4 (citing Hauzer
and Snaper); see also Appeal Br. 9-10 (“it may be that some targets can be
used for sputtering and for arcing”).
Appellants’ argument seems to be based on whether or not a person of
skill would have physically combined Lee’s device and Hatakeyama.
Appeal Br. 6—7. Obviousness, however, is not based upon “whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . .” In re Keller, 642 F.2d 413, 425
(CCPA 1981). Rather, the evidence supports the Examiner’s finding that
Lee suggests to one of ordinary skill in the art that the source taught by
Hatakeyama could be used for sputtering or for cathodic arc deposition.
Because Appellants do not identify reversible error, we sustain the
Examiner’s first rejection of claims 14, 15, 18, 19, and 23.
Rejection 1, claims 17 and 24. Appellants do not separately argue
against this rejection as applied to claim 24. Appeal Br. 8. Claim 24 stands
or falls with claim 17.
The Examiner rejects claim 17 as obvious Hatakeyama in view of
Lee. Final Act. 3. Claim 17 recites “[t]he cathodic arc deposition coating
source according to claim 14, wherein said at least one ferromagnetic region
comprises at least one ferromagnetic body introduced in the powder-
metallurgical production process.” Appeal Br. 11 (Claims App’x) (emphasis
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Application 13/641,350
added). The Examiner finds that Hatakeyama teaches ferromagnetic
particles. Ans. 6—7. Appellants do not dispute this finding. Appeal Br. 8.
We agree with the Examiner that, under a broadest reasonable construction,
the Hatakeyama particles are each a body as recited in claim 17. See Cuozzo
Speed Techs., LLC v. Lee, 136S. Ct. 2131,2145 (2016) (“The Patent Office
has used [the broadest reasonable construction] standard for more than 100
years.”). Nothing about the ordinary meaning of “body,” the context of
claim 17, or the Specification supports a more narrow definition that would
exclude small particles.
Appellants argue that the Hatakeyama particles are not “macroscopic
bodies as defined by the invention.” Appeal Br. 8; see also Reply Br. 5.
Claim 17, however, does not recite “macroscopic.” Our reviewing court has
cautioned that “a claim construction must not import limitations from the
specification into the claims.” Deere & Co. v. Bush Hog, LLC, 703 F.3d
1349, 1354 (Fed. Cir. 2012) (citation omitted). Here, the Specification
refers to “macroscopic bodies” (see, e.g., Spec. 6:26—28), but it does not
state that a “body” must be macroscopic. Just to the contrary, by describing
“bodies” as “macroscopic,” the Specification suggests that a “body” is not
inherently macroscopic in this context; if bodies were always macroscopic in
this context, the use of the word “macroscopic” to reference particular
bodies would be redundant.
Because Appellants’ argument does not identify reversible Examiner
error, we sustain the Examiner’s rejection of claims 17 and 24.
Rejection 2, claims 20, 25, and 26. Appellants do not separately argue
claims 25 and 26. Appeal Br. 8. Claim 25 and 26 stand or fall with
claim 20.
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The Examiner rejects claim 20 as obvious over Hatakeyama and Lee
in view of Cheng and Hauzer. Id. at 6. Claim 20 recites “[t]he cathodic arc
deposition coating source according to claim 14, comprising a target and a
mount removably connected to said target and configured for connecting
said target to a cooled support of a coating facility, and said at least one
ferromagnetic region being arranged in said mount.” Appeal Br. 12
(Claims App’x) (emphasis added).
Appellants argue that Hauzer does not teach that it is beneficial to
place magnets in the immediate vicinity of the target for arcing. Appeal Br.
9. Appellants also argue that magnets 2 shown by Hauzer are not in a mount
because “[s]uch a mount would have to be represented here still within the
target 1 of Hauzer.” Id. at 9. The Examiner’s rejection, however, is based
on a combination of Hatakeyama, Lee, Cheng, and Hauzer. Final Act. 6.
The Examiner finds that Cheng teaches a ferromagnetic region being
arranged in a mount (Final Act 7), and Appellants do not persuasively
dispute this finding. See also Cheng 110 (“Magnets may be embedded in
the backing plate, the target material or both.”). Appellants’ arguments
concerning Hatakeyama alone cannot establish that the mount recitation of
claim 20 is not taught by the combined references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
Appellants also state that “the transition from Hatakeyama to Lee
and/or Hauzer is not justified.” Appeal Br. 9. Appellants, however, do not
explain this position or how this position relates to a recitation of claim 20.
Because Appellants have not provided arguments persuasively identifying
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reversible error, we sustain the Examiner’s rejection of claims 20, 25,
and 26.
Rejection 3 and 4, claims 23—26. The Examiner rejects claims 23 and
24 as obvious over Cheng in view of Yamakoshi and Hauzer. Final Act. 11.
The Examiner rejects claims 25 and 26 as obvious over Cheng, Yamakoshi,
and Hauzer in view of Lee. Id. at 13. Appellants argue these rejections
together and do not present separate arguments for claims 24, 25, or 26.
Appeal Br. 9—10. Claims 24, 25, and 26 therefore stand or fall with
claim 23.
Appellants’ arguments with respect to claim 23 are similar to those
raised with respect to claim 14. Appeal Br. 9—10. In particular, Appellants’
dispute that Hauzer teaches that all physical vapor deposition targets “can be
used selectively either for arcing or for sputtering.” Id. at 10.
Claim 23, unlike claim 14, recites “component of the cathodic arc
deposition coating source” in the body of the claim. Appellants do not,
however, argue that this “component” or that the “cathodic arc deposition
coating source” require any particular physical characteristics. Appellants
also do not identity how the Specification defines “component” or “cathodic
arc deposition coating source” in terms of physical characteristics.
Accordingly, we construe the “cathodic arc deposition coating source” as
requiring a source (i.e., a material) capable of being used in a cathodic arc
deposition coating process. Thus, the “cathodic arc deposition coating”
recitation is functional recitation rather than structural. Ans. 3—4, 8.
While a patent applicant may recite features structurally or
functionally, “choosing to define an element functionally, i.e., by what it
does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
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1997). In particular, where there is reason to believe that prior art structure
is inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See id.', In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to
show that prior art structures were not inherently capable of functioning as
claimed invention).
Here, the Examiner establishes reason to believe that the starting
material of Cheng (or of Hatakeyama as applied to claim 23 by the
Examiner’s first rejection) could be used for sputtering or for cathodic arc
deposition. Final Act. 12. In particular, the Examiner finds that Lee,
Hauzer, and Snaper each teach that the same source may be used for arc
deposition and sputtering. Ans. 4. Appellants do not persuasively rebut this
finding and admits that the target of Hauzer “can be used for both
processes.” Appeal Br. 9.
Appellants’ cite the “Smart Cathode” presentation as evidence that
certain material is not capable of being arced or can only be arced with great
difficulty (Appeal Br. 5), but we fail to see how the limited information
provided by the presentation establishes this point. Moreover, Appellants do
not explain how this evidence relates to whether or not the material of Cheng
(or Hatakeyama) could be used as a cathodic arc deposition source.
Similarly, Appellants do not adequately explain the significance of the web
site cited in the reply brief (Reply Br. 5) or how this relates to the material of
Cheng (or Hatakeyama). Accordingly, Appellants do not meet their burden
of distinguishing the prior art structure of Cheng (or Hatakeyama) from the
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structure of claim 23’s recited “cathodic arc deposition source.” We
therefore sustain the Examiner’s third and fourth rejections.
Rejection 5, claim 16. As a new ground of rejection, the Examiner
rejects claim 16 as obvious over Hatakeyama in view of Lee and further in
view of Cheng. Ans. 2—3. Appellants present the substantially the same
arguments addressed above. Reply Br. 3. The Examiner provides a
rationale for combining teachings of the cited references (Ans. 2—3), and
Appellants do not present a persuasive argument refuting the Examiner’s
reasons to combine (Reply Br. 3). We thus sustain this rejection for the
reasons explained above.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
14—20 and 23-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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