Ex Parte Polcik et alDownload PDFPatent Trial and Appeal BoardJun 14, 201713641350 (P.T.A.B. Jun. 14, 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. 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.”). 2 Appeal 2016-006489 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. 3 Appeal 2016-006489 Application 13/641,350 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 4 Appeal 2016-006489 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. 5 Appeal 2016-006489 Application 13/641,350 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 6 Appeal 2016-006489 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. 7 Appeal 2016-006489 Application 13/641,350 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 8 Appeal 2016-006489 Application 13/641,350 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. 9 Appeal 2016-006489 Application 13/641,350 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 10 Appeal 2016-006489 Application 13/641,350 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 11 Copy with citationCopy as parenthetical citation