Ex Parte Ramm et al

Patent Trial and Appeal BoardAug 31, 2017

13497283 (P.T.A.B. Aug. 31, 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. 13/497,283 03/21/2012 Jurgen Ramm TSW-45945US1 7502 86378 7590 09/05/2017 Pearne Rr frnrHnn T T P EXAMINER 1801 East 9th Street WANGA, TIMON Suite 1200 Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JURGEN RAMM and BENO WIDRIG Appeal 2016-008257 Application 13/497,283 Technology Center 1700 Before JEFFREY T. SMITH, MARKNAGUMO, 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 from a final rejection of claims 1—7, 9—24 and 29-35. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2016-008257 Application 13/497,283 Claims 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method for producing a zirconia-based layer on a deposition substrate, comprising: providing a mixed spark target in which materials of the mixed spark target are separately present in the target, the materials of the mixed spark target comprising elemental zirconium and at least one stabilizer; and depositing the zirconia-based layer on the deposition substrate by using reactive spark evaporation of the mixed spark target using pulsed spark current and/or applying a magnetic field that is perpendicular to the mixed spark target. Appellants1 (see generally Reply Brief2) request review of the following rejections3 from the Examiner’s Answer: I. Claims 1—7, 9-24 and 31—35 rejected under 35 U.S.C. § 103(a) as unpatentable over Severin (DE 10 2006 046 126 Al, published September 28, 2006, and relying on US 2009/0286105 Al, published November 19, 1 The real party in interest is identified as OERLIKON SURFACE SOLUTIONS AG, TRUBBACH (formerly known as OERLIKON TRADING AG, TRUBBACH). App. Br. 3. 2 The Examiner modified the principal rejection in the Answer (designated as Rejection I in the opinion) by removing the secondary reference to Yano. Compare Ans. 2 with Final Act. 3. The Examiner designated this modified rejection as a new ground of rejection. Ans. 2. Appellants filed a Reply Brief on August 30, 2016 responding to the new grounds in a timely manner. Accordingly, we refer to the Answer for the statement of the rejections before us for review on appeal and to the Reply Brief for Appellants’ principal arguments. 3 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 112, second paragraph. Ans. 8. 2 Appeal 2016-008257 Application 13/497,283 2009, as the English equivalent) and Ranrai (US 2008/0020138 Al, published January 24, 2008). II. Claims 29 and 30 rejected under 35 U.S.C. § 103(a) as unpatentable over Severin, Ranrai and Yano (US 2010/010696 Al, published July 8, 2010). OPINION The Prior Art Rejections4 After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner’s prior art rejections of claims 1—7, 9-24 and 29-35 under 35 U.S.C. § 103(a) for the reasons presented by Appellants and add the following. Claim 1 is directed to a method for producing a zirconia-based layer on a deposition substrate by using a mixed spark target in which materials of the mixed spark target are separately present in the target and wherein the materials of the mixed spark target comprise elemental zirconium and at least one stabilizer. The Specification defines the stabilizer as follows: Classical stabilizers in the framework of this description will refer to stabilizers that are present in pure form as solid-state body at room temperature and at normal pressure. Examples of such classical stabilizers are yttrium, magnesium, calcium, scandium and/or the metals of the rare- earth subgroup IHA of the periodic system. We will additionally mention Sr, Ba, Ni, Fe, Co, La, Nd, Gd, Dy, Ce, Al, Bi, Ti, Tb, Eu, Sm. 4 We limit our discussion to independent claim 1, from which all claims depend from directly or indirectly. 3 Appeal 2016-008257 Application 13/497,283 Spec. 10. We refer to the Examiner’s Answer for a complete statement of the rejections. Ans. 2-4. With respect to the stabilizer of claim 1, the Examiner finds Severin discloses nitrogen as a component of a mixed target used in Severin’s deposition process. Ans. 2; Severin 110. The Examiner further finds that this nitrogen component functions as a stabilizer in the manner required by the claim. Ans. 2. Appellants argue that the nitrogen in Severin’s nitrogen containing target is not a stabilizer as defined on page 10 of the Specification (relevant portion cited above). Reply Br. 5. According to Appellants, Severin discloses that it is advantageous that the nitrogen contained in the target has the effect that the metal atoms on the target surface are for the most part already saturated by nitrogen bonds. Reply Br. 4; Severin 110. That is, Appellants argue the nitrogen atoms are physically adsorbed on the surface of the metallic target. Reply Br. 4. Thus, Appellants argue nitrogen is not a stabilizer present in pure form as solid-state body at room temperature and at normal pressure. Reply Br. 5; Spec. 10. We agree. While the Examiner contends that the nitrogen in the nitrogen-containing target of Severin acts as a stabilizer (Ans. 2, 9), the Examiner has not adequately explained why the nitrogen in Severin’s target would be considered a stabilizer present as a separate material as required by claim 1. In particular, the Examiner has not directed our attention to any credible evidence that the limitation regarding the stabilizer, “separately 4 Appeal 2016-008257 Application 13/497,283 present in the target” would have been understood by skilled artisans as including physisorbed or chemically bound nitrogen, as suggested in the Examiner’s Answer (Ans. 3). Accordingly we reverse the Examiner’s prior art rejections of claims 1—7, 9-24 and 29-35 under 35 U.S.C. § 103(a) for the reasons presented by Appellants and given above. ORDER The Examiner’s prior art rejections of claims 1—7, 9—24 and 29—35 under 35 U.S.C. § 103(a) are reversed. REVERSED 5