Weilu Xu

Patent Trials and Appeals Board

Sep 25, 2019

15301346 - (D) (P.T.A.B. Sep. 25, 2019)

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.
15/301,346 09/30/2016 Weilu XU STL 070003.00 6654
64776 7590 09/25/2019
Holzer Patel Drennan - Seagate Technology LLC
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
MCDONALD, RODNEY GLENN
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
docket@hpdlaw.com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEILU XU

Appeal 2019-001456
Application 15/301,346
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–24, and 26–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to a sputtering target apparatus
having a substantially planar top surface and a recess located within an area
of the top surface of the target defined as the inner diameter (Spec. ¶ 3;
Claim 1).
Claim 1 is representative of the subject matter on appeal:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Seagate
Technology LLC. Appeal Br. 2.
Appeal 2019-001456
Application 15/301,346

2
1. An apparatus, comprising:

a body with a substantially planar top surface having an inner
diameter, a middle diameter and an outer diameter,

wherein the top surface is substantially planar from the outer diameter
to the middle diameter, and

wherein the outer diameter is defined by an edge of the body; and a
recess located within an area of the top surface defined by the inner
diameter,

wherein a thickness of the body in the recess is less than a thickness of
the body at the outer diameter, and

wherein the thickness of the body in the recess and the thickness of
the body at the outer diameter increase a uniformity of a magnetic pass
through flux from an underlying magnetic pack during sputtering.

Appellant appeals the following rejections:
1. Claims 1–3, 5–9, and 16–21 are rejected under 35 U.S.C. § 103
as unpatentable over Shimizu et al. (US 4,747,926; issued May
31, 1988).
2. Claims 10–15, 22–24, and 26–28 are rejected under 35 U.S.C.
§ 103 as unpatentable over Gilman et al. (US 6,086,735; issued
July 11, 2000).
Appellant argues the claims in two groups: Claims 1–3, 5–9, and 16–
21, and claims 10–15, 22–24, and 26–28 (App. Br. 10–12). Appellant’s
arguments regarding method claim 22 mirror the arguments made regarding
the structure recited in claim 10 (App. Br. 11). We select claims 1 and 10 as
representative of the groups. 37 C.F.R. § 41.37(c)(iv).

Appeal 2019-001456
Application 15/301,346

3
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the rejection of
claim 1 over Shimizu and the rejection of claim 10 over Gilman are located
on pages 2–3 and 5–6 of the Final Action. The Examiner finds that Shimizu
and Gilman each teaches a sputtering target structure that is the same as is
recited in claims 1 and 10, respectively (Final Act. 2, 5). The Examiner
finds that Shimizu or Gilman does not specifically disclose that the thickness
of the body in the recess and the thickness of the body at the outer diameter
increase uniformity of a magnetic pass through flux from an underlying
magnetic pack during sputtering (Final Act. 3, 6). The Examiner finds that
the Shimizu’s and Gilman’s structures are the same as Appellant’s claimed
structure so that the prior art structures would permit the increase in
uniformity of the magnetic pass through flux from an underlying magnetic
pack during sputtering (Final Act. 3, 6).
Appellant argues that Shimizu teaches varying the coil current to
affect plasma concentrations but is silent about the thickness of the target
body affecting an increase in uniformity of magnetic pass through flux (App.
Br. 11). Appellant contends that Gilman teaches reducing the sputtering rate
near the outer peripheral surface by lowering the plasma intensity near the
outer surface, but Gilman is silent about the thickness of the target body
affecting an increase in uniformity of magnetic pass through flux (App. Br.
12). Appellant argues that Shimizu’s and Gilman’s target structures are not
the same as required by the claims because different results are achieved by
each of the prior art references (Reply Br. 2–3).
Claim 1 requires, inter alia, a body having a planar top surface where
a recess is formed in an inner diameter region (i.e., center portion of the top
Appeal 2019-001456
Application 15/301,346

4
surface) and the thickness in the outer region (i.e., along the edge of the
body) is greater than in the recess. Claim 10 requires, inter alia, a body with
a planar top surface and recess in an inner diameter region of the top surface.
The recitation of the thickness of outer region (claim 1) or top surface (claim
10) and the thickness of the recess are recited functionally in terms of an
increase in the uniformity of the magnetic pass through flux. The claims do
not recite any particular numerical thickness range for the outer diameter/
top surface thickness, or recess thickness.
Although there is nothing improper with claims that recite the relative
thicknesses in terms of the functional outcome, doing so comes with an
added burden. In particular, when functional language is present in a claim
and the Patent Office finds that structure recited in the claims and taught by
the prior art are the same, it can require Appellant to show that the prior art
structure cannot perform the recited function. In re Swinehart, 439 F.2d
210, 213 (CCPA 1971). See also, In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. See In re Ludtke, supra. Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products.”).
In the present case, the Examiner finds that Shimizu and Gilman each
teaches target structures that have the recited relative thicknesses for the
Appeal 2019-001456
Application 15/301,346

5
recess region and the outer diameter/top surface region (Final Act. 2–3, 5–
6). In other words, the Examiner’s findings shift the burden to Appellant to
show that the target structures in Shimizu and Gilman do not increase
uniformity of the magnetic pass through flux. Best, 562 F.2d at 1255.
Appellant’s argument that the Shimizu’s and Gilman’s structures are not the
same because they achieve a different result does not address whether the
target structure in Gilman and Shimizu are capable of increasing the
uniformity of the magnetic pass through flux. Appellant does not
demonstrate that the argued result would have been evidence of a difference
in structure rather than a difference in operation.
For the above reasons, we affirm the Examiner’s § 103 rejections over
Shimizu and Gilman.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
1–3, 5–9, and 16–
21
§ 103 Shimizu  1–3, 5–9, and
16–21

10–15, 22–24, and
26–28
§ 103 Gilman 10–15, 22–24,
and 26–28

Overall Outcome 1–3, 5–24, and
26–28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED