Yoshitaka Tsuruta

Patent Trials and Appeals Board

Dec 17, 2019

15075119 - (D) (P.T.A.B. Dec. 17, 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.
15/075,119 03/19/2016 Yoshitaka TSURUTA 5725-0158 2286
22429 7590 12/17/2019
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
Alexandria, VA 22314
EXAMINER
BERMAN, JASON
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHITAKA TSURUTA
____________

Appeal 2019-001844
Application 15/075,119
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1–6 of Application 15/075,119 under
35 U.S.C. § 103 as obvious. Non-Final Act. 2, 4 (Nov. 24, 2017). Pursuant
to 35 U.S.C. § 134(a), Appellant1 seeks reversal of the rejections. Because at
least one of the appealed claims has been twice rejected, we have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

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 JX Nippon
Mining & Metals Corp. Appeal Br. 2.
Appeal 2019-001844
Application 15/075,119
2
I. BACKGROUND
The ’119 Application describes a ceramic cylindrical sputtering target
joined to a cylindrical substrate. Spec. ¶ 2. According to the Specification,
the joining material’s improved performance prevents the joined cylindrical
layers from delaminating during thermal contraction. Id. at ¶¶ 12, 13.
Claim 1 is representative of the ’119 Application’s claims and is
reproduced below from the claims listing in the Claims Appendix to the
Appeal Brief:
1. A cylindrical sputtering target, comprising:
a cylindrical substrate and a cylindrical sputtering target
member joined together with a joining material that is in
contact with the cylindrical substrate and the cylindrical
sputtering target member from one end of the cylindrical
sputtering target member to the other end of the
cylindrical sputtering target member;
wherein where the joining material has a thickness, estimated
from a difference between an inner diameter of the
cylindrical sputtering target member and an outer
diameter of the cylindrical substrate, of d (μm), the
joining material has a coefficient of thermal expansion of
α1 (μm/μmK), and a melting point of the joining material
and room temperature have a difference of ∆T (K), a
surface of the cylindrical sputtering target member on
the side of the joining material has concave and convex
portions having a value of ten-point average roughness
(Rz) fulfilling:
d (μm) x α1 (μm/μmK) x ∆T (K) ≤ Rz (μm), and
wherein the joining material is in contact with the concave and
convex portions.
Appeal Br. (Claims App.) 13 (emphasis added).
Appeal 2019-001844
Application 15/075,119
3
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 3–5 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Itoh,2 Schnappenberger,3 and
Wurczinger,4 with evidence from GPS.5 Answer 4.
2. Claims 2 and 6 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Itoh, Schnappenberger, Wurczinger, and
Todoko,6 with evidence from GPS. Answer 6.
III. DISCUSSION
Appellant argues for the reversal of the obviousness rejections of
claims 1–6 on the basis of limitations present in independent claim 1. Appeal
Br. 6–11. We select claim 1 as representative. Accordingly, we limit our
discussion to claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
A. Rejection of claims 1 and 3–5 as unpatentable over the
combination of Itoh, Schnappenberger, and Wurczinger, with
evidence from GPS.
In rejecting claim 1, the Examiner found that Itoh’s cylindrical target
and cylindrical substrate describes each component and limitation of the
claimed cylindrical sputtering target, except that Itoh is silent regarding two
limitations. Answer 4 (citing Itoh ¶¶ 7, 17, 20). According to the Examiner,

2 US 2006/0151321 A1, published July 13, 2006.
3 US 2011/0005923 A1, published Jan. 13, 2011.
4 US 2014/0124365 A1, issued May 8, 2014.
5 Geometrical Product Specifications, Japanese Standards Association
1167–68 (2003) (hereinafter “GPS”).
6 US 2010/0326823 A1, published Dec. 30, 2010.
Appeal 2019-001844
Application 15/075,119
4
Itoh does not disclose: (i) any roughness value for the cylindrical sputtering
target’s interior surface; and (ii) that the entire cylindrical substrate’s
exterior and the cylindrical target’s interior surfaces are soldered together.
Answer 4.
With respect to Itoh’s first missing limitation, the Examiner found
Schnappenberger teaches that a target roughness (i.e., Rz) greater than 100
improves the heat transfer between the target and a substrate. Answer 5
(citing Schnappenberger Abstract; Figs. 2–4; ¶ 37). The Examiner
determined that it would have been obvious to one of ordinary skill in the art
at the time of the invention to combine Itoh’s low melting solder, in the
disclosed thickness, with Schnappenberger’s high roughness because doing
so would have provided improved heat transfer. Answer 5 (citing
Schnappenberger ¶ 37).
Regarding Itoh’s second missing limitation, the Examiner found that
Wurczinger teaches use of solder to join a cylindrical target and a backing
structure. Answer 5 (citing Wurczinger Abstract; Figs. 1, 2; ¶ 24).
According to the Examiner, Wurczinger further teaches that roughening
surfaces and completely filling gaps with solder improves thermal contact
between two surfaces. Answer 5 (citing Wurczinger Abstract; ¶ 28). The
Examiner determined that “it would have been obvious to one of ordinary
skill in the art at the time of the invention to completely fill the target and
backing gap with solder, as disclosed by Wurczinger, in the structure of Itoh,
because this allows for good thermal contact.” Answer 5 (citing Wurczinger
¶¶ 4, 8).
Appellant argues, inter alia, that: (1) without any teaching of the
claimed Rz unit of μm, Schnappenberger fails to disclose a roughness value
that satisfies the formula of claim 1, Appeal Br. 7; (2) Wurczinger does not
Appeal 2019-001844
Application 15/075,119
5
make up for Schnappenberger’s failure to disclose a roughness value, id. at
7–8; (3) Schnappenberger’s structure includes an air gap between the target
and the backing tube and, thus, cannot teach concave and convex portions in
contact with the joining material, id. at 8–10; and (4) because
Schnappenberger roughens the surface in contact with an air gap, the
Examiner cannot combine Schnappenberger’s roughening with Itoh’s and
Wurczinger’s structures, which do not have air gaps between components.
Id. at 10.
Appellant’s arguments are not persuasive.
First, we agree with the Examiner that the relied-upon GPS provides
evidence that the ordinarily skilled artisan would have used a μm as the
standard unit for Rz. Answer 5 (see GPS 1167). As the Examiner found, the
formula recited in claim 1 requires that Rz is greater than an expression and
Schnappenberger’s Rz range extends to any value greater than 100. Answer
8. Thus, the Examiner persuasively found that Schnappenberger necessarily
discloses a roughness value that satisfies the formula of claim 1. Id.
Second, the Examiner does not rely upon Wurczinger to render
obvious the requisite roughening of the cylindrical sputtering target
member’s surface on the side of the joining material. Rather, the Examiner
relied upon Wurczinger for disclosing that completely filling gaps with
solder and roughening surfaces, in general, improves thermal contact
between two surfaces. Id. at 5 (citing Wurczinger Abstract; ¶ 28).
Third, Appellant argues in connection with argument (3) that the
Examiner unreasonably construed the term “in contact” as encompassing
Schnappenberger’s air gap. Reply Br. 8.
Appellant’s arguments, however, are not dispositive because the
Examiner’s relied-upon primary reference, Itoh, explicitly discloses a
Appeal 2019-001844
Application 15/075,119
6
cylindrical substrate and a cylindrical sputtering target without an air gap
therebetween. See Itoh ¶¶ 7, 17. We, furthermore, agree with the Examiner
that Schnappenberger’s roughened target surface with an Rz greater than 100
inherently possesses concave and convex portions. See Answer 5.
Fourth, Appellant’s argument (4) is unpersuasive because it is not
directed to the Examiner’s rationale for modifying Itoh to incorporate: (i)
Schnappenberger’s Rz roughened target surface having an Rz > 100; and (ii)
Wurczinger’s solder-filled gaps and surface roughening, in general. Rather,
Appellant’s argument is directed to whether it was improper for the
Examiner to combine Schnappenberger’s roughened surface in contact with
an air gap with Itoh and Wurczinger when Itoh’s and Wurczinger’s
structures do not have air gaps between components.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner did
not rely upon Schnappenberger to teach modifying Itoh based on the
structure of Schnappenberger because Itoh already teaches the structure
recited in claim 1. Answer 3 (citing Itoh ¶¶ 7, 17, 20).
Thus, Appellant’s arguments (1)–(4) fail to identify reversible error in
the Examiner’s determination that it would have been obvious to confer
improved heat transfer and thermal contact for Itoh’s cylindrical target,
solder, and cylindrical substrate according to the teachings of
Schnappenberger and Wurczinger, namely, by incorporating: (i)
Schnappenberger’s roughened target surface having an Rz > 100 on the
Appeal 2019-001844
Application 15/075,119
7
interior surface of Itoh’s cylindrical target; and (ii) Wurczinger’s soldering
of the entire surfaces between Itoh’s substrate and target with Itoh’s low
melting solder. See Answer 4–5.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 1 as unpatentable over the combination of
Itoh, Schnappenberger, and Wurczinger. Accordingly, we also affirm the
rejection of claims 3–5, which depend from claim 1.
B. Rejection of claims 2 and 6 as unpatentable over the
combination of Itoh, Schnappenberger, Wurczinger, and
Todoko, with evidence from GPS.
Appellant argues that the rejection of claims 2 and 6 as unpatentable
over the combination of Itoh, Schnappenberger, Wurczinger, and Todoko
should be reversed for the reasons set forth in arguing for reversal of the
rejection over the combination of Itoh, Schnappenberger, and Wurczinger.
See Appeal Br. 10 (“Todoko was not applied in a manner that attempts to
make up for the above-identified deficiencies.”).
For the reasons set forth above, we have affirmed the rejection of
independent claim 1 as unpatentable over the combination of Itoh,
Schnappenberger, and Wurczinger. We, therefore, also affirm the rejection
of claims 2 and 6 as unpatentable over the combination of Itoh,
Schnappenberger, Wurczinger, and Todoko.
IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5 103 Itoh, Schnappenberger, Wurczinger, GPS 1, 3–5
2, 6 103 Itoh, Schnappenberger, Wurczinger, GPS, Todoko 2, 6
Appeal 2019-001844
Application 15/075,119
8
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome 1–6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED