Ex Parte Kashi et al

Patent Trial and Appeal Board

Aug 28, 2017

14009522 (P.T.A.B. Aug. 28, 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.
14/009,522 10/02/2013 Takaharu Kashi 11FI020PCT-US 3185
21254 7590 08/28/2017
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
08/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHARU KASHI and KENJI YAMAMOTO
Appeal 2016-003850
Application 14/009,522
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 1—5 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
1 In explaining our Decision, we cite to the Specification dated October 2,
2013 (Spec.), Final Office Action dated January 22, 2015 (Final), the Appeal
Brief dated September 25, 2015 (Appeal Br.), the Examiner’s Answer dated
January 28, 2016 (Ans.), and the Reply Brief dated March 3, 2016 (Reply
Br.).
2 Appellants identify the real parties in interest as Nippon Koshuha Steel
Co., Ltd. and Kabushiki Kaisha Kobe Seiko Sho.
Appeal 2016-003850
Application 14/009,522
over Summerfelt3 and claims 1—14 under 35 U.S.C. § 103(a) as obvious over
Yamamoto4 in view of Guenanten5. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a press-forming mold (see, e.g., claim 1)
and a method for manufacturing a protective film for a press-forming mold
(see, e.g., claims 5 and 9).
The press-forming mold, according to an embodiment of Appellants’
invention, is a die 11, a punch 12, and other elements in a press-forming
device 10 such as that shown in, e.g., Figures 6(a) and 6(b). Spec. 122.
Figures 6(a) is reproduced below:
1 3
Figure 6(a) is a schematic diagram of a press-forming mold with a plate
material 2 placed on punch 12
3 US 6,528,386 Bl, issued Mar. 4, 2003
4 US 2009/0317659 Al, published Dec. 24, 2009
5 US 2008/0182091 Al, published July 31, 2008
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Application 14/009,522
Figure 6(b) is reproduced below:
Figure 6(b) is a schematic diagram showing the formed plate 2 after the
press-forming operation
According to the Specification, the heating and bending of the plate
that occurs during press-forming generates frictional heat that can cause
seizing. Spec. 12. It was known in the art to form a protective film for
preventing seizing on the forming surface of the mold. Spec. 13, citing JP
2005-305510. This protective film may be formed by chemical or physical
vapor deposition (CVD or PVD), or a similar method. Id.
It was also known in the art that the durability of the tool could be
improved by polishing the protective film to reduce the surface roughness
Ry to 8 pm or less. Spec. 13. Lapping was a known process for polishing
the protective film surface. Id. It was known to remove droplets that form
when the protective film is deposited by arc ion plating, a type of PVD,
particularly when the surface roughness of the protective film is greater than
Ry of 0.6 pm, by lapping and then forming a second coating on the lapped
film. Spec. H4—5.
The Specification also discloses that “[conventionally, when the
droplets are lapped, the surface roughness of the lapped protective film is
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Application 14/009,522
managed by maximum height Ry, the ten-point average roughness Rz and
the arithmetic average roughness Ra stipulated in JIS B0601.” Spec. 128.
Appellants, like the prior art, form a protective film by PVD and
polish the film to obtain a particular surface roughness. See, e.g., Spec.
1131—33. However, Appellants manage the polishing according to a
parameter different from the Ry, Rz, and Ra parameters of the prior art.
Specifically, Appellants perform the polishing so that the root-mean-square
RAq is no greater than 0.032. Spec. 126.
According to Appellants, the root-mean-square RAq is a function of
the gradient at each division point of an arbitrary section of the surface of
the protective film. Id. Appellants describe a process of tracing the surface
of each of the protective films using a stylus displacement pickup, analyzing
the tracing results, and calculating the RAq. Spec. 138. Thus, Appellants,
in essence, conduct polishing to obtain a particular calculated value (RAq)
that represents the root-mean-square of the gradients along the surface,
whereas, according to the Specification, the prior art conducted polishing to
obtain maximum height Ry, the ten-point average roughness Rz, and the
arithmetic average roughness Ra stipulated in JIS B0601. Spec. 128.
According to the Specification, the result is a difference in the
structure of the polished surface as shown in the difference between Figure
4(b), which shows conventional removal of the tips but with sharp comers
remaining, and Figure 4(c), which shows convex and concave smoothed
stmctures with particular tilt (gradients) obtained via the process of
Appellants’ invention. Spec. 128. The Specification explains that the
convex and concave stmctures on the surface of the protective film decrease
in size as RAq decreases. Spec 141. Once RAq falls to 0.032 or less, the
convex and concave stmctures become extremely small. Id. According to
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Application 14/009,522
the Specification, performing polishing while managing the surface
roughness using the parameter RAq makes it possible to reliably improve the
lifespan of the press-forming mold. Id.
Claim 1 is illustrative of the press-forming mold:
1. A press-forming mold comprising:
a protective film for preventing seizing during press-
forming, which is formed on at least a forming surface that
comes into contact with a formed body, wherein:
said protective film is formed by PVD;
an arbitrary selection section extracted from the surface
of the protective film is divided into a plurality of individual
sections; and,
when the nth division point from an end of said selected
section is defined as being located a distance of dXn in the
direction of extension of said selected section and dZn in the
height direction from the (n-l)th division point, and the gradient
of the surface at said nth division point is represented by
(dZn/dXn), taking N to represent the number of divisions, the
root-mean-square RAq calculated by the following expression is
no greater than 0.032:
Claims Appendix, Appeal Br. 34.
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Application 14/009,522
OPINION
The Rejections over Summerfelt
The Examiner rejects claims 1—5 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Summerfelt.
Two issues arise:
1. Did the Examiner reversibly err in finding that following the
method of Summerfelt would inherently result in the surface
roughness contour as expressed by the root-mean-square RAq to a
level of no greater than 0.032?
2. Did the Examiner reversibly err in finding that one of ordinary
skill in the art would have been led to a root-mean-square RAq of
no greater than 0.032 when optimizing a result-effective variable?
We determine that the Examiner did so err.
Summerfelt discloses a method of fabricating a semiconductor device.
Summerfelt col. 1,11. 31—34. The Examiner finds that Summerfelt discloses
“the act of providing a protective film on the machine by a PVD process
with the same type of materials in a reaction gas atmosphere followed by a
polishing step.” Final 4. To support this finding the Examiner cited
paragraph 53 as teaching a multilayer PVD coating process of a preferred
TiAlN-based material with an A1 content of 60% and to paragraph 52 as
teaching a second hard coating that can be CrN. Id.
As a first matter, it is unclear what portion of Summerfelt is being
cited by the Examiner. Summerfelt does not number the paragraphs.
Paragraphs 52 and 53 would seem to equate to column 10, lines 6—36, but
this portion of Summerfelt does not disclose multilayer PVD coating of CrN
and TiAlN-based material with an A1 content of 60%. Column 18 of
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Summerfelt includes a discussion of forming a conductive barrier layer of,
for example, TiAIN or CrN (col. 18,11. 12—24) and also discloses depositing
a bilayer diffusion barrier of CVD TiN followed by PVD TiAIN, with a
preference for including A1 from around 30% or more and about 60% or less
(col. 18,11. 35—49). This disclosure is made in the context of depositing the
barrier layers over a smoothed tungsten material within alignment mark via
202. Summerfelt col. 18,11. 1—11. This is an improvement over the process
of depositing the barrier layer 214 over alignment mark via 202 shown in
Figures 4(b) and 4(c). Summerfelt col. 12,11. 9—37; col. 13,11. 9—23.
The Examiner does not cite to any portion of Summerfelt teaching a
polishing step. In Summerfelt, it is the underlying tungsten that is smoothed
and this facilitates good step coverage of the overlying barrier layer.
Summerfelt col. 18,11. 1—11.
The Examiner bases the finding of inherency on the fact that
Summerfelt seeks to reduce the surface roughness. Final 4. According to
the Examiner, “[wjhile the exact root-square-mean cannot be calculated, it is
clear that the same end result of a smooth film over the movable machine
component to protect it during use occurs.” Id.
We agree with Appellants that the Examiner has failed to provide a
sufficient basis to support a finding that the root-mean-square RAq of
Summerfelt’s barrier layer would necessarily be no greater than 0.032 as
required by Appellants’ claims. Appeal Br. 14. Although the Examiner
states that “all the active method steps claimed are present in the reference
and the reference is merely silent on root-mean-square calculation” (Final 5),
the Examiner has not established that all the relevant method steps are
indeed present in the method of Summerfelt. For instance, the Examiner has
not established that Summerfelt teaches polishing the barrier layer.
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Nor can we agree that the purpose of Summerfelt’s method is similar
enough to Appellants’ purpose to support a determination that the ordinary
artisan would have performed the kind of routine experimentation of a
result-effective variable that would have led to a barrier layer with a root-
mean-square RAq of no greater than 0.032. The Examiner has not
established that this type and level of smoothness was something sought in
the semiconductor device of Summerfelt.
Because the Examiner reversibly erred in making the finding of
inherency and determining obviousness on the basis of optimizing a result-
effective variable, we do not sustain the rejections based on Summerfelt.
The Rejection over Yamamoto in view of Geunanten
The Examiner rejects claims 1—14 under 35 U.S.C. § 103(a) as
obvious over Yamamoto in view of Guenanten.
Yamamoto discloses a metalworking mold including a protective film
formed by PVD. Yamamoto H 2, 4, 34. Yamamoto is mostly concerned
with the composition of the film and its crystal structure. Yamamoto ]Hf 64,
70. By controlling the composition and crystal structure through controlling
the formation conditions, “excellent surface smoothness and excellent wear
resistance can be obtained.” Yamamoto Tflf 70-71. As acknowledged by the
Examiner, Yamamoto does not discuss the root-mean-square RAq of the
protective film or any other parameter of surface roughness. Final 7.
Guenanten discloses a process for producing a plastic foil of, for
instance, polycarbonate, using an extrusion system. Guenanten || 36, 85—
95. The thermoplastic polycarbonate material is extruded through an
extrusion die polished to a roughness Ra of 0.002 pm, Rz of 0.015 pm, and
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Application 14/009,522
Rmax of 0.025 pm. Guenanten | 87. The die includes a duplex coating of
15 pm of nickel and 5 pm of CrN. Id.
According to the Examiner:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to utilize the preferred roughness
values as given by Guenanten in the Yamamoto reference that
is merely silent on what the values should be for the benefit of
avoiding misuses of the apparatus and to function in a more
efficient manner.
Final 7.
Neither Yamamoto nor Guenanten disclose processing a protective
film in a way to achieve a root-mean-square RAq of no greater than 0.032.
Appellants cite evidence in their Specification tending to show that simply
polishing to achieve other types of surface roughness parameters, such as
Ra, does not necessarily achieve the convex and concave structures that arise
when polishing to a root-mean-square RAq of no greater than 0.032. Appeal
Br. 26. The Examiner fails to address this aspect of the Appellants’
argument. Ans. 5. On balance, a preponderance of the evidence supports
the argument of Appellants.
CONCLUSION
We do not sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is reversed.
REVERSED
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