Ex Parte Shindo

Patent Trial and Appeal Board

Dec 31, 2014

10595660 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL
AND APPEAL BOARD
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Ex parte YUICHIRO SHINDO
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Appeal 2013-000198
Application 10/595,660
Technology Center 1700
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, 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 1–2, 9–11, 14–15 and 18–19 under 35 U.S.C. § 103(a) as
unpatentable over Shindo (US 2003/0062261 Al, published Apr. 3, 2003);
and claims 1 and 18–19 under 35 U.S.C. § 103(a) as unpatentable over
ASM1. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention relates to high purity hafnium having a purity of
4N or higher. Claim 1 is illustrative:

1 ASM International, Materials Park, Ohio, Properties and Selection:
Nonferrous Alloys and Special Purpose Materials: “Preparation and
Characterization of Pure Metals”, October 1990, Volume 2, pp. 1093-1097
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Application 10/595,660

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1. High purity hafnium having a purity of 4N or
higher excluding zirconium and gas components, an oxygen
content of 40wtppm or less, a sulfur content of 10wt ppm or
less, a phosphorus content of 10wt ppm or less, and a zirconium
content of 0.1 wt% or less.

OPINION2
We have thoroughly reviewed each of Appellant’s arguments for
patentability. We determine a preponderance of the evidence supports the
Examiner’s determination that Shindo renders the subject matter of claims
1–2, 9–11, 14–15 and 18–19 unpatentable for essentially the reasons
expressed in the Answer, including the Response to Argument section. We
add the following.
Appellant argues the Examiner has erred in rejecting the appealed
claims over Shindo based on improperly interpreting the terminology “or
less” to suggest reducing the Zr and O content to meet the claimed
invention. . (Br. 4–8). Specifically Appellant states:
In rejecting the claims of the present application based on the ’261
Shindo Reference, the use and meaning of the phrase “or less” is interpreted
by the Examiner to mean a range extending to zero (0.0wt%; 0wtppm).
Appellant submits that this is an error. Rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness. Here, interpreting “or less” with
respect to Zr or O content within a Hf material to mean and extend to
0.0wt% or 0 wtppm is a mere conclusory statement, is without rational
underpinning, and is therefore in error. (Br. 7).

In further support of this argument, Appellant refers to the examples
of Shindo as not describing a lower limit of 0.0wt% or 0 wtppm. (Br. 9–10)

2 Appellant has not present arguments specific to any claim. We limit our
discussion to independent claim 1.
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Application 10/595,660

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Appellant’s arguments are unavailing. Although we do not agree with
Appellant, assuming arguendo we were to agree with Appellant that Shindo
does not describe a lower limit of 0.0wt% or 0 wtppm, the claimed subject
matter would have been obvious from Shindo. The claimed invention does
not require the total exclusion of zirconium or oxygen. There is no dispute
that Shindo discloses high purity hafnium having a purity of 4N (99.99%)
can be manufactured. (Shindo ¶53). Shindo discloses the high purity
hafnium is characterized in that the content of zirconium is 0.5% or less and
gas components such as oxygen and carbon is less than 500 ppm. (¶¶ 30,
53). Shindo recognizes the difficulty in reducing the zirconium content
nevertheless states that it can be reduced lower than 0.5%. (¶65). Shindo
recognizes that the elimination of impurities—including oxygen—is
necessary because they are harmful to semiconductor devices. (¶¶ 16–17).
Shindo further discloses costly techniques are recognized for eliminating
these impurities. (¶18). Consequently, a person of ordinary skill in the art,
who is willing to accept the difficult techniques and expense, would have
sufficient skill and motivation to remove/reduce the desired amount of
impurities, thereby resulting in the claimed invention.
Appellant argues that the present application showsunexpected results.
(Br. 10–11).
The burden rests with Appellant to establish that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972).
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
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Application 10/595,660

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the conclusion of prima facie obviousness was based, rather than evaluating
it on its knockdown ability. In re Rinehart, 531 F.2d 1048, 1052 (CCPA
1976).
On this record, the Examiner correctly determined that the evidence in
the Specification is not persuasive of patentability of the subject matter of
the claims. (Ans. 10–11). Appellant has not adequately explained why the
results are unexpected, that is, would not have been expected to occur by the
elimination of impurities impurities in accordance with the teachings of
Shindo. As set forth above, Shindo discloses the desirability of eliminating
impurities contained in hafnium. . Appellant also has not adequately
explained why the results-data are considered to be commensurate in scope
with the argued claims.
Accordingly, we affirm the Examiner’s obviousness rejection of
claims 1–2, 9–11, 14–15 and 18–19 for the reasons presented by the
Examiner and given above.
Our affirmance of the rejections of claims 1–2, 9–11, 14–15 and 18–
19 over the Shindo reference is dispositive as to all claims on appeal. It is
not necessary, therefore, to address the other grounds of rejection entered by
the Examiner. See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012)
(affirming rejection of all claims under § 103(a) made it unnecessary to
reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (having decided a single dispositive issue, the ITC
was not required to review other matters decided by the presiding officer).
Therefore, we do not reach the rejection of claims 1 and 18–19 under
35 U.S.C. § 103(a) over ASM.
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Application 10/595,660

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ORDER
The decision of the Examiner to reject claims 1–2, 9–11, 14–15 and
18–19 over the Shindo is affirmed.
We do not reach the rejection of claims 1 and 18–19 under 35 U.S.C.
§ 103(a) over ASM.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED