Ex Parte ShindoDownload PDFPatent Trial and Appeal BoardDec 31, 201410595660 (P.T.A.B. Dec. 31, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YUICHIRO SHINDO ____________ Appeal 2013-000198 Application 10/595,660 Technology Center 1700 ____________ 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 Appeal 2013-000198 Application 10/595,660 2 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. Appeal 2013-000198 Application 10/595,660 3 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 Appeal 2013-000198 Application 10/595,660 4 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. Appeal 2013-000198 Application 10/595,660 5 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 Copy with citationCopy as parenthetical citation