Ex Parte Butzer et al

Board of Patent Appeals and Interferences

Apr 24, 2010

11062777 (B.P.A.I. Apr. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREG A. BUTZER, ROBERT H. HUIZENGA, and
STEVEN D. MUSSMAN
____________

Appeal 2009-0105094
Application 11/062,777
Technology Center 1700
____________

Decided: April 26, 2010
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 6 and 10-13 which are the only claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2009-0105094
Application 11/062,777

I. BACKGROUND
Claims 1 and 10 are illustrative of the invention and read as follows
(formatting and material in brackets added for clarity):

1. Method of making a sputtering target comprising molybdenum [Mo],
comprising

[a] forming a first preform by diffusion bonding adjacent sintered
powder metal bodies comprising Mo together at a metal-to-metal joint in a
hot isostatic pressing operation using gas pressure,

[b] forming a second preform by diffusion bonding adjacent sintered
powder metal bodies comprising Mo together at a metal-to-metal joint in a
hot isostatic pressing operation using gas pressure, and

[c] then diffusion bonding adjacent said first preform and said second
preform together at a metal-to-powder metal layer-to-metal joint
therebetween in a subsequent hot isostatic pressing operation using gas
pressure
wherein the powder metal layer comprises Mo.

10. A Mo-based sputtering target having a HIP’ed microstructure
comprising equiaxed grains of grain size of about 30 microns or less and an
oxygen content of less than 100 ppm by weight.

The Examiner relied upon the following prior art:
Boyer 4,032,337 Jun. 28, 1977
Hostatter 4,594,219 Jun. 10, 1986
Hirakawa (as translated) JP 2003-129232 May 8, 2003
Guo 2004/0108028 A1 Jun. 10, 2004

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
2
Appeal 2009-0105094
Application 11/062,777

a) claims 1, 2, 4, 6, 9, 12, and 13 as unpatentable over the combined
prior art of Hirakawa, Hostatter, and Boyer;
b) claims 10 and 11 as unpatentable over the combined prior art of
Hirakawa, Hostatter, and Guo.
ISSUES
With respect to the first rejection, we need only discuss method
claim 1.1 The issue is whether the Examiner erred in his determination of
obviousness of independent claim 1 because the applied prior art does not
teach or suggest all the method steps required in claim 1.
We answer this question in the affirmative.
With respect to the second rejection, the issue is whether the
Examiner erred because the applied prior art does not teach or suggest a
grain size of “about 30 microns or less” as required by product claim 10.
We answer this question in the negative.
OPINION
Principles of Law
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the Examiner must
show that each limitation of the claim is described or suggested by the prior
art or would have been obvious based on the knowledge of those of ordinary
skill in the art. See, e.g., In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Furthermore, “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated

1 The only other independent method claim 13 requires all the same method
steps as claim 1.
3
Appeal 2009-0105094
Application 11/062,777

reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007)).
Analysis with Factual Findings
Applying the preceding legal principles with respect to obviousness to
the factual findings made by the Examiner in this record, we determine that
the Examiner has not properly identified factual findings and reasoning for
establishing a prima facie case of obviousness based on the applied prior art
with respect to independent claim 1.
We agree with Appellants that neither Hirakawa nor any of the other
applied references explicitly teaches manufacturing a sputtering target (or
any other object) by diffusion bonding first and second preforms that were
each made of multiple adjacent sintered powder metal bodies diffusion
bonded together at a metal-to-metal joint prior to assembly by diffusion
bonding these two preforms at a metal-to-metal powder layer-metal joint as
required by claim 1 (see generally Ans. 3; App. Br. 4-6). The Examiner’s
reliance on paragraph [0018] of Hirakawa in the “Response to Argument”
section of the Answer (Ans. 8) for these steps is unavailing, since, as pointed
out by Appellant, Hirakawa “simply does not disclose or suggest [the]
recited steps of claim 1” (App. Br. 10).2
The Examiner does not direct us to any disclosure in Hirakawa that
teaches forming a first and second preform, each of multiple adjacent bodies,
before combining them into a sputtering target as recited in claim 1 (see
Ans.; also generally Hirakawa). Hirakawa discloses a plurality of individual

2 We also agree with Appellants that the Examiner’s interpretation of the
claim language as not requiring a layer of metal powder at the joint of the
two preforms is unreasonable (Reply Br. 2, 3).
4
Appeal 2009-0105094
Application 11/062,777

block preforms, each block formed by powder consolidation and sintering
(e.g., paragraphs [0014], [0018], [0020]), with all of these blocks described
as diffusion bonded together in a single pressurizing container 20 to make
the sputtering target (see e.g. Hirakawa Fig. 1; para. [0021], [0025]).
The Examiner has not identified any teaching or suggestion in
Hirakawa that would support any reasoned finding concerning how
Hirakawa would build up such a target so as to render claim 1 obvious.
Therefore, we find the Examiner's initial showing to be lacking with respect
to the claimed steps required in claim 1. The Examiner has not relied upon
any of the other applied references to teach or suggest these features, and
these references do not cure the deficiencies of the Hirakawa with respect to
the above noted claim limitations.
In light of these circumstances, we cannot sustain the Examiner's
rejection of independent method claim 1 (as well as claim 13), and its
respective dependent claims.
The 103 Rejection of Claims 10 and 11
Appellants treat the claims rejected as a group (App. Br. 14, 15).
Accordingly, we select claim 10 as representative of the group.
The Examiner correctly finds that Hirakawi describes a Mo-based
sputtering target of HIP’ed microstructure (Ans. 7). The Examiner relies
upon Guo to exemplify that smaller grains sizes are desirable in general for
sputtering target materials and that equiaxed grains of a size less than 30
microns were known for a Ni-V sputtering target, and reasonably concludes
5
Appeal 2009-0105094
Application 11/062,777

it would have been prima facie obvious to use such a grain size in Hirakawa
for the known benefits of smaller grain sizes (id.).3
Appellants’ contentions that since Guo is directed to a Ni-V sputtering
component formed by thermomechanical working, Guo does not teach or
suggest equiaxed grains of grain size less than 30 microns for a Mo-based
sputtering target such as that described in Hirawaki (App. Br. 14, 15; Reply
Br. 4) are not persuasive of error. Hirawaka describes that a “common,
greatly desired” characteristic for sputtering targets is that of “an even,
minute constitution” (p. 4, para, [0004]; emphasis provided). Hirakawa
describes that an even minute constitution is hard to achieve with other
methods, but may be achieved by using the powdered consolidated blocks
connected together by the HIP method taught therein (see, p. 5, para. [0005],
p. 7, para. [0011], p. 8, para. [0014]). A person of ordinary skill in the art
would have reasonably expected that the known advantages for use of
minute powdered grain size would have been suitable and desirable for
sputtering targets including Mo-based sputtering targets.
In light of these circumstances, Appellants have not provided any
persuasive technical reasoning or evidence to refute the Examiner’s
reasonable finding that Guo suggests to the artisan that equiaxed grains of a
grain size less than 30 microns would have been important for any sputtering
target material, such as that of Hirakawa, in order to obtain the known
benefits of physical and/or chemical homogeneity via a minute even
constitution (Ans. 7, 10).
CONCLUSION/ORDER

3 We agree with the Examiner that Hostatter is not necessary for the
rejection of the product recited in claim 10.
6
Appeal 2009-0105094
Application 11/062,777

The Examiner’s decision to reject claims 1, 2, 4, 6, 9, 12, and 13 as
unpatentable over the combined prior art of Hirakawa, Hostatter, and Boyer
is reversed.
The Examiner’s decision to reject claims 10 and 11 as unpatentable
over the combined prior art of Hirakawa, Hostatter, and Guo is affirmed.
AFFIRMED-IN-PART

tc

Mr. Edward J. Timmer
P.O. Box 770
Richland, MI 49083-0770
7