Ex parte Caskey

Board of Patent Appeals and Interferences

Sep 10, 1998

07897870 (B.P.A.I. Sep. 10, 1998)

Application for patent filed June 12, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GREGORY T. CASKEY
__________
Appeal No. 95-2312
Application No. 07/897,8701
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS and WEIFFENBACH, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1, 3, 5-8, 10-16, 18-24, 26-29, 31-36, 38, 39, 42,
43 and 45-54 which are all of the claims remaining in the
application.
Appeal No. 95-2312
Application No. 07/897,870
2
The subject matter on appeal relates to a substantially
non- sparking magnetron sputtering target having regions of
sputtering and nonsputtering for a direct current sputtering
process which comprises insulation means for electrically
insulating a non- sputtering region from a sputtering gas
plasma created during the magnetron sputtering process, the
insulation means being of sufficient thickness to
substantially prevent catastrophic sparking during sputtering.
The appealed subject matter also relates to methods of making
and using such a target. This subject matter is adequately
illustrated by independent claim 1 which reads as follows:
1. A substantially nonsparking magnetron sputtering
target having regions of sputtering and nonsputtering for a
direct current sputtering process, comprising
an electrically conducting magnetron target material for
use in a magnetron sputtering process; and
insulation means for electrically insulating said non-
sputtering regions from a sputtering gas plasma created during
said magnetron sputtering process, said insulation means
selected from the group consisting of 1) a substantially
nonsputtering, electrically insulating material substituted
for said nonsputtering regions of said target and 2) a
substantially non-sputtering, electrically insulating material
covering said non-sputtering regions of said target which are
exposed to said gas plasma during sputtering, said insulation
means being of sufficient thickness to substantially prevent
catastrophic sparking during sputtering.
Appeal No. 95-2312
Application No. 07/897,870
3
The references relied upon by the examiner as evidence of
obviousness are:
Appeal No. 95-2312
Application No. 07/897,870
4
Hoffman 4,525,264 Jun. 25,
1985
PCT Application (Dickey) WO 92/02659 Feb. 20,
1992
All of the claims on appeal stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Hoffman in view of Dickey.
We refer to the Brief and Reply Brief and to the Answer
for a complete exposition of the opposing viewpoints expressed
by the appellant and the examiner concerning the above noted
rejection.
As a preliminary matter, we note that, after expressing
differing viewpoints in the Brief and Answer concerning claim
groupings, the appellant has stated on page 11 of the Reply
Brief that dependent claims 6, 7 and 8 are grouped and argued
separately, and the examiner has not contested this statement
in his Supplemental Answer. Accordingly, we will separately
consider these dependent claims in our disposition of this
appeal.
OPINION
Appeal No. 95-2312
Application No. 07/897,870
5
For the reasons which follow, we will sustain the
examiner’s rejection of independent claims 1, 22 and 49 and of
the nonargued claims which depend therefrom, but we will not
sustain his rejection of independent claims 48, 52 and 53 nor
of the claims which depend therefrom nor of argued dependent
claims 6-8. That is, the rejection of claims 1, 3, 5, 10-16,
19-24, 26-29, 32-36, 38, 39, 42, 43, 46, 47 and 49-51 will be
sustained, but the rejection of claims 6-8, 18, 31, 45, 48 and
52-54 will not be sustained.
We agree with the examiner’s basic position that Hoffman
satisfies the requirement of independent claims 1, 22 and 49
concerning an electrically insulating material covering the
nonsputtering regions of the target to thereby substantially
prevent catastrophic sparking during sputtering. Stated
otherwise, these independent claims fail to distinguish over
Hoffman in the manner argued by the appellant. More
specifically, the insulating collar 57 of Hoffman (e.g., see
Figure 1 and lines 49-53 in column 5) and the target region
thereunder correspond to the here claimed insulating material
and nonsputtering regions. Moreover, patentee’s insulating
collar would necessarily and inherently prevent catastrophic
Appeal No. 95-2312
Application No. 07/897,870
6
sparking (at least for some period of time to some extent
which is a degree of sparking prevention embraced by the
claims under consideration). In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977)(where claimed and prior art
products are identical or substantially identical, the PTO can
require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of
his claimed product).
The appellant argues that Hoffman contains no teaching of
covering nonsputtering regions with insulating material to
substantially prevent catastrophic sparking. While this may
be true, it does not militate against a determination that
Hoffman’s insulating collar would inherently and necessarily
substantially prevent catastrophic sparking from nonsputtering
regions. The appellant further argues that “Hoffman clearly
leaves exposed nonsputtering regions of the target across its
surface and length such as is evident from even a cursory
review, for example Fig. 1" (Reply Brief, page 3). However,
the target regions shown to be exposed in patentee’s Figure 1
are in fact sputtering regions from which target material is
uniformly removed (e.g., see lines 12 through 37 in column 2).
Appeal No. 95-2312
Application No. 07/897,870
It is here appropriate to clarify that claim language2
such as “electrically insulating material covering said
nonsputtering regions of said target which are exposed to said
(continued...)
7
It is only those target regions covered by insulating collar
57 which may be appropriately characterized as nonsputtering
regions since the target material covered by this collar is
not exposed to gas plasma and therefore cannot be sputtered . 2
Appeal No. 95-2312
Application No. 07/897,870
(...continued)2
gas plasma during sputtering” (claim 1) must be interpreted as
defining nonsputtering regions “which are exposed to said gas
plasma during sputtering” but for the presence of the
aforementioned insulating material.
8
In light of the foregoing, we will sustain the examiner’s
§ 103 rejection of claims 1, 22 and 49 as well as nonargued
dependent claims 3, 5, 10-16, 19-21, 23, 24, 26-29, 32-36, 38,
39, 42, 43, 46, 47, 50 and 51 as being unpatentable over
Hoffman in view of Dickey.
As for argued dependent claims 6-8, we share the
appellant’s perception that the applied prior art contains no
teaching or suggestion of the features recited therein, and on
the record before us the examiner has proffered no insight on
this matter. Under these circumstances, we cannot sustain his
rejection of these claims.
We also cannot sustain the examiner’s rejection of
independent claims 48, 52 and 53 and concomitantly claims 18,
31, 45 and 54 which depend therefrom. It is the examiner’s
basic position that it would have been obvious to combine
Hoffman and Dickey is such a manner as to obtain the subject
matter defined by these claims including the removing and
Appeal No. 95-2312
Application No. 07/897,870
9
depositing steps of independent claim 48 and the curved,
electrically isolated shield
Appeal No. 95-2312
Application No. 07/897,870
In accordance with 37 CFR § 1.192(c)(1993) and the3
appellant’s previously discussed request on page 11 of the
Reply Brief, we have considered dependent claims 6-8
separately but have considered the other nonargued dependent
claims on appeal to stand or fall with the claims from which
they depend. Although our consequent treatment of the argued
versus nonargued dependent claims is entirely appropriate from
a procedural perspective, this treatment may have produced an
inconsistent disposition of certain dependent claims.
(continued...)
10
feature of independent claims 52 and 53. We agree with the
appellant, however, that these references contain no teaching,
suggestion or incentive for somehow combining the disparate
teachings thereof in such a manner as to result in the subject
matter defined by the aforementioned independent claims, and
again the examiner has provided us with essentially no
explanation as to how and why an ordinarily skilled artisan
would have combined these reference teachings to thereby
result in subject matter corresponding to that defined by the
claims under consideration.
SUMMARY
For the above stated reasons, we have sustained the
examiner’s rejection of claims 1, 3, 5, 10-16, 19-24, 26-29,
32-36, 38, 39, 42, 43, 46, 47 and 49-51 but not his rejection
of claims 6-8, 18, 31, 45, 48 and 52-54 .3
Appeal No. 95-2312
Application No. 07/897,870
(...continued)3
Specifically, the rejection sustained above includes nonargued
dependent claims certain of which may define features
corresponding to those defined by argued claims that were
determined to be patentable over the applied prior art. The
appellant and the examiner may wish to resolve this
inconsistency in any further prosecution that may occur.
11
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge)
Appeal No. 95-2312
Application No. 07/897,870
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Appeal No. 95-2312
Application No. 07/897,870
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Donald S. Gardner
Van Dyke, Gardner, Linn & Burkhart
Suite 207
2851 Charlevoix Drive, S.E.
Grand Rapids, MI 49546