Ex parte Finley et al.

Board of Patent Appeals and Interferences

Aug 31, 1998

08042185 (B.P.A.I. Aug. 31, 1998)

Application for patent filed April 2, 1993.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES J. FINLEY, THOMAS J. WAYNAR
and LARRY A. MILLER
__________
Appeal No. 96-0317
Application 08/042,1851
___________
ON BRIEF
___________
Before WINTERS, JOHN D. SMITH and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of claims 1-10 and 12-20,
which are all of the claims remaining in the application.
Appeal No. 96-0317
Application 08/042,185
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THE INVENTION
The subject matter of appellants’ claimed invention is directed toward a method for
bonding a silicon-containing composition, such as a sputtering target, to a metal surface,
such as the surface of a cooling plate, by arc spraying onto a coarse silicon-containing
surface, in order, a metal adhesion layer, a solderable layer and a solder layer, and
soldering the solder layer to the metal surface. Claim 1 is illustrative and reads as follows:
1. A method for bonding a silicon-containing composition to a metal surface
comprising the steps of:
a. providing a coarse silicon-containing surface;
b. arc-spraying a metal adhesion layer onto the coarse silicon-containing surface;
c. arc-spraying a solderable layer onto the metal adhesion layer;
d. arc-spraying a solder layer onto the solderable layer; and
e. soldering the solder layer to the metal surface.

THE REFERENCES
Lindmayer (Lindmayer ‘391) 4,297,391 Oct. 27, 1981
Lindmayer (Lindmayer ‘812) 4,492,812 Jan. 8, 1985
Leas 4,511,600 Apr. 16, 1985
W.E. Ballard, “Preparation of Surfaces for Metal Spraying”, Metal Spraying and Sprayed
Metal, Ch. VI, 95-119 (Charles Griffin & Co., London, 3d ed. 1948) (Ballard).
THE REJECTION
Appeal No. 96-0317
Application 08/042,185
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Claims 1-10 and 12-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over appellants’ acknowledged prior art in view of Leas, Lindmayer ‘391 or
Lindmayer ‘812, and Ballard.
OPINION
We have carefully considered all of the arguments advanced by appellants and the
examiner and agree with the examiner that the invention recited in claims 1-7, 10 and 12-
17 would have been obvious to one of ordinary skill in the art at the time of appellants’
invention over the applied references. Accordingly, the aforementioned rejection of these
claims will be affirmed. However, we agree with appellants that the above rejection of
claims 8, 9 and 18-20 is not well founded. We therefore will reverse this rejection.
At the outset, we note that appellants state that the claims stand or fall in five groups
as follows: 1) claims 1-7, 16 and 17; 2) claims 8 and 18; 3) claims 9, 19 and 20; 4) claims
10, 13 and 14; 5) claims 12 and 15 (brief, pages 3-4). Appellants, however, separately
argue only the first three groups (brief, pages 4-7). We therefore consider the claims in the
fourth and fifth groups to stand or fall with the broadest claim argued, i.e., claim 1, and limit
our discussion of the first, fourth and fifth groups to that claim. See In re Ochiai, 71 F.3d
1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(5)(1993).
The acknowledged prior art relied upon by the examiner (answer, page 4) includes
Appeal No. 96-0317
Application 08/042,185
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appellants’ discussion of U.S. Patent No. 4,341,816 which, appellants state, discloses
attachment of a sputtering target to a cooling plate by plasma spraying a metal adhesive
layer onto a surface of the target, coating the adhesive layer with a solderable layer by
plasma spraying, and soldering the solderable layer onto the surface of the cooling plate
(specification, page 1). The examiner also relies upon appellants’ statements
(specification, page 1) that plasma spraying an aluminum layer onto a sputtering target
was known in the art and that it was known in the art that silicon was difficult to wet with
solder (answer, pages 4-5).
Appellants argue that Lauterbach et al. do not disclose depositing a solder layer
onto a solderable layer by any method, much less by arc spraying (brief, pages 4-6). In our
view, the teaching that the solderable layer is soldered to the cooling plate would have
fairly suggested, to one of ordinary skill in the art, use of solder to achieve the soldering.
We are not persuaded by the argument that the reference does not disclose applying a
solder layer by arc spraying because such a layer is made of metal (specification, page 5),
and both Lindmayer ‘391 (col. 2, lines 62-68) and Lindmayer ‘812 (col. 1, line 64 - col. 2,
line 1) teach that it was known in the art to apply layers of metallic material by arc spraying.
Appellants argue that there is no apparent incentive for one of ordinary skill in the
art of bonding silicon-containing targets to metal to even consider the Lindmayer
references which pertain to the solar cell art wherein arc spraying is disclosed as an
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Application 08/042,185
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alternative to plasma spraying for forming electrical contact points (brief, page 6).
Appellants apparently are arguing that the secondary references are nonanalogous
art. The test of whether a reference is from a nonanalogous art is first, whether it is within
the field of the inventor's endeavor, and second, if it is not, whether it is reasonably
pertinent to the particular problem with which the inventor was involved. See In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference is reasonably
pertinent if, even though it may be in a different field of endeavor, it is one which because
of the matter with which it deals, logically would have commended itself to an inventor's
attention in considering his problem. See In re Clay, 966 F.2d 656, 659, 23 USPQ2d
1058, 1061 (Fed. Cir. 1992).
In our view, an inventor who was considering the problem addressed by appellants
of using thermal spraying to bond metal layers to silicon-containing substrates reasonably
would have considered references directed toward using such spraying techniques to
apply metal layers to silicon-containing substrates generally. The secondary references,
therefore, logically would have commended themselves to the inventor’s attention.
Moreover, in the discussion of the prior art in their specification (page 1), appellants state
that it was well known in the art that silicon can be metallized with aluminum to form
electrodes for solar cells. This disclosure indicates that appellants considered the art of
metallizing silicon for making solar cells, and therefore would have taken into account
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Application 08/042,185
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references such as the Lindmayer references which are directed toward that art.
Appellants argue that the secondary references relate to the solar cell art where only
an electrically conductive contact is applied on a silicon solar cell, and that there is no
suggestion that the various thermal spray techniques disclosed therein are universally
equivalent or that arc spraying could be substituted for plasma spraying of adhesive layers
on a silicon-containing target material or for applying solderable layers (brief, page 5).
Lindmayer ‘391 teaches that arc spraying and plasma spraying both are suitable for
applying metallic material to a solar cell (col. 2, lines 54-68). In our view, this teaching
would have been sufficient to reasonably suggest, to one of ordinary skill in the art that, that
either of these methods is effective for applying metal layers onto silicon surfaces, whether
in a pattern as in the Lindmayer methods or as a bonding layer as in the Lauterbach
method. Furthermore, Lindmayer ‘391 teaches that a plasma flame can be part of an
electric arc (col. 5, lines 50-64), which would have indicated to one of ordinary skill in the
art that electric arc spraying and plasma spraying are sufficiently similar in nature that an
electric arc process would be a suitable alternative to the plasma spraying process of
Lauterbach.
Lindmayer ‘812 indicates that both arc spraying and plasma spraying can be used
for coating surfaces in general with metallic material (col. 1, lines 64-68), which would have
fairly suggested, to one of ordinary skill in the art, that arc spraying would be effective for
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Application 08/042,185
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applying the metal layers in the Lauterbach method. Also, the statement by Lindmayer
‘812 that the terms arc spraying and plasma spraying are used synonymously by
Lindmayer ‘812 in the context of spraying metallic material onto the surface of a solar cell
(col. 1, line 64 - col. 2, line 3) would have fairly suggested, to one of ordinary skill in the art,
that these are alternative methods for applying metal layers to silicon-containing surfaces.
One of ordinary skill in the art may have expected each of arc spraying and plasma
spraying to have advantages and disadvantages relative to the other and therefore
expected one to be more advantageous in a particular application than the other.
However, the teachings in the Lindmayer references discussed above, in our view, would
have been sufficient to motivate one of ordinary skill in the art to use either plasma
spraying or arc spraying to apply the metal layers in the Lauterbach method, and would
have provided such a person with a reasonable expectation of success in doing so. Thus,
we conclude that use of arc spraying to apply the metal layers in the Lauterbach method
would have been prima facie obvious to one of ordinary skill in the art. See In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d
894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988); In re Longi, 759 F.2d 887, 892-93,
225 USPQ 645, 648 (Fed. Cir. 1985).
Appellants argue that Ballard does not appear to suggest any method for preparing
silicon surfaces for metallization (brief, page 7). Ballard discloses a known method for
Appeal No. 96-0317
Application 08/042,185
A discussion of Leas is not necessary to our decision.2
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metallizing glass wherein metal is applied directly to hot glass, and then teaches that glass
can be shot blasted (page 118). Such shot blasting, Ballard teaches, prepares surfaces
for coatings (page 95). These teachings would have fairly suggested, to one of ordinary
skill in the art, shot blasting glass prior to metallizing the glass.
For the above reasons, we conclude, based on the preponderance of the evidence
and argument in the record, that the invention recited in appellants’ claims 1-7, 10, and 12-
17 would have been obvious to one of ordinary skill in the art within the meaning of 35
U.S.C. § 103.2
Appellants argue that the applied references do not teach or suggest the
application of a metal layer or the further application to a solder layer to the surface of a
metal backing plate by any method, much less arc spraying as recited in claims 8, 9 and
18-20 (brief, pages 5-7). The examiner argues that appellants do not state why claims 8, 9
and 18-20 are patentably distinct by virtue of the limitations recited therein, and therefore
considers the claims to stand or fall together (answer, page 2). However, appellants’
argument is a substantive argument that the references do not disclose or suggest the
subject matter recited in those claims, and therefore should have been addressed by the
examiner. Since we do not find in the applied references a disclosure or suggestion to arc
spray a metal layer onto the metal surface to be bonded to the silicon-containing surface,
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Application 08/042,185
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or to arc spray a layer of solder onto the metal layer, we do not sustain the rejection of
claims 8, 9 and 18-20.
DECISION
The rejection of claims 1-7, 10, and 12-17 under 35 U.S.C. § 103 over appellants’
acknowledged prior art in view of Leas, Lindmayer ‘391 or Lindmayer ‘812, and Ballard, is
affirmed. The rejection of claims 8, 9 and 18-20 under 35 U.S.C. § 103 over these
references is reversed.
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Application 08/042,185
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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
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-0317
Application 08/042,185
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