Ex Parte Fukushima et al

Patent Trial and Appeal Board

Oct 4, 2018

13142427 (P.T.A.B. Oct. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/142,427 06/28/2011 Atsushi Fukushima
270 7590 10/09/2018
HOWSON & HOWSON LLP
350 Sentry Parkway
Building 620, Suite 210
Blue Bell, PA 19422
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
OGOSHl 74USA 3372
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
10/09/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@howsoniplaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUSHI FUKUSHIMA and KUNIHIRO ODA
Appeal 2018-0003 81
Application 13/142,427
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 2 and
15-17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants identify the real party in interest as "JX Nippon Mining &
Metals Corporation" (Appeal Brief filed May 12, 2017 (hereinafter "Appeal
Br.") at 2).
2 Br. 4--12; Final Office Action entered December 29, 2016 (hereinafter
"Final Act.") at 3-11; Examiner's Answer entered July 26, 2017 (hereinafter
"Ans.") at 2---6.
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Application 13/142,427
I. BACKGROUND
The subject matter on appeal relates to a high purity tantalum
sputtering target comprising specified amounts of niobium as an essential
component (Specification filed June 28, 2011 (hereinafter "Spec.") ,r,r 1, 9--
10). Representative claim 2, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief (Br. 14 ), with key
limitations emphasized, as follows:
2. A tantalum sputtering target containing 50 mass
ppm or more and 100 mass ppm or less of niobium as an
essential component, having a purity of 99. 999 mass% or more
excluding niobium and gas components, having an average
crystal grain size of 100 µm or less, having a variation of niobium
content in the target of ±20% or less, and having a variation of
average crystal grain size of ±20% or less.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains three rejections under pre-AIA 35
U.S.C. § I03(a), as follows:
A. Claims 2 and 15-17 as unpatentable over Wickersham, Jr., et
al. 3 (hereinafter "Wickersham");
B. Claims 2, 15, and 16 as unpatentable over Wickersham and
Segal et al. 4 (hereinafter "Segal"); and
C. Claim 17 as unpatentable over Wickersham, Segal, and Ford et
al. s
(Ans. 2---6; Final Act. 3-11.)
3 US 2007/0089815 Al, published April 26, 2007.
4 US 6,878,250 Bl, issued April 12, 2005.
5 US 6,887,356 B2, issued May 3, 2005.
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Application 13/142,427
III. DISCUSSION
A dispositive issue in this appeal is whether the Examiner provided
sufficient evidence to establish that Wickersham describes a tantalum
sputtering target that satisfies both the niobium content and purity
limitations recited in claim 2 (Br. 4--8; Ans. 4---6; Final Act. 3). For the
reasons given by the Appellants and below, we hold that the Examiner's
rejection lacks sufficient evidentiary support and, therefore, is not well-
founded.
The Examiner found that Wickersham describes a tantalum sputtering
target that preferably has a purity of at least 99.99%, which, in the
Examiner's words, "overlaps the claimed purity of 99 .999% or more
excluding niobium and gas components" (Final Act. 3, citing Wickersham
,r 52). The Examiner also found that Wickersham "further teaches metallic
impurities, like Nb (Niobium), can be below (individually or combined) 100
ppm, 50 ppm, 20 ppm, 10 ppm, or even below 5 ppm total" (id., citing
Wickersham ,r 53).
The problem with the rejections, however, is that claim 2 recites "a
purity excluding niobium and gas components of 99 .999 mass%" (Br. 14;
emphasis added), whereas Wickersham describes a purity level defined by
excluding gases (but not niobium). Thus, consistent with the Appellants'
position (Br. 5---6), if other metallic impurities ( excluding niobium) are
present in the claimed sputtering target, they can only be present in an
amount less than 0.001 mass%, or 10 ppm. As demonstrated in the
Appellants' Specification (i-f 13, Table 1 ), high purity tantalum contains
significant amounts of other metals including molybdenum and tungsten,
together with niobium, as impurities. Even if a tantalum target containing a
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Application 13/142,427
high level niobium as an impurity (i.e., 50-100 ppm) is selected in
Wickersham, as required by claim 2, the Examiner did not direct us to
additional evidence or basis to reasonably believe that the levels of other
metallic impurities (e.g., molybdenum and tungsten) would inherently or
necessarily be in ranges that satisfy the "99.999 mass%" purity requirement
in claim 2. In this regard, Wickersham teaches that "[t]he impurities (e.g.,
metallic impurities) that may be present in the tantalum metal can be less
than or equal to 0.005% and typically comprise other bee refractory metals
of infinite solubility in tantalum, such as niobium, molybdenum, and
tungsten" (Wickersham ,r 53; emphasis added).
The Examiner stated that Wickersham teaches adjusting the niobium
impurity level "without adding Wand/or Mo" (Ans. 4, citing Wickersham
,r 53). Although Wickersham teaches that the "metallic impurities, like
Mo, W, and Nb (in the case of Ta) can be below (individually or combined)
100[ ]ppm, below 50 ppm, below 20 ppm, below 10 ppm, or even below 5
ppm total" (Wickersham ,r 53), that disclosure is insufficient to establish that
Nb may be present in an amount of 50-100 ppm to the exclusion of other
metallic impurities.
Furthermore, the Examiner did not adequately consider the
Appellants' proffered evidence of secondary considerations in terms of
shortening the bum-in time (Br. 7, relying on Spec. ,r 29 (Table 2)). Here,
the Examiner merely stated that "the property of 'shorten the bum-in time'
as argued is not included in the instant claims and the Appellant does not
provide any evidence to show the criticality of the claimed purity range in
term of this property" ( Ans. 5). But "[ w ]e are aware of no law requiring that
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Application 13/142,427
unexpected results relied upon for patentability be recited in the claims." In
re Merchant, 575 F.2d 865, 869 (CCP A 1978).
The Examiner's statement that the Appellants did not provide any
evidence is plainly incorrect as the Appellants did refer to the data provided
in the Specification. The Examiner's failure to analyze adequately the
proffered evidence constitutes an additional reversible error. In re Sullivan,
498 F.3d 1345, 1352 (Fed. Cir. 2007) ("Whether the composition would
have been obvious cannot be determined without considering evidence
attempting to rebut the prima facie case."); In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976) ("When prima facie obviousness is established and
evidence is submitted in rebuttal, the decision-maker must start over."); In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) ("[T]he PTO must consider
comparative data in the specification in determining whether the claimed
invention provides unexpected results.").
For these reasons, and those given by the Appellants, we cannot
sustain the Examiner's rejections.
IV. SUMMARY
Rejections A through Care not sustained. Therefore, the Examiner's
final decision to reject claims 2 and 15-17 is reversed.
REVERSED
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