Ex Parte Fukuyo et al

Patent Trial and Appeal Board

Sep 28, 2017

12922485 (P.T.A.B. Sep. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/922,485 09/14/2010 Hideaki Fukuyo OGOSH151USA 1843
270 7590 10/02/2017
HOWS ON fr HOWS ON T T P
EXAMINER
350 Sentry Parkway ABRAHAM, IBRAHIME A
Building 620, Suite 210
Blue Bell, PA 19422 ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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 HIDEAKI FUKUYO, MASATAKA YAHAGI,
YASUHIRO YAMAKOSHI, and
HIDEYUKI TAKAHASHI1
Appeal 2016-007097
Application 12/922,485
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as JX Nippon Mining &
Metals Corporation. Appeal Br. 2.
Appeal 2016-007097
Application 12/922,485
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—6, 16—19, 22 and 23 (product
claims). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A sintered compact target comprising compositional
constituents (A) and (B), where (A) represents one or more
chalcogenide elements selected from the group consisting of S,
Se, and Te, and (B) represents one or more elements selected
from the group consisting of Bi, Sb, As, P, and N, wherein the
sintered compact target is free from pores having an
average diameter of 1 pm or more, and the number of
micropores having an average diameter of 0.1 to 1 pm
existing in an area of 40000 pm2 of the target surface at
random check is 100 micropores or less, and wherein the
sintered compact target has a purity of 99.99% (4N) or
higher and an average crystal grain size of 50 pm or less.
Appeal Br. 39 (Claims Appendix).
The Examiner relies on the following prior art references as evidence
of unpatentability:
STATEMENT OF THE CASE
Le
Nonaka
Kardokus
Takahashi
(hereafter “Takahashi
Takahashi
(hereafter “Takahashi
US 2003/0196890 A1
US 2005/0031484 A1
US 2007/0099332 A1
Oct. 23, 2003
Feb. 10, 2005
May 3, 2007
Dec. 27, 2007US 2007 /0297938 A1
‘938”)
US 2009/0071821 A1
‘821”)
Mar. 19, 2009
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Application 12/922,485
Takahashi US 2010/0025236 A1 Feb. 4,2010
(hereafter “Takahashi ‘236”)
THE REJECTIONS
1. Claims 1^4 and 16 under 35 U.S.C. § 103(a) are rejected as
being obvious over Takahashi ‘938 in view of Le.
2. Claims 5, 6, 17 and 18 under 35 U.S.C. § 103(a) as being
obvious over Takahashi ‘938 in view of Le, and further in view of Takahashi
‘821.
3. Claims 1—6 and 16—18 are rejected under 35 U.S.C. § 103(a) as
being obvious over Takahashi ‘236 in view of Takahashi ‘938.
4. Claims 19, 22 and 23 are rejected under 35 U.S.C. § 103(a) as
being obvious over Takahashi ‘938 in view of Le, and further in view of
Takahashi ‘821, and further in view of Kardokus, and further in view of
Nonaka.
5. Claims 19, 22 and 23 are rejected under 35 U.S.C. § 103(a) as
being obvious over Takahashi ‘236 in view of Takahashi ‘938, and further in
view of Kardokus and Nonaka.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
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Application 12/922,485
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection 1
At issue in this rejection is whether the applied art suggests a target
that is “free from pores having an average diameter of “1 pm or more” and
requires a “number of micropores having an average diameter of 0.1 to 1 pm
existing in an area of 40000 pm2 of the target surface” to be “100
micropores or less”.
We incorporate the Examiner’s findings made on pages 3^4 of the
Answer regarding the Examiner’s stated position for Rejection 1.
Appellants first argue that the Le cannot be combined with Takahashi
‘938 because Le does not teach the same composition sputtering target as
claimed, and does not teach the same benefit of reducing the pores as taught
by the present application. Appeal Br. 6—10. Appellants also argue that Le
involves different chemical and physical sintered target materials, and that it
is an error to conclude that the porosity of the target material of Lee can be
transferred to and achieved in Takahashi ‘938. Appeal Br. 10-11.
In response, the Examiner disagrees and states that, as admitted by
Appellants, Takahashi ‘938 teaches the same composition sputtering target,
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Application 12/922,485
the same purity, and the same grain size as claimed, but that Takahashi ‘938
does not explicitly teach the pore size as claimed. Ans. 12.
The Examiner notes that it is well known in the art of sputtering
targets, prior to the time of the present application, to form them with
the highest density possible in order to avoid known issues with
pores/gaps/micropores. Ans. 12—13. The Examiner states that the highest
density possible (100% of theoretical density/true 100% density) would lead
to a completely dense target (i.e., no gaps/pores/micropores). Ans. 13. The
Examiner states that the reasoning for such a desire in sputtering targets
is not based on the composition of the sputtering target, but in the use and
the physical structure of the target. The Examiner states that a sputtering
target is used by applying a current/power to the target to cause the target to
be bombarded by a plasma to form a coating on a substrate. The Examiner
states that coating is formed when the plasma knocks loose particles from
the sputtering target which are deposited on the substrate, and this causes the
target material around pores to be less tightly held (as opposed to target
material without pores), which causes abnormal generation of particles that
effects the uniformity of the deposited film. The Examiner states that this a
physical issue of the sputtering target and not a compositional issue. Ans.
12—13. Importantly, this stated response made by the Examiner is not
disputed in the record as there is no benefit of a reply brief being filed.
The Examiner further states that rather than taking official notice
regarding this aspect of the claim, the Examiner cited to a general teaching
in the art (Le). The Examiner finds that Le teaches that hot isostatically
pressed targets for sputtering typically have a density of 99.999% of the
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theoretical density of the target. The Examiner finds that Le teaches that
targets are desired to have low porosity levels, and further states that the
pores can be absent all together through visual inspection. The Examiner
finds that Le teaches that it is desired to have a high density and low porosity
sputtering target in order to reduce abnormal discharge during sputtering by
loose target material surrounded by pores. The Examiner finds that
Le teaches that the advantage of a target with a high density and low
porosity is that it reduces this abnormal discharge and provides for denser
and more uniform film formation on a substrate. Lee, H 71—73. Ans. 13—
14.
In light of the above, the Examiner is unpersuaded by Appellants’
aforementioned argument that the materials disclosed in Le and Takahashi
‘938 cannot be properly combined to arrive at the claimed subject matter.
Appeal Br. 10—11. The Examiner adds that this argument is unpersuasive
because the issue of pores is a physical property issue that would affect all
targets regardless of composition.2 In addition, the Examiner explains that
Le is cited as a general teaching in the art with regard to the advantage of
having no pores in a sputtering target. Ans. 13—14. Based upon the
preponderance of the evidence as discussed by the Examiner in the record,
2 The Examiner explains that the present application, in || 55—56, discloses
that an advantage of reducing pore size is for the reduction of abnormal
discharge in order to improve the quality of the film deposited by use of the
sputtering target. The Examiner states that Le teaches the same advantage of
reducing porosity and increasing density. Le, 1 5. Ans. 14. Thus, it is the
Examiner’s position that Le teaches the same beneficial results as that
disclosed in the present application. We agree.
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Application 12/922,485
and absent evidence to the contrary, we are also unpersuaded by Appellants’
arguments on this issue.
Appellants then argue that the pores of Le are not discussed to be as
small as the claimed invention. Appellants argue that Le does not inspect
for such minute defects. Appeal Br. 11.
In response, the Examiner disagrees and states that in fact Le teaches
that the targets can have a density of 99.999% of theoretical. Le, 122. Ans.
15. The Examiner states that Le teaches that a visual inspection of the target
can be used to determine when pores are absent altogether. Le, 171. Ans.
15.
Appellants next argue the disclosure of high density does not mean
that pores are absent. Appellants argue that all sintered target would
inherently have pores for the reasons set forth on pages 11—15 of the Appeal
Brief.
The Examiner responds by stating that the assertion was not made that
high density alone would result in the absence of pores, however, for the
sake of argument, the Examiner states that a target that is truly 100% dense
would have no pores by the definition of density. Ans. 15. The Examiner
states that Appellants argue that it is not possible to have an absence of pores
regardless of the density of a sintered target, but do not provide any
evidentiary support for this assertion. Ans. 16. On the other hand, the
Examiner points out that, as evidenced by Le, it is known in the art to
produce a sintered target that is absent of pores (Le, Tflf 71—73). Ans. 16.
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Appellants next argue that the HIP (hot isostatic pressing) method
disclosed in the present application is not disclosed in the applied art.
Appeal Br. 15—19.
The Examiner responds and states that the claims are currently
directed to a product and not to a method. The Examiner also states that,
regardless, Takahashi ‘938 discloses that the targets are produce by a hot
pressure sintering method (149) and Le discloses that a HIP method is used
(| 71). The Examiner submits therefore that the standard method of
producing the sputtering target as claimed is well known in the art. Ans. 16.
In view of the Examiner’s stated position in the record as supported
by a preponderance of the evidence, we affirm Rejection 1.
Rejection 2
Rejection 2 involves the rejection of claims 5, 6, 17 and 18 under 35
USC § 103(a) as being obvious over Takahashi ‘938 in view of Le, and
further in view of Takahashi ‘821. These claims pertain to the target having
a deflecting strength of 40MPa or more, a relative density of 99.8% or
higher, a standard deviation of less than 1% for the relative density, and a
variation in the composition of respective crystal grains configuring the
target of less than +20% of the overall average composition, and also a
crystal grain size of 10 pm or less.. It is the Examiner’s position that the
additional secondary reference of Takahashi ‘821 suggests these elements of
the claims. Final Act. 5—6.
Appellants present arguments regarding claims 5, 6, 17, and 18,
beginning on page 21 of the Appeal Brief. Therein, Appellants refer to the
Takahashi Declaration, and submits that the secondary reference of
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Takahashi ‘821 fails to cure the deficiencies of the combination of
Takahashi ‘938 and Le involving the claimed pore size.3 Appeal Br. 21—22.
However, as discussed, supra, we are not convinced of any deficiency
regarding the combination of Takahashi ‘938 and Le pertaining to pore size,
and therefore are unpersuaded by Appellants’ argument in this regard.
We thus agree with the Examiner’s position to affirm Rejection 2.
Rejection 3
Rejection 3 involves the rejection of claims 1—6 and 16—18 under 35
USC § 103(a) as being obvious over Takahashi ‘236 in view of Takahashi
‘938.
We refer to the Examiner’s position on pages 8—11 regarding
Rejection 3. Essentially, the Examiner relies upon Takahashi ‘236 for
teaching the sputtering target has a relative density of 100% flflf 35-40 and
Table 1), and the Examiner states that a relative density of 100% would be
free of voids and pores. Ans. 7. The Examiner states that the target of
Takahashi ’236 would read on the claimed sintered compact target being
free from pores having an average diameter of 1 pm or more, and the number
of micropores having an average diameter of 0.1 to 1 pm existing in an area
of 40000 pm2 of the target surface at random check is 100 micropores or
less. Ans. 7.
2 In this Declaration, declarant Takahashi states that certain samples of
each GST sputtering target of Takahashi ‘821 were visually inspected, and it
was found that the surface of such samples had at least one pore of a
diameter greater than 1 pm or included greater than 100 micropores of a
diameter with a range of 0.1 to 1 pm. Declaration, || 7 and 8.
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Alternatively, the Examiner states that Takahashi ’236 teaches that a
high density target is desired in order to reduce the generation of cracks or
fractures during the manufacturing process and inhibit the generation of
nodules and particles during sputtering (| 25). Ans. 7.
Thus, the Examiner concludes that it would have been obvious to have
optimized the result-effective variable of density as evidenced by reference
Takahashi ’236 in the target of Takahashi ’236 in order to reduce the
generation of cracks or fractures during the manufacturing process and
inhibit the generation of nodules and particles during sputtering as disclosed
by Takahashi ’236. Ans. 7—8. The Examiner also states that in this case,
one skilled in the art would have been motivated to have achieved the
highest density possible in order to have the benefits taught by Takahashi
’236. Ans. 8.
Appellants set forth arguments on pages 24—35 of the Appeal Brief,
which we refer to herein. Those arguments are summarized as follows.
Appellants argue Takahashi ’236’s target does not have the claimed porosity
level, and refers to the filed Declaration in this regard. Appeal Br. 25—26.
Appellants argue that the target of 100% theoretical density is not the same
as a target that has a true density of 100%. Appeal Br. 25—27. Appellants
also argue that the Examiner’s assertion that when a target’s density
increases, the corresponding porosity decreases is in error. Appeal Br. 27—
31. Appellants also argue that the rejection fails to account for every
limitation. Appeal Br. 31—32. Appellants also argue that the rejection fails
because the claimed invention as a whole would not have been obvious.
Appeal Br. 32—35.
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In response, the Examiner is unpersuaded by Appellants’ arguments.
The Examiner concedes that Takahashi Declaration shows a target sample as
disclosed by Takahashi ’236 does not have the claimed porosity. Ans. 17.
However, the rejection involves a result effective variable rationale (as
discussed, supra), and the Examiner states that it is a common principal in
general chemistry that as the density of a ceramic or metallic article is
increased, its porosity is decreased. Ans. 17—18. The Examiner
additionally reiterates that Takahashi ’236 teaches that the higher the
density, the better the reduction of abnormal discharge. In light of these
points, it is the Examiner’s position that one would have been motivated to
achieve the highest density possible for a sputtering target to arrive at the
claimed subject matter, and thus such would have been obvious (in other
words, a result effective variable rationale). Ans. 18. Appellants’ reliance
upon the Takahashi Declaration does not adequately address this aspect of
the rejection. We thus are unpersuaded of error, and agree with the
Examiner’s obviousness conclusion.
In view of the above, we affirm Rejection 3.
Rejection 4
Rejection 4 involves the rejection of claims 19, 22 and 234 under 35
USC § 103(a) as being obvious over Takahashi ‘938 in view of Le, and
4 Claim 19 recites
The sintered compact target according to claim 17, wherein the
sintered compact target has a diameter of 380 mm or more and a
thickness of 20 mm or less.
Claim 22 recites:
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further in view of Takahashi ‘821, and further in view of Kardokus and
Nonaka.
Appellants argue that it should be understood, that the size (diameter
and thickness) will have an impact on the deflecting strength. Appeal Br.
35. Appellants state that a sintered compact of the claimed composition is
extremely fragile. Appellants state that only with the two-stage sintering
process according to the present application is it possible to produce a large
diameter (380 mm or greater) sintered compact sputtering target having
a thickness of 20 mm or less of the claimed composition, and still maintain a
deflecting strength of 40 MPa or above. Appeal Br. 35—36. Appellants
submit that it is an error to simply extract the teaching of a
deflecting strength from a particular sintered compact of unknown size from
Takahashi ‘821 and assume that if the target is made to the above stated size
(large diameter/small thickness) that the target would still have a deflecting
strength of 40 MPa or more. Appeal Br. 37.
The Examiner’s response is set forth on pages 16—17 of the Answer.
Therein, the Examiner states that Takahashi ‘821 teaches a similar target as
Takahashi ‘938, but also teaches the advantages of having a target with a
high deflecting strength of 70 MPa. The Examiner cites to Kardokus and
Nonaka for teaching that it is known in the art to produce a similar
The sintered compact target according to claim 19, wherein the purity
of the sintered compact target is 99.995% (4N5).
Claim 23 recites:
The sintered compact target according to claim 6, wherein the sintered
compact target has a diameter of 380 mm or more and a thickness of
20 mm or less, and wherein the purity of the sintered compact target is
99.995% (4N5).
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chalcogenide target having the dimensions as claimed. The Examiner states
that Appellants’ primary argument is that the art as a whole does not teach
that a target with such the dimensions would have the strength as claimed.
However, the Examiner states that the combination of Takahashi ‘938 in
view of Le and Takahashi ‘821 suggests the target as claimed except for
dimensions of the claimed target. The Examiner states that because
the dimensions of the claimed target are known in the art, applying those
dimensions to the target of Takahashi ‘938 in view of Le and Takahashi ‘821
would expectedly have the same claimed deflecting strength. In other
words, the Examiner bases this conclusion on the fact that all things being
similar would result in a similar deflecting strength. Absent supporting
evidence to the contrary, Appellants’ assertion amounts to a mere conclusory
statement that is entitled to little, if any, probative weight. See, e.g., In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We thus affirm Rejection 4.
Rejection 5
Rejection 5 involves the rejection of claims 19, 22 and 23 under 35
USC § 103(a) as being obvious over Takahashi ‘236 in view of Takahashi
‘938, and further in view of Kardokus and Nonaka.
Appellants group this rejection with Rejection 4 (discussed, supra).
Appeal Br. 35—37. In like manner, therefore, we affirm Rejection 5 for the
reasons that we affirm Rejection 4.
DECISION
Each rejection is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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