Ex Parte Matera et al

Board of Patent Appeals and Interferences

May 30, 2012

11121440 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/121,440 05/04/2005 John P. Matera 03050CIP (3600-454-01) 3783
95360 7590 05/31/2012
Cabot Corporation/ LAK
Cabot Corporation, Law Department
157 Concord Road
Billerica, MA 01821
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOHN P. MATERA, ROBERT B. FORD
and CHARLES E. WICKERSHAM JR.
______________

Appeal 2009-015175
Application 11/121,440
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 23-26, 28, 37, 39-42 and 44-57 in the
Office Action mailed November 25, 2006. We have jurisdiction. 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008).
An oral hearing was held May 9, 2012
We reverse the decision of the Primary Examiner.
Claims 23, 24, 26, 37, 44, 45 and 57 illustrate Appellants’ invention
of a sputter target and a metal plate, and are representative of the claims on
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appeal:
23. A sputter target having a grain size pattern that is a continuous
radial-circumferential pattern around the center of the target, wherein the
grain size pattern is circular around the center and also radiates out to an
outer diameter of said target.
24. A sputter target having a crystal structural pattern that is a
continuous radial-circumferential pattern around the center of the target
26. A sputter target having a variation of diameter of 5% or less
around the sputter target, wherein said sputter target comprises a cylindrical
shape having crystallographic texture throughout the thickness and diameter
of said target.
37 A metal plate having a controlled texture gradient through the
thickness of the metal plate, wherein said metal plate is a BCC metal plate.
44. A metal plate having a transitional primary texture throughout the
thickness of the metal plate.
45. A metal plate, wherein said metal plate has a positive texture
gradient for a first crystallographic orientation and a negative gradient for a
second crystallographic orientation different from said first crystallographic
orientation, throughout the thickness of the metal plate.
57. A metal plate, wherein said metal plate has a positive texture
gradient for a first crystallographic orientation and a negative gradient for a
second crystallographic orientation different from said first crystallographic
orientation throughout the thickness of the metal plate, and a texture gradient
that is 3%/mm or less for a third crystallographic throughout the thickness of
the target.
Br. 44-46, Claim App.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: under 35 U.S.C. § 112, second paragraph, claims
23-25 and claims 45-53 and 55; under 35 U.S.C. § 102(b), claim 24 over
Turner (US 6,331,233 B1), and claims 37, 42 and 44 over Michaluk (US
6,462,339 B1)); under 35 U.S.C. §§ 102(b) and 103(a), claims 23 and 25
over Turner, and claims 45, 46, 49, 50 and 57 over Michaluk; and under
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35 U.S.C. § 103(a), claims 26, 28 and 54 over Jennings (US 3,573,185) and
Turner, and claims 37 and 39-42 over Dunlop (US 5,590,389). Br. 10; Ans.
3, 4, 5, 6, 8, 9.
Opinion
We agree with Appellants that the Examiner erred in determining that
representative claims 23, 24 and 45 fail to comply with § 112, second
paragraph. Ans. 3-4, 10-14; Br. 11-18. In order to establish a prima facie
case of non-compliance with § 112, second paragraph, the Examiner must
establish that when the language of a claim is considered as a whole as well
as in view of the written description in the Specification as it would be
interpreted by one of ordinary skill in the art, the claim in fact fails to set out
and circumscribe a particular area with a reasonable degree of precision and
particularity. See, e.g., Marley Mouldings Ltd. v. Mikron Industries, Inc.,
417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232,
1235 (CCPA 1971); see also, e.g., In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994)); The Beachcombers, Int’l. v. WildeWood Creative Prods.,
31 F.3d 1154, 1158 (Fed. Cir. 1994) (quoting Orthokinetics, Inc v. Safety
Travel Chairs Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)) (a claim complies
with this statutory provision when “those skilled in the art would understand
what is claimed when the claim is read in light of the specification”).
We are of the view that the Examiner has not carried the burden of
establishing a prima facie case that claims 23 and 24 do not comply with
§ 112, second paragraph. We determine that one of ordinary skill in the art
would understand what is claimed when claims 23 and 24 are read in light
the written description in the Specification. We find that as Appellants point
out, the Specification discloses to this person the process of subjecting
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ingots to rotary axial forging, that is, orbital forging, to form sputter targets
having a grain size pattern (claim 23) and a crystal structure pattern (claim
24) that is a continuous radial-circumferential pattern around the center of
the target as specified in these claims. Spec., e.g., ¶¶ 0032-0036, 0050,
0056, Figs. 1-3. Br. 12-17, citing Spec. ¶ 0050, Figs. 2A-C. The Examiner
does not explain why one of ordinary skill in the art would not understand
what is claimed in claims 23 and 24 in light of this disclosure. Ans. 3-4,
10-14. We note that the breadth issues with respect to grain size, crystal
structure and the shape of the sputter target raised by the Examiner are not
indicative of indefiniteness. See, e.g., In re Gardner, 427 F.2d 786, 788
(CCPA 1970) (“Breadth is not indefiniteness.”).
We are further of the view that the Examiner has not carried the
burden of establishing a prima facie case of non-compliance with § 112,
second paragraph, in contending, without explanation, that claim 45 “in the
way it is written” does not specify a positive texture gradient “and” a
negative texture gradient “throughout the thickness of the metal plate,” as
Appellants contend. Ans. 4, 13-14; Br. 18, citing Spec. 16:19-23, ¶ 0053,
and 17:16-20, ¶ 0054.
Accordingly, in the absence of a prima facie case of indefiniteness, we
reverse the grounds of rejection of the claims 23-25 and claims 45-53 and 55
under 35 U.S.C. § 112, second paragraph.
We agree with Appellants that the Examiner erred in finding that as a
matter of fact Turner described a sputter target to one skilled in the art that
falls in representative claims 23 and 24 within the meaning of § 102(b), and
in determining that Turner would have led one of ordinary skill in the art to a
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sputter target that falls within claim 23 within the meaning of § 103(a).1
Ans. 4-5, 5-6, 14-17; Br. 18-21, 25-28. The plain language of claims 23 and
24, considered in light of the Specification, specifies a sputter target that has
a grain size pattern structure (claim 23) and a crystal structure pattern
structure (claim 24) that is a continuous radial-circumferential pattern
around the center of the target, with claim 23, as well as claim 25 dependent
on claim 24, further specifying that the grain size pattern is circular around
the center and also radiates out to an outer diameter of said target. See, e.g.,
In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). We found that the
Specification discloses the process of subjecting an ingot to orbital forging
to form a sputter target having the specified grain size pattern and crystal
structure pattern. See above pp. 3-4. We find no disclosure in the
Specification which would lead to a different interpretation of “the center of
the target” than the plain meaning of that language in light of the
Specification, and the Examiner has not supported the asserted contrary
position with citation(s) to the Specification. See Ans. 16-17, 21; see Br.
19-20, 26-27.
On this record, we agree with Appellants that the Examiner has not
established as a matter of fact that Turner’s sputter target that has “uniform
crystallographic texture throughout the target thickness” and is formed by a
process that deforms an ingot perpendicular to the centerline, reads on the
sputter target specified in claims 23 and 24, including each and every

1 A rejection of a claim under § 102(b) and alternatively under § 103(a)
constitutes a separate ground of rejection under each statutory provision.
See, e.g., In re Spada, 911 F.2d 705, 707-08 n.3 (Fed. Cir. 1990).
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element arranged as required therein, either expressly or under the principles
of inherency, in a manner sufficient to have placed one skilled in this art in
possession thereof within the meaning of § 102. Br. 20-21, 27, citing Turner
col. 3, l. 49 to col. 4, l. 26; Ans. 4-5, 5-6, 15-17, 21, citing Turner col. 2,
ll. 32-51 and Fig. 3. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997); Spada, 911 F.2d at 708; In re Bond, 910 F.2d 831, 832-33 (Fed.
Cir. 1990); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78,
(Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. Am. Hoist and
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). Thus, there is also no
factual basis in Turner to support the Examiner’s position that Turner would
have led one of ordinary skill in the art to the sputter targets specified in
claims 23 and 25. Ans. 5-6, 21; Br. 27. See, e.g., In re Warner, 379 F.2d
1011, 1017 (CCPA 1967).
Accordingly, in the absence of a prima facie case of anticipation and
of obviousness, we reverse the grounds of rejection of claim 24 and claims
23 and 25 over Turner under 35 U.S.C. §§ 102(b) and 103(a).
We agree with Appellants that the Examiner erred in finding that as a
matter of fact Michaluk described a metal plate to one skilled in the art that
falls in representative claims 37, 44, 45 and 57 within the meaning of
§ 102(b), and in determining that Michaluk would have led one of ordinary
skill in the art to a metal plate that falls in claims 45 and 57 within the
meaning of § 103(a). Ans. 4-5, 5-6, 14-17; Br. 18-21, 25-28. There is no
dispute that Michaluk would have illustrated the disclosed method of
quantifying the texture homogeneity of a polycrystalline material using a
through thickness orientation map, Figure 3, of “a tantalum plate of poor
metallurgical quality . . . [that] was obtained on the commercial market.”
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Michaluk col. 9, ll. 2-7, col. 10, ll. 28-33. There is also no dispute Michaluk
would have disclosed the through thickness orientation map, Figure 3,
“reveals that the texture in [sic] not uniform along the thickness direction of
the tantalum plate; generally, the texture ranges from a prominent (001) near
the surface to a prominent (111) near the mid-plane of the plate[,] . . . [and]
that the plate also contains numerous bands (striations) of strong, localized
texture.” Michaluk col. 10, ll. 34-40. Ans. 5, 618-19, 20, 22-23; Br. 23-25,
31-32. We find that as Appellants point out, “while the texture ranges from
a prominent (001) near the surface to a prominent (111) near the mid-point
of the plate, Figure 3 further reveals that the texture then goes back to
prominent (001) at the bottom of the surface.” Br. 24, citing Michaluk col.
10, ll. 34-60, Fig. 3; Br. 31, citing Michaluk col. 10, ll. 34-40; Br. 32. We
find Michaluk further discloses “while gradual changes in texture generally
do not affect the ability of a target to sputter effectively, dramatic changes in
texture which are shown by banding are undesirable and lead to poor
performance of the sputter target.” Michaluk col. 7, ll. 7-11; see also col. 6,
l. 51 to col. 7, l. 18. We find Michaluk also discloses “[l]ocalized textural
bands represent a discontinuity of the texture gradient.” Michaluk col. 11,
ll. 8-10.
We agree with Appellants the Examiner erred in finding that
Michaluk’s commercial metal plate has “a controlled texture gradient that
ranges from (001) at the surface to (111) at mid-plane,” and thus reads on
claim 37 which requires a texture gradient that is controlled throughout the
thickness of the metal plate. Ans. 5, 17-19; Br. 22-25. As Appellants
contend, Michaluk does not describe either the (111) texture, the (001)
texture or the combination of these textures in the form of a controlled
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texture gradient throughout the thickness of the commercial metal plate, but
does describe localized textural bands as a discontinuity of the texture
gradient. Br. 24-25. We are not convinced otherwise by the Examiner’s
contentions the prominent textures (001) and (111) constitute production
control if one desired such textures, and the presence of texture bands does
not necessarily mean that the amount of each prominent texture could not be
controlled. Ans. 18-19. Indeed, we find no credible evidence in Michaluk
that the texture gradient was controlled in producing the commercial metal
plate.
We further agree with Appellants the Examiner erred in finding that
Michaluk’s commercial metal plate has “a texture gradient that ranges from
(001) at the surface to (111) at mid-plane (transitional),” and thus reads on
claim 44 which requires a transitional primary texture throughout the
thickness of the metal plate. Ans. 5, 19-20; Br. 25. We agree with
Appellants that Michaluk does not describe a transitional primary texture
between the surface and mid-plate throughout the thickness of the
commercial metal plate, and describes instead numerous bands or striations
of “strong, local texture.” Br. 25. The Examiner does not adduce scientific
reasoning or credible evidence based on Michaluk for the contrary
contention that the prominent textures at the surface and at the mid-plane of
the metal plate would describe to one skilled in the art a transitional change
in the (001) texture “from prominent at the surface to less prominent at the
mid-plane” because the texture bands do not mean that the amount of texture
could not be controlled. Ans. 19-20.
We agree with Appellants the Examiner erred in finding that
Michaluk’s commercial metal plate has “a texture gradient that ranges from
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(001) at the surface to (111) at mid-plane (transitional)” with “a (001)
crystallographic orientation that is different than a (111) crystallographic
orientation,” and thus reads on claim 45 which specifies a metal plate having
a positive texture gradient for a first crystallographic orientation and a
negative gradient for a second crystallographic orientation different from
said first crystallographic orientation, both throughout the thickness of the
metal plate. Ans. 6, 21-23; Br. 29-32. See above p. 4. We determine that as
Appellants point out, claim 45 specifies the positive texture gradient and the
negative texture gradient are separate crystallographic orientations
throughout the thickness of the metal plate, and thus a texture cannot have a
positive texture gradient and a negative texture gradient throughout the
thickness of the metal plate at the same time. Br. 31. We further find that as
Appellants contend, Michaluk would not have described a positive texture
gradient and a negative texture gradient throughout the thickness of the
metal plate as specified in claim 45 since, as Appellants point out, “the
amount of texture for each of the crystal orientations [(001) and (111)]
actually is similar at the top of the [commercial metal plate] and the bottom
of the [commercial metal plate] and changes in the middle of the
[commercial metal plate].” Br. 31. See above p. 7. As Appellants further
point out in these respects, Michaluk in fact describes a different result than
positive and negative texture gradients throughout the thickness of the
commercial metal plate because the thickness of the plate contains bands or
striations of localized texture. Br. 32, citing Michaluk col. 10, ll. 38-40. We
are of the opinion that the Examiner’s position that texture “(111) would
increase toward the center and [texture] (001) would decrease toward mid-
plane of the plate” establish both a positive and a negative texture gradient
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does not address Appellants’ position that such a structure does not fall
within claim 45 and is not described by Michaluk’s commercial metal plate.
Ans. 22-23, citing Michaluk col. 10, ll. 34-60. The Examiner does not
articulate an obviousness conclusion for claim 45 under § 103(a). See Ans.
7, 22-23.
On the same basis, we agree with Appellants that the Examiner erred
in finding that as a matter of fact Michaluk describes a “controlled texture
gradient” in the commercial metal plate to one skilled in the art which reads
on claim 57, that specifies the same limitations in claim 45 and additionally
specifies a texture gradient in a third crystallographic orientation throughout
the thickness of the metal plate, and in determining the same evidence would
have led one of ordinary skill in the art to a metal plate falling within claim
57. Ans.7-8, 23-24; Br. 33-34.
Accordingly, in the absence of a prima facie case of anticipation and
of obviousness, we reverse the grounds of rejection of claims 37, 42 and 44
and claims 45, 46, 49, 50 and 57 over Michaluk under 35 U.S.C. §§ 102(b)
and 103(a).
We agree with Appellants that the Examiner erred in determining that
the combination of Jennings and Turner would have led one of ordinary skill
in the art to a cylindrical shaped sputter target having a variation of diameter
of 5% or less around the center falling within representative claim 26. Ans.
8-9, 24-25; Br. 34-37. Indeed, in response to Appellants’ position that
Jennings does not teach a cylindrical sputter target and Turner does not teach
a process for forming a cylindrical sputter target, the Examiner admits that
“the shape of the sputtering target disclosed by Turner . . . appears to be in
the shape of a square plate,” and takes the position that “any prior art is
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prima facie obvious absent a showing that cylindrical shaped tantalum
sputtering targets is significant.” Ans. 25. The Examiner’s position does not
address Appellants’ position that is based on the teachings of the references.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 26, 28 and 54 over Jennings and
Turner under 35 U.S.C. § 103(a).
We agree with Appellants that the Examiner erred in determining that
Dunlop would have led one of ordinary skill in the art to modify Dunlop’s
equal channel angular extrusion (ECAC) process by modifying temperature,
rate and number of ECAC extrusions to obtain a metal plate having a texture
gradient that is controlled throughout the thickness of the metal plate as
specified by representative claim 37. Ans. 9, 26-29; Br. 37-42. In response
to Appellants’ position that Dunlop would not have disclosed that the ECAC
process leads to a metal plate having a controlled texture gradient throughout
the thickness of the metal plate on the basis of comparison of X-ray
diffraction measurements of different grain lattice orientations on the
surfaces of ECAC extrusions and the surface of a sputtering target formed
by known techniques, the Examiner contends that Dunlop discloses that
texture of a sputter target can be controlled by varying process parameters
and that texture is a result effective variable in target formation. Br. 39-40,
citing Dunlop col. 8, ll. 47-54, Fig. 11; Ans. 27, citing Dunlop col. 8,
ll. 11-25 and 32-46. We are of the opinion that the Examiner’s response
does not carry the burden of establishing that the asserted modifications of
the process parameters of Dunlop’s ECAC process would have reasonably
resulted in a controlled texture gradient throughout the thickness of the metal
plate.
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Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 37 and 39-42 over Dunlop under 35
U.S.C. § 103(a).
We have reversed all of the grounds of rejection, and accordingly, the
Primary Examiner’s decision is reversed.
REVERSED

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