Ex Parte Ramm et al

Patent Trial and Appeal Board

Jun 17, 2016

11102337 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111102,337 04/08/2005 Jurgen Ramm
86378 7590 06/21/2016
Pearne & Gordon LLP
1801East9th Street
Suite 1200
Cleveland, OH 44114-3108
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.
38091 6419
EXAMINER
BRAYTON, JOHN JOSEPH
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WRGEN RAMM, OLIVER GSTOEHL, BENO WIDRIG,
and DANIEL LENDI
Appeal2014-006665
Application 11/102,337
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a process for producing
insulating layers by means of arc vaporization deposition. Appellants appeal
from the Examiner's final rejection of claims 46-80, 82-85, 90, and 91 as
obvious under 35 U.S.C. § 103 and under obvious-type double-patenting.
We have jurisdiction under 35 U.S.C. § 134. The rejections are affirmed.
Appeal2014-006665
Application 11/102,337
STATEMENT OF CASE
Claims 46-80, 62-85, 90, and 91 are pending. Final Rej. Summary
(mailed Jan. 22, 2013). Pages 3-5 of the Final Rejection listed the following
grounds of rejection:
1. Claims 46-54, 56, 58, 62---65, 67, 71-73, and 75-78 under
35 U.S.C. § 103(a) as obvious over Buhl et al. (US 4,919,968, issued Apr.
24, 1990) ("Buhl") in view of Grimm (EP 0 666 335 Al, published Aug. 9,
1995 as cited in IDS; refer to Machine Translation for all citations).
2. Claim 55 under 35 U.S.C. § 103(a) as obvious over Buhl and
Grimm as applied to claim 53 above in view of Storer et al. (US 5,518,597,
issued May 21, 1996) ("Storer").
3. Claim 57 under 35 U.S.C. § 103(a) as obvious over Buhl and
Grimm as applied to claim 46 above, in view of Braendle et al. (US
5,709,784, issued Jan. 20, 1998) ("Braendle") or Applicant's admitted prior
art (Esnouf et al., US 6,602,290 B2, issued Aug. 5, 2003).
4. Claim 59 under 35 U.S.C. § 103(a) as obvious over Buhl and
Grimm as applied to claim 46 above in view of Stowell, Jr. (US
2004/0026235 Al, published Feb. 12, 2004) ("Stowell").
5. Claims 60 and 61 under 35 U.S.C. § 103(a) as obvious over Buhl
and Grimm as applied to claim 46 above in view of George et al. (US
5,552,674, issued Sept. 3, 1996) ("George").
6. Claim 66 under 35 U.S.C. § 103(a) as obvious over Buhl and
Grimm as applied to claim 62 above in view of Kanakasabapathy et al. (US
2002/0139658 Al, published Oct. 3, 2002) ("Kanakasabapathy").
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Appeal2014-006665
Application 11/102,337
7. Claims 68 and 69 under 35 U.S.C. § 103(a) as obvious over Buhl
and Grimm as applied to claim 62 above, in view of Jonte et al. (US
6,551,722 B2, issued Apr. 22, 2003) ("Jonte").
8. Claim 70 under 35 U.S.C. § 103(a) as obvious over Buhl and
Grimm as applied to claim 67 above in view of Le et al. (US 2003/0077914
Al, published Apr. 24, 2003) ("Le").
9. Claim 74 under 35 U.S.C. § 103(a) as obvious over Buhl and
Grimm as applied to claim 62 above in view of Haidar (US 2003/0234176
Al, published Dec. 25, 2003).
10. Claims 79, 80, and 82-85 under 35 U.S.C. § 103(a) as obvious
over Buhl in view of Grimm and Sunthankar et al. (US 6,936,145 B2, issued
Aug. 30, 2005) ("Sunthankar").
11. Claims 90 and 91under35 U.S.C. § 103(a) as obvious over Buhl
and Grimm as applied to claims 51 and 56 above, in view of Sakurai et al.
(US 6,517,688 B2, issued Feb. 11, 2003) ("Sakurai").
12. Claims 46-80, 82-85, 90, and 91 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-33 of copending Application No. 11/908,542 in
view of Buhl.
Appellants did not address Grounds 2-9 and 11 in the Appeal Brief.
Accordingly, we summarily affirm the rejections for the reasons given by
the Examiner. Appellants requested that the obvious-type double-patenting
rejection be held in abeyance until patentable subject matter is indicated.
Appeal Br. 11. However, because this is a pending rejection and no
substantive arguments were raised, we shall also summarily affirm this
rejection for the reasons set forth by the Examiner. Non-final Rej. 20-21.
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Appeal2014-006665
Application 11/102,337
The only independent claims on appeal are claims 46 and 79. Claim
46 is representative and reads as follows:
46. A process for producing insulating layers by means of arc
vaporization deposition comprising the steps of: igniting an
electric arc discharge; and, applying the arc discharge to a
surface of a target; wherein the arc discharge is simultaneously
fed a direct current and a pulsed or alternating current, and,
wherein the surface of the target is at least partially coated with
an electrically insulating layer, and a coated surface of the
target is a result of a reactive gas and its reaction with the target
surface.
GROUND 1
Claim 46 is directed to a process for producing insulating layers by
arc vaporization deposition. The process comprises the following steps and
limitations:
1) igniting an electric arc discharge;
2) applying the arc discharge to a surface of a target;
3) "the arc discharge is simultaneously fed a direct current and a
pulsed or alternating current";
4) "the surface of the target is at least partially coated with an
electrically insulating layer"; and
5) "a coated surface of the target is a result of a reactive gas and its
reaction with the target surface."
The Examiner found that Buhl describes a process for producing
insulating layers by arc vaporization deposition that comprises step 1) and 2)
of claim 1 as numbered above. Non-final Rej. 3. The Examiner found that
Buhl also describes coating the surface of a target with an insulating layer in
the presence of a reactive gas (numbered steps 4) and 5) above). Id. at 4.
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Appeal2014-006665
Application 11/102,337
However, the Examiner found that Buhl describes feeding the arc discharge
with a direct current, not "direct current and a pulsed or alternating current"
as in numbered step 3). Id. To meet this limitation, the Examiner cited
Grimm for its teaching of "arc discharge is simultaneously fed a direct
current and a pulsed current." Id. The Examiner found it would have been
obvious to one of ordinary skill in the art to have modified the arc discharge
of Buhl "by simultaneously feeding a direct current and a pulsed current to
the target, as taught by Grimm, because it would allow vacuum arc
discharge with a small technical and economical effort and allow full
utilization of the target." Id.
Appellants contend that the skilled worker would have had no
reasonable expectation of success that Grimm's direct and pulse current
would work in Buhl' s method because "Grimm limits his work to the
deposition of an electrically conducting material," while Buhl deposits
insulating materials. Appeal Br. 8. Specifically, Appellants state that Buhl
describes coating the target with an insulating layer of titanium oxide. Reply
Br. 2. Appellants contend that "[t]he fact that Grimm shows better results in
a vacuum arc discharge with conductive metal targets does not mean that
better results would be obtained in a vacuum arc discharge with an
insulating metal target of Buhl." Id. Furthermore, Appellants contend that
"Grimm clearly describes that the material which can be evaporated must be
a conductive material and that the use of an insulating material causes the
spot to be driven into the inner part of the target." Id. For this reason,
Appellants argue that Buhl in view of Grimm would not have produced
better results. Id.
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Appeal2014-006665
Application 11/102,337
Appellants' arguments are not supported by a preponderance of the
evidence. It is true that Buhl teaches deposition of titanium oxide as stated
by Appellants. Buhl, col. 7, 1. 1. However, Buhl is not limited to this
example. Buhl expressly teaches a first embodiment of a coating target
substrate with titanium nitride by arc deposition in the presence of the
reactive gas nitrogen. Id. at col. 5, 11. 37-39, 50-55, 66----67. Grimm also
describes arc deposition of titanium nitride. Grimm, p. 5, Example I. Since
the materials are the same in both Buhl and Grimm, the Examiner
reasonably found that Grimm's method would have been expected to work
in Buhl. Answer 3--4, 6. Appellants did not adequately address Grimm's
explicit disclosure of titanium nitride, the same deposited material in Buhl.
Appellants also argue:
Grimm also discloses in column 1, line 3 7 "the spot moves
dependent on the material mostly with high velocity". It is
therefore explicitly described in Grimm that the movement of
the spot is dependent upon the material used. In addition,
Grimm describes in column 2 lines 17 to 37 that there is the
danger that the spot leaves the target and hits isolators, shields
and other parts.
Appeal Br. 8.
This argument is not persuasive because, as discussed above, Buhl
and Grimm both deposit titanium nitride. In addition, the quoted passage
from Grimm is not present in the machine translation of Grimm relied upon
by the Examiner. It appears that Appellants have done their own translation
of the Grimm publication. However, such translation was not relied upon by
the Examiner in making the rejection nor did Appellants in the Appeal Brief
explain how the translation was made. Consequently, we shall not consider
it here.
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Appeal2014-006665
Application 11/102,337
Because Appellants have not demonstrated error in the Examiner's
rejection, we affirm the obviousness rejection of claim 46. Appellants did
not provide separate arguments for claims 47-54, 56, 58, 62---65, 67, 71-73,
and 75-78. These claims therefore fall with claim 46. 37 C.F.R.
§ 41.37(c)(iv).
GROUND2
Independent claim 79 is directed to an arc source comprising, inter
alia, "target at least partially coated with an insulating layer," a power
supply which "includes a first power supply unit comprising a pulsed high
current power supply unit and a second power supply unit," and a control
unit. The control unit:
generate[ s] pulsed arc sources synchronized in such fashion that
in some or in all pulse intervals the holding current is
interrupted by one or several holding-current intervals during
which no voltage is applied to the target or to the electrode,
which holding current intervals can be set short enough to
prevent the arc plasma from being extinguished.
The Examiner found that the claimed combination is obvious in view
of Buhl, Grimm, and Sunthankar. Non-final Rej. 17. The Examiner
specifically found that Sunthankar describes the control unit applying
holding current intervals as in claim 79. Id. The Examiner found it would
have been obvious to apply Sunthankar to the teachings in Buhl and Grimm
"because it would because [sic] this would allow more oxidized materials to
be removed from the target surface." Id. at 18. Appellants do not identify
an error in the rejection based on Sunthankar, but rely on the same
unpersuasive arguments for combination of Buhl and Grimm.
Consequently, we affirm the rejection for the reasons set forth by the
Examiner.
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Appeal2014-006665
Application 11/102,337
Appellants did not provide separate arguments for claims 80 and 82-
85. These claims therefore fall with claim 79. 37 C.F.R. § 41.37(c)(iv).
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)(l )(iv).
AFFIRMED
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