Ex Parte Selvamanickam

Board of Patent Appeals and Interferences

Sep 28, 2010

11287770 (B.P.A.I. Sep. 28, 2010)

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.
11/287,770 11/28/2005 Venkat Selvamanickam 1014-SP102-CONT 3991
34456 7590 09/29/2010
LARSON NEWMAN & ABEL, LLP
5914 WEST COURTYARD DRIVE
SUITE 200
AUSTIN, TX 78730
EXAMINER
MCDONALD, RODNEY GLENN
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/29/2010 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 VENKAT SELVAMANICKAM
____________________

Appeal 2009-010472
Application 11/287,770
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 11 and 13 through 18. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
The subject matter on appeal is directed to method for producing a
superconducting conductor. Claim 1 is illustrative:
1. A method for producing a superconducting conductor, comprising:
providing metal alloy substrate in a deposition chamber;
forming a material plume in the deposition chamber, the material
plume comprising metallic elements from at least one metallic target;
reacting the metallic elements to form a depositing species that
deposits to form a buffer film overlying the substrate;
exposing the substrate to assist ions during deposition of the
depositing species to form the buffer film, the buffer film having a biaxial
texture and having an in-plane mosaic spread ΔΦ not greater than 30°; and
depositing a superconductor layer to overlie the buffer film.

The Examiner maintains the following rejections:
1) Claims 1-6, 11, 13-15, 17, and 18 under 35 U.S.C. § 103(a) over
Gnanarajan ("Biaxially aligned buffer layers of cerium oxide, yttria
stabilized zirconia, and their bilayers," App. Phys. Lett. 70 (21), pp. 2816-
2818 (May 26, 1997)) and Norton (US 6,849,580 B2, issued Feb. 1, 2005);
2) Claim 7 under 35 U.S.C. § 103(a) over Gnanarajan, Norton, and
Iijima (US 5,650,378, issued Jul. 22, 1997);
3) Claims 1, 8, and 9 under 35 U.S.C. § 103(a) over Gnanarajan,
Norton, and Iijima, and further in view of Hakuraku ("Epitaxial MgO buffer
layers for YBCO thin films on R-plane Al2O3" Supercond. Sci. Technol. 9,
pp. 775-778 (1996)) and Groves ("Ion-beam Assisted Deposition of MgO
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with in situ RHEED Monitoring to Control Bi-axial Texture," Mat. Res.
Soc. Symp. Proc. Vol. 666, F10.6.1- F10.6.6 (2001)) 2;
4) Claims 1 and 10 under 35 U.S.C. § 103(a) over Gnanarajan,
Norton, Hakuraku, and Do (US 6,190,752 B1, issued Feb. 20, 2001); and
5) Claims 1 and 16 under 35 U.S.C. § 103(a) over Gnanarajan,
Norton, and Hughes (US 5,873,989, issued Feb. 23, 1999).3

Rejections (1) and (4)
With respect to rejection (1), we address Appellant's arguments
regarding the rejection with respect to claim 1 only, as argued by
Appellant. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to rejection (4), Appellant advances no additional
argument for this rejection and instead repeats and/or refers to the arguments
made regarding the rejection of claim 1 in rejection (1). (App. Br. 15 and
Reply Br. 4 and 5). Therefore, the claims under rejection (4) stand or fall
with our decision regarding the rejection of claim 1 in rejection (1).

2 We note Appellant's inadvertent omission of Iijima in rejection (2) at page
5 of the Appeal Brief is harmless error since it is apparent from page 7 of the
Answer that this reference is included in the rejection. (See also App. Br.
14). Accordingly, we include the correct statement of the rejection as
understood by the Examiner and Appellant.
3 We note that the Examiner's inadvertent omission of rejection (5) in the
Grounds of Rejection portion of the Answer is harmless error since it is
apparent from pages 15 and 16 of the Answer that this rejection is
maintained upon appeal. (See also App. Br. 5 and Reply Br. 2).
Accordingly, we include the correct statement of the rejections as
understood by the Examiner and Appellant.
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ISSUE
Did the Examiner err in determining that the combination of
Gnanarajan and Norton would have rendered obvious the method for
producing a superconducting conductor having, inter alia, the reacting and
exposing steps to form a buffer film, where the buffer film has an in-plane
mosaic spread ΔΦ not greater than 30°, as required by claim 1 within the
meaning of § 103? We decide this issue in the negative.

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual
findings:
1. The Specification discloses that one embodiment of Appellant's
invention "describes a process for deposition of biaxially-textured
buffer film(s) forming . . . the buffer layer for second-generation high
temperature superconducting tapes having a high critical current
density." (Spec. ¶ [0026]). In this regard, the Specification discloses
forming the buffer film, which may be CeO2, via a "magnetron source
to replace conventional ion beam sputter sources for IBAD [i.e., ion
beam assisted deposition]." (Spec. ¶¶ [0037] and [0020]).
2. The Specification discloses that "[m]agnetron sputter sources, and in
particular reactive magnetron sputter sources (e.g., generally using
metallic rather than dielectric/ceramic targets) . . . [are] used for high-
rate deposition for IBAD processing." (Spec. ¶ [0033]).
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3. The Specification discloses that the target of the IBAD apparatus may
be composed of, inter alia, Ce and that "[a] power source is
connected . . . to generate the material plume causing reaction,
typically oxidation, of the sputtered material and subsequent
deposition of the reacted target material." (Spec. ¶ [0029]).
4. The Specification discloses that "[t]he critical current density in
superconducting oxide films is partly dependent upon grain-to-grain
misalignments." (Spec. ¶ [0026). The Specification discloses that
Actual quantification of the grain to grain misalignment is generally
represented by the full-width-half-maximum (FWHM) of the rocking
curve (x-ray diffraction peak) of the out-of-plane (Δω) and in-plane
(ΔΦ) reflections. Therefore, the degree of biaxial texture can be
defined by specifying the range of Δω and ΔΦ for a given sample,
also referred to as 'mosaic spread.' Out of plane (Δω) values are
typically from the (001) pole figure measurement.

(Spec. ¶ [0027]).

5. Gnanarajan teaches forming a superconducting tape via, inter alia, an
IBAD magnetron sputtering process comprising reactively sputtering
a cerium metal target in a Ar/O2 gas mixture and bombarding the film
plane with Ar+ ions to grow a CeO2 film, which is biaxially aligned
buffer layer. (See Gnanarajan, p. 2816). Gnanarajan teaches that its
Figure 3(b) "clearly indicates biaxial alignment of the CeO2 film with
a (111) pole in the direction of the ion beam. From [the] (111) Φ
scans (Fig. 4), the FWHM [full width at half-maximum] of the peaks
is 39°." (Gnanarajan, p. 2817).
6. Gnanarajan teaches that its process parameters may include deposition
pressure and temperature. (See Gnanarajan, pp. 2816 and 2818). In
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addition, Gnanarajan teaches that one of the process parameters may
be the ion beam angle since this "specific angle . . . cause[s] all of the
crystallites to grow in a single crystal orientation." (Gnanarajan, p.
2816).
7. Norton teaches forming a superconducting tape comprising a buffer
film, which may be composed of CeO2, having a biaxial crystal
texture and an in-plane and an out-of-plane grain-to-grain
misorientation of "less than about 30 degrees, such as less than about
20 degrees, 15 degrees, 10 degrees, or 5 degrees." (Norton, col. 5, ll.
17-23; col. 1, ll 23-24; col. 7, ll. 38-46).
8. Appellant does not specifically dispute the Examiner's finding that
Norton's in-plane grain-to-grain misorientation corresponds to the
claimed in-plane mosaic spread ΔΦ. (Compare Ans. 5 and 6 with
App. Br. 6-12 and Reply Br.4-5).
9. Appellant does not specifically dispute the Examiner's finding that
"Norton et al. . . . [teach] that sputtering or evaporation can be used to
from [sic, form] the buffer film. Here sputtering is . . . generic and . . .
include[s] . . . ion beam sputtering . . . [and] reactive sputtering."
(Compare Ans. 9 with App. Br. 6-12 and Reply Br. 4-5). In this
regard, Norton teaches that this buffer film is formed from an "ion-
beam assisted deposition (IBAD) process to produce a biaxially
textured layer . . . [that forms] high performance articles." (Norton,
col. 5, ll. 31-38).
Additional findings of fact are made as necessary in the Analysis that
follows.

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PRINCIPLES OF LAW
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
It is well settled that objective evidence must be factually supported
by an appropriate affidavit or declaration. See, e.g., In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).

ANALYSIS AND CONCLUSION
Appellant argues that neither Gnanarajan nor Norton teaches the
reacting and exposing steps to form a buffer film, where the buffer film has
an in-plane mosaic spread ΔΦ not greater than 30°, as required by claim 1.
Specifically, Appellant argues that "Gnanarajan fails to achieve a mosaic
spread of not greater than 30° for the reactive deposition of CeO2, instead
achieving a mosaic spread of 39°”. (App. Br. 8). In addition, Appellant
argues that "Norton fails to disclose a method that includes a reactive
deposition in which the resulting mosaic spread is not greater than about
30°." (App. Br. 7 and 8).
Appellant also argues that "Norton fails to teach, suggest, or provide
motivation to one of ordinary skill art as to how to modify the reactive
method of Gnanarajan to achieve the desired mosaic spread." (App. Br. 8).
Additionally, Appellant argues that "there is no rational underpinning to the
reasoning that merely controlling the angle of ion beam during a reactive
deposition process would result in the claimed mosaic spread." (App. Br. 8)
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With respect to Appellant's arguments (App. Br. 7-8) that neither
Gnanarajan nor Norton teaches the disputed claim features and that there is
no reason to combine Norton and Gnanarajan to achieve the desired mosaic
spread, Gnanarajan teaches the formation of a superconducting tape via,
inter alia, an IBAD magnetron sputtering process comprising reactively
sputtering a cerium metal target (cerium elements correspond to the claimed
metallic elements of the metallic target) to grow a CeO2 film (CeO2
corresponds to the claimed depositing species), which is biaxially aligned
buffer layer (film). (FF 5).
While Gnanarajan does not explicitly disclose that its buffer film has
an in-plane mosaic spread ΔΦ not greater than 30°, Norton teaches a
superconducting tape comprising a CeO2 buffer film having a biaxial crystal
texture and an in-plane grain-to-grain misorientation (corresponding to the
claimed in-plane mosaic spread ΔΦ) of "less than about 30 degrees, such as
less than about 20 degrees, 15 degrees, 10 degrees, or 5 degrees." (FF 7 and
8). In addition, Appellant does not specifically dispute the Examiner's
finding that that Norton teaches that its buffer film may be formed from an
IBAD process using reactive sputtering in order to produce a high
performance article. (FF 9).
Thus, we agree with the Examiner that it would have been obvious to
one of ordinary skill in the art to have modified Gnanarajan's IBAD
magnetron sputtering process to form a biaxial layer tape having a grain-to-
grain misorientation of less than about 30 degrees, such as 20 degrees (in-
plane mosaic spread ΔΦ not greater than 30°), in order to produce a high
performance article.
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With respect to Appellant's argument (App. Br. 8) that there is no
rational underpinning to the reasoning that merely controlling the angle of
ion beam during a reactive deposition process would result in the claimed
mosaic spread, the Examiner does not solely rely on controlling the angle of
the ion beam to arrive at the claimed invention.
In this regard, in reference to our above discussion, the Examiner's
stated case is based upon modifying Gnanarajan's IBAD magnetron
sputtering process, which includes several process parameters including the
angle of the ion beam, to form a biaxial layer having an in-plane grain-to-
grain misorientation of, for example, 20 degrees (in-plane mosaic spread ΔΦ
not greater than 30°) as taught by Norton in order to produce a high
performance article. (See also FF 6).
In this regard, it would have been within the skill level of one of
ordinary skill in the art to modify Gnanarajan's IBAD magnetron sputtering
process, which includes adjusting, inter alia, the angle of the ion beam, in
order to achieve the desired result. KSR, 550 U.S. at 418. Accordingly,
Appellant's argument is without persuasive merit.
In addition, Appellant further argues that the prior art teachings "are
insufficient to enable one of ordinary skill in the art to modify Gnanarajan to
produce a buffer film having a in-plane mosaic spread not greater than 30°
by reactive deposition." (App. Br. 8) (emphasis omitted). We find this
argument unpersuasive because Appellant has not substantiated this mere
attorney argument with any evidence. See, e.g., De Blauwe, 736 F.2d at 705.
Accordingly, Appellant's argument is without persuasive merit.
Appellant also argues that "[w]hile physical deposition processes such
as PLD are reasonably predictable, processes involving reacting metallic
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elements to form a depositing species are inherently unpredictable due to the
chemical reaction of the metallic species. At least some degree of
predictability is required to support a finding of obviousness." (Reply Br.
4).
We find this argument unpersuasive of reversible error because, in
reference to our above discussion, both Gnanarajan and Norton individually
teach forming a CeO2 film via an IBAD process using reactive sputtering.
(FF 5-8).
Moreover, Appellant has not substantiated this mere attorney
argument with any evidence. Accordingly, Appellant's argument is without
persuasive merit.
Thus, it follows that the Examiner did not err in determining that the
combination of Gnanarajan and Norton would have rendered obvious the
method for producing a superconducting conductor having, inter alia, the
reacting and exposing steps to form a buffer film, where the buffer film has
an in-plane mosaic spread ΔΦ not greater than 30°, as required by claim 1
within the meaning of § 103.
Accordingly, we sustain the Examiner's rejections (1) and (4).

Rejection (2)

ISSUE
Did the Examiner err in determining that the combination of
Gnanarajan, Norton, and Iijima would have rendered obvious a method for
producing a superconducting conductor having the "gridless ion source"
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feature required by claim 7 within the meaning of § 103? We decide this
issue in the negative.

ADDITIONAL FINDING OF FACT (FF)
10. The Examiner's finds that
while a specific embodiment of Iijima utilizes a grid (i.e. specifically
Fig. 4) other disclosed embodiments do not. For instance the
clustered ion beam method at Column 7 lines 55-59 utilizes a crucible
from which clustered atoms exit and effuse into the vacuum
environment with thermally generated electrons to ionize atoms that
irradiate the substrate with ionized atoms.

(Ans. 12).
11. Appellant does not specifically dispute the Examiner's determination
that "it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have utilized a gridless ion source
as taught by Iijima et al. because it allows for bombarding the
substrate with ions." (Compare Ans. 6 with App. Br. 12-13 and Reply
Br. 4-5).

ANALYSIS AND CONCLUSION
Appellant argues that "Iijima utilizes ions from a gridded ion source
because electrodes are used to accelerate the ions, and therefore, fails to
teach, suggest, or motivate one of ordinary skill in the art to achieve the
claimed method that includes the use of the claimed gridless ion source."
(App. Br. 13). Specifically, Appellant argues that Iijima's clustered ion
beam ionizing method uses a "gridded ion source because electrodes are
used to accelerate ions." (App. Br. 13). Appellant argues that these
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electrodes are used in the ion gun to "generate electrical fields to accelerate
and control the paths of the ions." Id.
While Iijima teaches (col. 7, ll. 47-49) that its clustered ion beam
ionizing method employs controlling the path of the ionized particles with an
electrical field generated by electrodes, we cannot agree with Appellants that
this teaching shows that Iijima uses a gridded ion source.
In this regard, the Specification discloses that "the gridless ion source
accelerates ions from a region of ion production through an electric field . . .
as opposed to gridded ion sources that utilize an electrostatic ion
acceleration." (Spec. ¶ [0038]) (emphasis added).
Thus, in light of factual findings 10 and 11 above, since Iijima's
clustered ion beam ionizing method employs an electric field, which is also
used in Appellants' gridless ion source, Appellant's argument is without
persuasive merit.
Thus, it follows that the Examiner did not err in determining that the
combination of Gnanarajan, Norton, and Iijima would have rendered
obvious a method for producing a superconducting conductor having the
"gridless ion source" feature required by claim 7 within the meaning of §
103.
Accordingly, we sustain the Examiner's rejection (2).

Rejection (3)
With respect to rejection (3), Appellant's arguments focus on claim 1
and features recited in claim 8. (App. Br. 14). Accordingly, we address
Appellant's arguments with respect to claims 1 and 8 only. See 37 C.F.R. §
41.37(c)(1)(vii).
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ISSUE
Did the Examiner err in determining that the combination of
Gnanarajan, Norton, Hakuraku, and Do would have rendered obvious the
method for producing a superconducting conductor having, inter alia, an
out-of-plane crystallographic texture having a mosaic spread ΔΦ not greater
than 30° as required by claim 8 within the meaning of § 103? We decide
this issue in the negative.

ANALYSIS AND CONCLUSION
With respect to claim 1, Appellant repeats arguments made regarding
the rejection of claim 1 in rejection (1). (App. Br. 14). For the reasons
discussed above, we find these arguments unpersuasive of reversible error.
With respect to claim 8, Appellant argues that the combined teachings
of the applied prior art references would not have suggested the "out-of-
phase crystallographic texture having a mosaic spread of not greater than
30°" feature required by claim 8. (App. Br. 14). Specifically, Appellant
argues that "[w]hile Norton discloses an out-of-plane mosaic spread of less
than about 30° . . . Norton fails to teach, suggest, or motivate one of ordinary
skill in the art how to modify the reactive deposition of either Gnanarajan or
Hakuraku to achieve such a result." (App. Br. 14).
In reference to our above discussion, we agree with the Examiner's
determination at pages 7 and 8 of the Answer that it would have been
obvious to one of ordinary skill in the art to have modified Gnanarajan's
IBAD magnetron sputtering process, which includes several process
parameters including the angle of the ion beam, to form a biaxial layer
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having an out-of-plane grain-to-grain misorientation of less than about 30
degrees, such as 20 degrees (out-of-plane crystallographic texture having a
mosaic spread ΔΦ not greater than 30°), in order to produce a high
performance article. (See Ans. 8-9 and FF 6).
In this regard, it would have been within the skill level of one of
ordinary skill in the art to modify Gnanarajan's IBAD magnetron sputtering
process, which includes adjusting the angle of the ion beam, in order to
achieve the desired result of producing a high performance article. KSR, 550
U.S. at 418.
Thus, it follows that the Examiner did not err in determining that the
combination of Gnanarajan, Norton, Hakuraku, and Do would have rendered
obvious the method for producing a superconducting conductor having, inter
alia, an out-of-plane crystallographic texture having a mosaic spread ΔΦ not
greater than 30° as required by claim 8 within the meaning of § 103.
Accordingly, we sustain the Examiner's rejection (4).

Rejection (5)
We address Appellant's arguments with respect to claims 1 and 16, as
argued by Appellant.

ISSUE
Did the Examiner err in determining that the combination of
Gnanarajan, Norton, and Hughes would have rendered obvious a method for
producing a superconducting conductor comprising a target having a length
not less than about 1.0 m as required by claim 16 within the meaning of §
103? We decide this issue in the negative.
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ADDITIONAL PRINCIPLE OF LAW
“[D]iscovery of an optimum value of a result effective variable in
a known process is ordinarily within the skill of the art.” In re Boesch,
617 F.2d 272, 276 (CCPA 1980).

ANALYSIS AND CONCLUSION
With respect to claim 1, Appellant repeats arguments made regarding
the rejection of claim 1 in rejection (1). (App. Br. 15). For the reasons
discussed above, we find these arguments unpersuasive of reversible error.
With respect to claim 16, Appellant argues that Gnanarajan, Norton,
and Hughes "fail to teach, suggest, or motivate one of ordinary skill in the
art to achieve a method including forming a material plume comprising
metallic elements from at least one metallic target having a length not less
than about 1.0m" as required by claim 16. (App. Br. 15). We disagree.
Hughes teaches that "the sputtering target 22 is somewhat larger than
the substrate to ensure uniform depositional thickness of the deposited
coating." (Hughes, col. 6, ll. 26-28). In other words, Hughes teaches that
the sputtering target's length is an important variable that ensures uniform
depositional thickness of the deposited coating.
Therefore, we agree with the Examiner's conclusion of obviousness
and determine that the sputtering target's length is a result-effective variable
such that adjusting the length to determine the optimum length, including the
claimed length of not less than about 1.0 m, to suit the particular end use
would have been well within the ambit of one of ordinary skill in the art and,
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thus, would have been obvious. Boesch, 617 F.2d at 276. Therefore,
Appellant's argument is unpersuasive of reversible error.
Thus, it follows that the Examiner did not err in determining that the
combination of Gnanarajan, Norton, and Hughes would have rendered
obvious a method for producing a superconducting conductor comprising a
target having a length not less than about 1.0m as required by claim 16
within the meaning of § 103.

Accordingly, we sustain the Examiner's rejection (5).

ORDER
In summary, rejections (1) through (5) are sustained.
Accordingly, the Examiner's decision is affirmed.

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)(1)(2009).
AFFIRMED

cam

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