Ex Parte Senda et al

Patent Trial and Appeal Board

Jul 31, 2018

13808055 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/808,055 01/02/2013 Shinichiro Senda
270 7590 08/02/2018
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.
OGOSH235USA 7935
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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
ckodroff@howsoniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHIRO SENDA and ATSUSHI FUKUSHIMA
Appeal2017-009578
Application 13/808,055
Technology Center 1700
Before JAMES C. HOUSEL, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1--4 and 6-17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Specification filed January 2, 2013
("Spec."), the Final Office Action dated July 15, 2016 ("Final Act."), the
Appeal Brief filed December 14, 2016 ("Br."), and the Examiner's Answer
dated April 13, 2017 ("Ans.").
2 Appellants identify the real party in interest as JX Nippon Mining &
Metals Corporation. Appeal Br. 2.
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Application 13/808,055
The subject matter of the claims on appeal relates to a tantalum
sputtering target. Spec. ,r 1. Claim 1, reproduced below from the Claims
Appendix of the Appeal Brief, is illustrative of the claims on appeal.
1. A tantalum sputtering target composed from a
molten material, wherein the tantalum sputtering target has a
content of oxygen as an essential component of 30 mass ppm or
more and 100 mass ppm or less, and a purity excluding oxygen
and gas components other than oxygen of 99.998% or higher,
and an average crystal grain size of 120 µm or less.
Appeal Br. 35 (Claims App.).
DISCUSSION
The Examiner maintains the rejection of claims 1--4 and 6-17 under
pre-AIA 35 U.S.C. § I03(a) as unpatentable over Wickersham, JR. et al.
(US 2007/0089815 Al, published April 26, 2007) ("Wickersham"). Ans. 3. 3
We review the appealed rejection for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After considering
3 The Examiner withdrew the rejections of claims 1--4 and 6-16 under pre-
AIA 35 U.S.C. § I03(a) over each ofMichaluk et al. (US 7,067,197 B2,
issued June 27, 2006) and Oda et al. (US 2009/0134021 Al, published
May 28, 2009) in the Answer. Ans. 3. Although claim 17 was omitted from
the Examiner's statement withdrawing the rejections, we consider the
omission an inadvertent, harmless error given that the Examiner included
claim 17 in the statement of rejection over Michaluk and over Oda in the
Final Office Action dated July 15, 2016. Final Act. 2, 4. Thus, we treat the
rejections of claim 17 over Michaluk and Oda as withdrawn.
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Application 13/808,055
each of Appellants' contentions, we are not persuaded that Appellants
identify reversible error. Thus, we sustain the Examiner's rejection for the
reasons expressed in the Final Office Action, the Answer, and below.
Appellants' arguments focus on three groups of claims: (1) claims 1-
3, (2) claims 4 and 6-16, and (3) claim 17. We address each group of claims
below under separate subheadings.
Claims 1-3
The Examiner finds that Wickersham discloses a tantalum sputtering
target from a molten material, where the tantalum sputtering target has an
oxygen content below 50 ppm, a purity of about 99 .998% to about 99 .999%,
and an average crystal grain size of about 5 µm to about 75 µm. Final Act. 3
(citing Wickersham, Abstract, ,r,r 36, 52-53, 58); Ans. 5. The Examiner
concludes that because "the claimed ranges 'overlap or lie inside the ranges
disclosed by the prior art' a prima facie case of obviousness exists." Final
Act. 3 ( emphasis omitted).
Appellants contends that as the purity level of a tantalum material
increases, the oxygen content decreases and the crystal grains of the target
"easily become coarse." Id. at 18. Thus, Appellants argue that in
Wickersham's high purity tantalum materials, for example a tantalum
sputtering target having a purity of 99 .999%, the oxygen content will fall
below the oxygen content range required by claims 1-3, and the average
grain size will increase to levels above the range required by claims 1-3. Id.
In addition, Appellants argue that Wickersham fails to provide any
motivation, common sense reason, or rational underpinning for providing the
claimed combination of tantalum purity, oxygen content, and average grain
size. Id. at 20.
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Application 13/808,055
Appellants' arguments are not persuasive of reversible error. As the
Examiner explains, Wickersham teaches its tantalum metal (sputtering
target) can have a purity of about 99.998% to about 99.999%. Ans. 5 (citing
Wickersham ,r 52). Likewise, Wickersham also teaches that its tantalum
metal can have an oxygen content below 50 ppm, and an average grain size
of 100 µm. Wickersham ,r,r 53, 58. Thus, Wickersham's disclosure as a
whole teaches or would have reasonably suggested a tantalum sputtering
target having an oxygen content (below 50 ppm), a purity (about 99.998% to
about 99.999%), and an average grain size (100 µm or less) that overlaps
with the ranges recited in claim 1. It is well-established that a prima facie
case of obviousness exists when the claimed and prior art ranges overlap. In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Although Appellants argue that the oxygen content will fall below the
range recited in the claims, and the average crystal grain size will increase to
a level above the range recited in the claims at a purity of 99.999% (Br. 17-
18), Appellants fail to support this argument with either persuasive technical
reasoning or sufficient evidentiary showing, especially where, as here, the
reference teaches an oxygen content, average grain size, and purity within
the recited ranges. Thus, we sustain the rejection of claims 1-3 over
Wickersham.
Claims 4 and 6-16
Claim 4 is reproduced below from the Claims Appendix.
4. The tantalum sputtering target according to claim 3,
wherein the content of oxygen has a variation of ±20% or less
within the tantalum sputtering target.
Br. 35 (Claims App.).
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Application 13/808,055
Claims 8 and 11 each include the same recitation as claim 4. Id.
at 35-37.
Claims 6, 7, 9, 10, 12, and 13 require "the average crystal grain size
has a variation of ±20% or less within the tantalum sputtering target."
Claims 14--16 recite "the content of oxygen has a variation within a
range of ±14% to ±18% within the tantalum sputtering target." Id. at 37-38.
For claims 4, 8, 11, and 14--16, the Examiner finds that because
Wickersham does not disclose a variation in oxygen content within the
sputtering target, the variation of oxygen content is considered to be
approximately 0% or negligible. Final Act. 4.
For claims 6, 7, 9, 10, 12, and 13, the Examiner finds that because
Wickersham does not disclose a variation in average crystal grain size within
the sputtering target, the variation in the average crystal grain size is
considered to be approximately 0% or negligible. Id.
Appellants argue that "one of ordinary skill in the art would not have
necessarily expected that there would have been no or negligible variation of
oxygen content and/or average crystal grain size in a target produced from a
cast ingot of molten tantalum." Br. 23. Thus, Appellants argue that "the
claim limitation requiring a variation of oxygen content in the target limited
to within ±20% is non-obvious relative to the teachings provided by
[Wi ckerhsam]." Id.
Appellants' arguments are conclusory and thus unpersuasive of
reversible error in the rejection. We agree with the Examiner that one of
ordinary skill in the art would expect little or no variation in the content of
oxygen in Wickersham's tantalum sputtering target because "the natural
tendency of particles is to diffuse evenly throughout a system." Ans. 7. We
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Application 13/808,055
also agree with the Examiner that little or no variation in the crystal grain
size would read on the variation ranges recited in claims 6, 7, 9, 10, 12,
and 13.
Moreover, the mere recitation of a property or characteristic not
disclosed by the prior art does not necessarily confer patentability. See In re
Skoner, 517 F.2d 947,950 (CCPA 1975). Claims 4 and 6-16 depend
directly or indirectly from claim 1. As discussed above, Wickersham
teaches or would have reasonably suggested claim 1 's tantalum sputtering
target. Appellants' Specification teaches that "the inclusion of the
appropriate amount of oxygen yields the function (property) of forming the
uniform and fine structure of the tantalum sputtering target" and "the
average crystal grain size and variation will change depending on the
additive amount of oxygen." Spec. ,r,r 22, 29. Thus, we agree with the
Examiner that there is a reasonable basis for one skilled in the art to expect
Wickersham' s tantalum sputtering target to have the same variation in
content of oxygen and crystal grain size as recited in claims 4 and 6-16.
Ans. 7; see In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the
PTO shows sound basis for believing that the products of the applicant and
the prior art are the same, the applicant has the burden of showing that they
are not."). Appellants have not adequately explained or directed us to
evidence showing that Wickersham's tantalum material does not necessarily
possess the uniformity in oxygen content and average crystal grain size
recited in claims 4 and 6-16.
In view of the foregoing, we sustain the rejection of claims 4 and 6-16
over Wickersham.
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Claim 17
Claim 1 7 is reproduced below from the Claims Appendix.
1 7. The tantalum sputtering target according to
claim 11, wherein the content of oxygen exists as an interstitial
solid solution within the tantalum sputtering target.
Appeal Br. 38 (Claims App.).
As discussed above, the Examiner finds that because Wickersham
teaches claim 1 's tantalum sputtering target compound, it also teaches the
resulting tantalum sputtering target having a property of the oxygen existing
as an interstitial solid solution within the tantalum sputtering target. Final
Act. 4.
Appellants argue that the content of oxygen would not necessarily
exist as an interstitial solid solution within Wickersham's tantalum
sputtering target. See Br. 25.
Appellants' argument is not persuasive of reversible error. The
Examiner finds that because Wickersham teaches claim 1 's tantalum
sputtering target, there is a reasonable basis for one skilled in the art to
expect that the oxygen content of Wickersham's tantalum material would
exist as an interstitial solid solution. See Ans. 7-8; see also Spec. ,r 18
( explaining that when the tantalum sputtering target includes an oxygen
content ranging from 30 mass ppm to 100 mass ppm, the oxygen exists as a
interstitial solid solution). Appellants' argument fails to explain by
persuasive technical reasoning or demonstrate by an adequate evidentiary
showing that Wickersham's oxygen content does not necessarily exist as an
interstitial solid solution. Accordingly, we sustain the rejection of claim 17
over Wickersham.
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DECISION
The rejections of claims 1--4 and 6-17 over Wickersham is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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