Ex Parte Takagi et al

Patent Trial and Appeal Board

Mar 3, 2016

11931336 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111931,336 10/31/2007 Katsutoshi TAKAGI
22850 7590 03/07/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
317480USOX 1046
EXAMINER
ABRAHAM, IBRAHIME A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
03/07/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA TSUTOSHI TAKAGI,
MASAYA EHIRA, TOSHIHIRO KUGIMIY A,
YOICHIRO YONEDA and HIROSHI GOTOU
Appeal2014-000850
Application 11/931,336 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEYERL YA. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1, 2, 5-9, 11, and 12. Claims 3 and 4 are also pending but have been
withdraw from consideration. An oral hearing was held on February 11, 2016. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 According to the Appellants, the real parties in interest are Kabushiki Kaisha
Kobe Sho (Kobe Steel, Ltd.) and Kobelco Research Institute, Inc. Appeal Brief
dated July 9, 2013 ("App. Br."), at 1.
Appeal2014-000850
Application 11/931,336
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief. The limitation at issue is italicized.
Claim 1: An Al-based alloy sputtering target, comprising Ni
in an amount of 0.05 to 10 atomic percent,
wherein the Al-based alloy sputtering target satisfies:
( 1) that a ratio of a P value to a total area of a sputtering surface
is 70% or more, wherein the P value indicates a total of area fractions
of ± 15°, <011> ± 15°, <111> ± 15° and <311> ± 15°;
(2) that a ratio of the area fraction of ± 15 ° to the P value
is 30% or more; and
(3) that a ratio of the area fraction of <111> ± 15° to the P value
is 10% or less,
where crystallographic orientations <001>, <011>, <111> and
<311> in a normal line direction to a sputtering surface of the Al-
based alloy sputtering target are observed in accordance with the
electron backscatter diffraction pattern method,
wherein the Al-based alloy sputtering target is obtained by a
process comprising: rolling an Al-based alloy having the composition
and heat-treating the Al-base alloy at a temperature in a range of 300
to 400 °C for 1 to 2 hours after the rolling.
The Appellants disclose that "[a]ccording to the Al-based alloy sputtering
target of the invention, since crystallographic orientations in a normal line
direction of a sputtering surface are adequately controlled, the deposition rate is
heightened and the sputtering defects as well are effectively suppressed." Spec. 7,
11. 20-23.
The claims on appeal stand rejected as follows:
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Application 11/931,336
(1) claims 1, 2, 5, and 7-9 under 35 U.S.C. § 103(a) as unpatentable over
Kugimiya et al. 2 in view of Osako; 3
(2) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Kugimiya in
view of Osako and Gotoh et al.; 4
(3) claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Kugimiya in view of Osako and Ivanov et al.; 5
(4) claims 1, 2, 5, 7-9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Kugimiya in view of Ivanov;
(5) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Kugimiya in
view of Ivanov and Gotoh;
(6) claims 1, 2, 5, 7-9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Kugimiya in view of Matsumura et al.; 6 and
(7) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Kugimiya in
view of Matsumura and Gotoh.
We AFFIIUvf and designate our affinnance of rejections (4) and (5) as new
grounds of rejection.
B. DISCUSSION
1. Rejection (4)
Claim 1, the sole independent claim on appeal, is written in product-by-
process format. The Examiner finds that Kugimiya does not expressly describe the
2 US 2006/0180250 Al, published August 17, 2006 (hereinafter "Kugimiya").
3 JP 2002-069626 A, dated March 8, 2002. In this Decision on Appeal, we refer to
the English translation dated July 18, 2012, which is of record in the instant
Application.
4 US 2006/0181198 Al, published August 17, 2006 (hereinafter "Gotoh").
5 US 2009/0008786 Al, published January 8, 2009 (hereinafter "Ivanov").
6 US 2006/0207876 Al, published September 21, 2006 (hereinafter "Matsumura").
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Application 11/931,336
claimed Al-based alloy sputtering target. Nonetheless, the Examiner finds that
Kugimiya discloses the claimed process with the exception of the claimed time
period. Ans. 7-8. 7 Indeed, Kugimiya is silent as to the annealing time.
The Examiner turns to Ivanov and finds:
Ivanov teaches an aluminum sputtering target with an alloying
element of nickel. (abstract) Ivanov teaches that the method of
making the sputtering target includes annealing the target at a
temperature of 250-600°C for up to 6 hours (this would read on 6
hours or less[)]. Ivanov also teaches annealing the target from 200-
4500C. Ivanov teaches that an annealed aluminum target alloyed with
nickel is used in order to form a target that exhibits a desired low
angle crystal orientation that suppresses dynamic recrystallization that
causes non-uniform grain structure and poor uniformity of the
deposited film.(par. 8-10 and 19-28)[.]
Id. at 8.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to have applied the annealing time disclosed in Ivanov during the
heat-treatment or annealing step disclosed in Kugimiya to form a target exhibiting
the characteristics disclosed in Ivanov. Id. at 8-9.
The Appellants argue that "Ivanov discloses an extremely broad range of
annealing temperatures (250 to 600°C for up to 6 hours)." App. Br. 14. Thus, the
Appellants argue that "the specific processing conditions of the claimed invention
would not be obvious from the disclosure of Ivanov nor would the advantages
obtained there from." Id. at 15. The Appellants also argue that "Ivanov limits the
amount of Ni to 0.01to100 ppm (i.e., 0.000001 to 0.01 %). Thus, the sputtering
target of Ivanov is not directly relevant to the claimed invention." Id.
7 Examiner's Answer dated September 6, 2013.
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Application 11/931,336
The Appellants' arguments are not persuasive of reversible error. There is
no dispute on this record that the annealing conditions disclosed in Ivanov (i.e.,
250 to 600°C for up to 6 hours) encompass the claimed annealing temperature and
annealing time. See In re Peterson, 315 F.3d 1325, 1328-29 (Fed. Cir. 2003)
("Selecting a narrow range from within a somewhat broader range disclosed in a
prior art reference is no less obvious than identifying a range that simply overlaps
a disclosed range. In fact, when, as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more compelling than in cases
of mere overlap."). We recognize that the amount of nickel in Ivanov's Al-based
alloy is outside the range recited in claim 1. Nonetheless, like the claimed alloy
and the alloy disclosed in Kugimiya, the Al-based alloy disclosed in Ivanov
comprises a significant amount of aluminum and a considerably smaller amount of
nickel. 8 Thus, a preponderance of the evidence of record establishes that one of
ordinary skill in the art would have considered the teachings of Ivanov relevant in
deciding how long to anneal the Al-based alloy disclosed in Kugimiya.
Moreover, according to the Examiner:
One of ordinary skill in the art would have expected the annealing
time to affect the crystal orientation of an aluminum based sputtering
target as evidenced by Ivanov. In addition, it would also have been
obvious to one of ordinary skill in the art to have optimized the result
effective variable of annealing time in Kugimaya [sic, Kugimiya ], as
Ivanov teaches that a desired crystal orientation can be obtained by
manipulating the annealing time of an aluminum based sputtering
target.
Ans. 22.
8 The Al-based alloy disclosed in Ivanov may also comprise a rare earth element
like the Appellants' alloy and the alloy disclosed in Kugimiya. Ivanov i-f 19.
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Indeed, in the "BACKGROUND OF THE INVENTION," Ivanov expressly
discloses:
The thickness uniformity of wiring films is believed to be
directly influenced by the structural characteristics of the sputtering
target including grain size, orientation, and the uniformity of their
distribution. The target grain structure is typically controlled through
controlling its fabrication process consisting of mechanical
deformation and thermal anneals.
Ivanov i-f 5 (emphasis added). We find that a thermal anneal includes an annealing
temperature and an annealing time (e.g., 250 to 600°C for up to 6 hours). Thus,
Ivanov teaches that grain or crystal orientation is controlled by, inter alia,
annealing temperature and annealing time. It is well settled that the "discovery 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).
Based on the foregoing, we conclude that the process recited in claim 1
would have been obvious to one of ordinary skill in the art based on the combined
teachings of Kugimiya and Ivanov. Thus, it necessarily follows that the Al-Ni
alloy sputtering target recited in claim 1, which is produced by the claimed
process, is also rendered obvious by the combined teachings of Kugimiya and
Ivanov.
The Appellants argue that evidence of unexpected results can rebut a prima
facie case of obviousness and contend that "the evidence provided in Table 1 [of
the Appellants' Specification] shows the importance of the heat treating limitations
of the claimed invention." App. Br. 17, 19.
However, in order for a showing of ''unexpected results" to be probative
evidence of non-obviousness, an applicant must establish that the difference
between the results obtained through the claimed invention and the results of the
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prior art would not have been expected by one skilled in the art at the time of the
invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). In this case, the
Appellants have not directed us to any evidence demonstrating that the results
reported in Table 1 would have been unexpected by one of ordinary skill in the art.
For the reasons set forth above, rejection (4) is affirmed. 9
2. Rejection (5)
The Appellants argue that "Gotoh does not cure the deficiencies of
Kugimiya and Ivanov discussed above in (D) and incorporated herein by
reference." App. Br. 19. For the reasons set forth above, there are no deficiencies
in the combination of Kugimiya and Ivanov that need to be cured by Gotoh.
Therefore, rejection (5) is affirmed.
3. Rejections (1}--{3), (6), and (7)
As for the remaining§ 103(a) rejections on appeal, we find that the
teachings of Osaka and Matsumura are merely cumulative of the teachings in
Ivanov. ~vfore specifically, similar to Ivanov, Osaka and ~vfatsumura both disclose
Al-based alloy sputtering targets that produce a uniform film thickness. See, e.g.,
Osako i-f 4; Matsumura i-f 25. Therefore, rejections (1}-(3), (6), and (7) are
affirmed.
C. DECISION
The decision of the Examiner is affirmed.
In this Decision on Appeal, we have made additional factual findings and
relied on portions of Ivanov that were not relied on by the Examiner on appeal in
the following rejections:
9 The Appellants do not present arguments in support of the separate patentability
of claims 2, 5, 7-9, 11, and 12, which depend from claim 1.
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(4) claims 1, 2, 5, 7-9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Kugimiya in view of Ivanov; and
(5) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Kugimiya in
view of Ivanov and Gotoh.
Therefore, we designate the affirmance of rejections (4) and (5) as new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b). This section provides that
"[a] new ground of rejection ... shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED; 37 C.F.R. § 41.50(b)
8