Ex Parte UNNO et al

Patent Trial and Appeal Board

Feb 13, 2018

14284899 (P.T.A.B. Feb. 13, 2018)

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.
14/284,899 05/22/2014 Takahiro UNNO 0076885-000019 2196
21839 7590 02/15/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
WANGA, TIMON
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHIRO UNNO and TAKUMA SHIBAYAMA
Appeal 2017-006083
Application 14/284,899
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
SHELDON M. MCGEE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claim 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claimed invention relates to a sputtering target which contains
MgO. Spec. 2. Claim 1 is illustrative and copied below from the Claims
Appendix to the Appeal Brief (disputed limitations are italicized):
1 Our decision makes reference to the Specification filed May 22,
2014 (“Spec.”), the Final Office Action entered Dec. 4, 2015 (“Final Act.”),
the Advisory Action entered Mar. 28, 2016 (“Adv. Act.”), the Appeal Brief
filed Aug. 8, 2016 (“Br.”), the Examiner’s Answer entered Dec. 19, 2016
(“Ans.”), and the Reply Brief filed Feb. 20, 2017 (“Reply Br.”).
2 Appellant is the Applicant, Kojundo Chemical Laboratory Co., Ltd.,
which is also identified as the real party in interest. App. Br. 2.
Appeal 2017-006083
Application 14/284,899
1. A sputtering target for direct-current sputtering,
comprising MgO which is a non-conductive oxide and TiO
which is a conductive oxide and having conductivity as a whole,
wherein a thin film having a NaCl type crystal structure is
deposited by sputtering and TiO content is 20 to 60 mol%.
The Examiner rejects claim 1 under 35 U.S.C. § 103 (a) as
unpatentable over Sano3 in view of Brat.4 Ans. 2—3; Final Act. 2—3.5
The Examiner determines that claim 1 would have been obvious to
one of ordinary skill in the art at the time of the invention over the
combination of Sano’s MgO sputtering target containing TiN and 40-90
mol% MgO in view of Brat’s teaching that TiO is an isomorph of TiN and
has a face-centered cubic structure (FCC) comparable to sodium chloride
(NaCl) for the reasons stated on pages 2—3 of the Answer.
Appellant argues that the Examiner erred because Brat does not teach
that TiO should be substituted for TiN in Sano’s MgO sputtering target, and
therefore, the Examiner’s hypothetical structure is based on Appellant’s
Specification. App. Br. 10, 14. Appellant further argues that Table 3 in Brat
shows oxygen present in a maximum amount of 3.12%, which is short of the
20-60 mol% of TiO recited in claim 1. Id. at 10. According to Appellant,
while Sano discloses that the electroconductive material is not limited to the
disclosed electroconductive materials including TiN, Sano’s paragraph 91
shows that other compounds having a cubic or hexagonal crystal system do
not provide the same results as TiN. Id. at 7—8. Appellant contends that the
3 Sano et al., WO 2013/005690 Al, pub. Jan. 10, 2013 (citations
herein are to the English counterpart US 2014/0144775 Al, pub. May 29,
2014, which Appellant does not contest) (“Sano”).
4 Brat et al., US 4,820,393, iss. Apr. 11, 1989 (“Brat”).
5 The Examiner entered Appellant’s proposed amendment after the
Final Office Action amending claim 1 and cancelling claims 2-4. Adv. Act.
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Application 14/284,899
claimed range of TiO content produces “significant advantages” in terms of
the “misfit ratio” and attaining “the desired crystalline structure,” namely the
same crystal structure as MgO. Id. at 12—13.
The Examiner responds that Sano’s paragraph 91 does not teach away
from using TiO as an electroconductive material because it does not identify
TiO as exhibiting the negative characteristics of other choice materials. Ans.
3. The Examiner finds that TiO is an electroconductive material and belongs
to the cubic crystal system, and therefore, satisfies Sano’s requirements for
an acceptable electroconductive material. Id. The Examiner further
responds that Brat is not relied upon as suggesting substitution of TiO for
TiN, but, rather, for teaching that TiO has similar characteristics compared
with TiN from which one skilled in the art would recognize TiO is a known
element and interchangeable with TiN to obtain predictable results. Id. at 3—
4. The Examiner additionally states that “there are no limitations directed to
the concentration of TiO in the target.” Id. at 4.
In the Reply Brief, Appellant asserts that the different results for TiO
and TiN shown in the X-ray diffraction charts of Appellant’s Figures 1 and
2, respectively, demonstrate that the results with TiO are not predictable
from an MgO target containing TiN. Reply Br. 2—3. Appellant maintains
that Brat does not teach that TiN should be substituted with TiO in view of
Brat’s goal to provide TiN targets and because the Examiner’s reliance on
“the five word description of TiO” indicates improper use of Appellant’s
own Specification for the rejection. Id. at 5—6. Appellant further asserts that
the amount of oxygen present in Brat’s sputter target (1) would not lead to
the claimed amount of TiO in the target of 20—60 mol%, (2) would teach
away from the claimed amount, and (3) even if combined with Sano, would
be far less than required by the claim. Id. at 6—7. Appellant additionally
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Application 14/284,899
argues that the claim requires 20-60 mol% of TiO content in the target
because such an interpretation of the claim (1) is supported by the
Specification and (2) is recited clearly in original claim 2 which depended
from claim 1. Id. at 7—8.
We have evaluated Appellant’s arguments and find them unpersuasive
of reversible error by the Examiner. Even if we accept that claim 1 conveys
that “TiO content is 20 to 60 mol%” refers to the sputtering target in the
preamble of the claim and not the “thin film” that immediately precedes the
reference to TiO content, the Examiner relies upon the disclosure in Sano,
not Brat, for the amount of electroconductive material in the target for
sputtering. Final Act. 2; Ans. 2; Sano 114. Thus, Appellant’s distinctions
over Brat regarding the ratio of MgO to electroconductive material are not
persuasive because they do not address the Examiner’s rejection.
Appellant’s focus on Sano’s disclosure of preferred examples not
including TiO and Sano’s comparative examples not providing the same
results even though they are also cubic crystal or hexagonal crystal systems
(App. Br. 7—8) does not negate Sano’s broader teaching that the
electroconductive material is not limited, which Appellant acknowledges {id.
at 7). In a determination of obviousness, a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”). Moreover, “a
reference is not limited to the disclosure of specific working examples.” In
re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted). Nor do Sano’s
comparative examples teach away from using TiO as the electroconductive
material because they do not include TiO or even a conductive oxide. See In
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Application 14/284,899
re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference may be said
to teach away when a person of ordinary skill, upon reading the reference, . .
. would be led in a direction divergent from the path that was taken by the
applicant.”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining
“[t]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”). Likewise, the fact that Brat does not include examples of a
sputtering agent containing TiO instead of TiN, significant amounts of
oxygen, or the composition of Sano (40-90 mol% ratio of MgO) does not
teach away from the combination of MgO and an electroconductive material
such as TiO in the ratio taught by Sano as Appellant argues (App. Br. 10).
Appellant’s argument that the Examiner has not shown a reasonable
expectation of success from the combination of Sano and Brat is not
persuasive of error because the Examiner has provided sufficient support (1)
that a sputtering target comprising MgO and an electroconductive material
was known as evidenced by Sano, (2) that TiN specifically was known and
exemplified by Sano as a sputtering target together with MgO in a ratio of
40-90% MgO, and (3) that it was known that TiO is isomorphic with TiN as
exemplified by Brat. Ans. 2. The Examiner’s findings are supported by the
preponderance of the evidence cited in this Appeal record and Appellant
does not dispute these findings. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). Because Sano generally teaches electroconductive materials in
combination with MgO in a ratio of 40—90 mol% MgO for a sputtering
target, a skilled artisan would have had a reasonable expectation of success
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Application 14/284,899
using a known electroconductive material for sputtering targets, and
particularly an isomorph of an electroconductive material exemplified by
Sano, in the proportions disclosed by Sano absent evidence of surprising or
unexpected results. Appellant has not directed us to any evidence of
surprising or unexpected results in this Appeal record.
Appellant’s evidence that TiO produces different X-ray diffraction
results compared to TiN (Reply Br. 2—3) and that Sano discloses examples
of electroconductive material that were not suitable as a target for DC
sputtering (App. Br. 8) is not persuasive of error because “obviousness
cannot be avoided simply by a showing of some degree of unpredictability
in the art so long as there was a reasonable probability of success.” Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). “Obviousness
does not require absolute predictability of success. . . . [A]ll that is required
is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903—
04 (Fed. Cir. 1988). Even if the crystalline structure of the thin film
produced by the sputtering target is a limitation of the claimed sputtering
target as Appellant argues (App. Br. 13), the structure recited in claim 1, “a
NaCl type crystal structure,” would have been expected from the
combination of Sano and Brat because Brat discloses that TiN has a face-
centered cubic structure comparable to sodium chloride (NaCl) and that TiO
is isomorphic with TiN (Final Act. 2—3; Ans. 2—3; Brat 5:26—29).
In sum, the Examiner has provided the record with a preponderance of
evidence that the sputtering target of claim 1 would have been obvious in
view of the combined teachings of Sano and Brat.
We affirm the Examiner’s decision to reject claim 1 for the reasons
stated above and in the Answer, including the Response to Argument
section.
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Conclusion
The decision of the Examiner to reject claim 1 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)(1).
AFFIRMED
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