Siegfried Krassnitzer et al.

Patent Trials and Appeals Board

Aug 26, 2021

2020005297 (P.T.A.B. Aug. 26, 2021)

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.
13/148,384 08/08/2011 Siegfried Krassnitzer KEMP-48287 1206
86378 7590 08/26/2021
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
08/26/2021 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 SIEGFRIED KRASSNITZER,
JUERG HAGMANN, and OLIVER GSTOEHL
____________

Appeal 2020-005297
Application 13/148,384
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6, 8, and 11–15 of Application
13/148,384. Non-Final Act. (October 4, 2019). Because at least one of the
’384 Application’s claims has been twice rejected, we have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Oerlikon Surface Solutions AG the real party in interest. Appeal
Br. 3.
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Application 13/148,384
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I. BACKGROUND
The ’384 Application describes an adjustable magnet system for use
in arc-vaporization PVD coating processes. Spec. 1. As described in the
Specification, the properties of the arc path over the vaporization target vary
depending on the atmosphere in which the vaporization occurs. Id. at 1–3,
Figs. 1–3. Optimization of the arc path can result in better target use and
higher vaporization rates. Id. at 1. The Specification states that the arc path
can be optimized for the presence of inert, weakly reactive or strongly
reactive atmospheres by varying the properties of the magnetic field over the
target during vaporization. Id. at 1–3.
The Specification describes an apparatus used to vary the magnetic
field over the target. For ease of reference, we reproduce Figure 4 of the
’384 Application below.
Figure 4 is a schematic diagram of a target with an
adjustable magnetic system. Id. at 6.
The adjustable magnetic system comprises fixed coil magnet 4, and
permanent magnets 5, 5a. Id. Permanent magnets 5, 5a are supported on
magnet receptacle 6. Id. Magnet receptacle 6 can be displaced in the axial
direction away from the target. Id. By varying the strength of the magnetic
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Application 13/148,384
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field generated by fixed coil magnet 4 and the position of permanent
magnets, 5, 5a, the properties of the arc used during vaporization can be
controlled to optimize target use and vaporization rate. Id. at 1–3.
Claim 1 is representative of the ’384 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. ARC vaporization source with a magnetic field
arrangement provided on a target comprising coating material
for generating magnetic fields on and above a surface of the
target, wherein the magnetic field arrangement comprises:
marginal permanent magnets,
a central permanent magnet, and
at least one ring coil placed behind the target, whose
inner diameter defined by windings has a diameter that is less
than or equal to a diameter of the target, characterized in that
the marginal permanent magnets and the central permanent
magnet are displaceable away from the target of
perpendicularly to the surface of the target and a projection of
the marginal permanent magnets onto the target surface is
further away from a middle of the target surface than a
projection of the ring coil onto the target surface, and the
central permanent magnet is displaceable away from the target
perpendicularly to the surface of the target independently of the
marginal permanent magnets, wherein the marginal and central
permanent magnets are adjustable to:
(a) a first setting at which the ARC vaporization source is
configured to perform an ARC vaporization coating
process, wherein the marginal and central permanent
magnets take up a first position in which their poles are
closest to the coating material, and in this first position
the end of the pole of the marginal permanent magnet
that is closest to the coating material, and the end of the
pole of the central permanent magnet that is closest to the
coating material, and the end of the ring coil that is
closest to the coating material, lie in one plane, said first
setting generating a magnetic field of 60-100 Gauss;
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(b) a second setting at which the ARC vaporization
source is configured to perform an ARC vaporization
coating process, wherein the marginal and central
permanent magnets take up a second position at a
distance between 5 mm and 50 mm further from the
target surface than the first position, wherein in this
second position the end of the pole of the marginal
permanent magnet which is closest to the coating
material and the end of the pole of the central permanent
magnet which is closest to the coating material are
further far away from the target surface than the end of
the ring coil which is closest to the coating material, said
second setting generating a magnetic field of 10-40
Gauss; and
(c) a third setting at which the ARC vaporization source
is configured to perform an ARC vaporization coating
process, wherein the marginal and central permanent
magnets are separated from the ring coil, said third
setting generating a magnetic field of 5-15 Gauss.
Appeal Br. 20–21.
II. REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 3, 4, and 11–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hauzer,2 Ramalingam,3 and Jinbo.4
Final Act. 2.

2 US 5,160,595, issued November 3, 1992.
3 US 5,298,136, issued March 29, 1994.
4 JP 9-143713, published June 3, 1997. We cite the English translation that is
of record in the ’384 Application.
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III. DISCUSSION
Appellant presents substantive arguments for reversal of the rejection
of independent claim 1. Appeal Br. 13–17. Appellant argues dependent
claims 3, 4, 6, 8, and 11–15 are patentable for the same reasons as
independent claim 1. Id. at 17–18. We, therefore, limit our discussion to
claim 1. The dependent claims will stand or fall with claim 1.
Appellant argues that independent claim 1 is patentable because
(1) Hauzer does not describe or suggest the permanent magnets take a
second position that is between 5 mm and 50 mm further from the target
surface than their location in a first setting, id. at 13–14, or (2) the
combination of references does not describe or suggest two settings at which
the apparatus is configured to perform an arc vaporization process, id. at 14–
17. We address these arguments in turn.
First, claim 1 recites, in relevant part:
[An] ARC vaporization source with a magnetic field
arrangement . . . wherein the magnetic field arrangement
comprises
marginal permanent magnets,
a central permanent magnets, . . .
. . . wherein the marginal and central permanent magnets are
adjustable to:
(a) a first setting . . . wherein the marginal and central
permanent magnets take up a first position . . . [and]
(b) a second setting at which the ARC vaporization
source is configured to perform an ARC vaporization
coating process, wherein the marginal and central
permanent magnets take up a second position at a
distance between 5 mm and 50 mm further from the
target surface than the first position . . . .
Id. at 20.
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In rejecting claim 1, the Examiner found that Hauzer describes an
ARC vaporization apparatus that has a second setting. Non-Final Act. 3
(citing Hauzer 3:29–37, 3:61–4:32).
Appellant argues that this finding is erroneous because Hauzer does
not describe or suggest relative spacing between 5 mm and 50 mm further
from the target surface than the first position. Appeal Br. 13. According to
Appellant, Hauzer’s only description of the relative spacing of the magnet
positions is that they are spaced apart in the range of about 10 to 20 cm (100
mm–200 mm). Id. (citing Hauzer claim 8).
This argument is not persuasive because Hauzer, in fact, teaches that
the spacing between the magnet arrangement and the target is between 2 cm
and 20 cm (20 mm–200 mm) further away than in the cathode sputtering
position. See Hauzer 4:7–8. Hauzer further states that, “[t]he quoted
parameter values also make it possible to select the spacings between the
target and the magnet arrangement with regard to obtaining an optimum and
to dimension the magnet arrangement itself with regard to obtaining the best
possible result.” Hauzer 4:28–32.
Hauzer, therefore, describes a second setting at a range of distances
that overlaps the range set forth in the claim. This is sufficient to create a
prima facie case of obviousness with respect to the distance limitation. In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art); In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (same) In re Boesch, 617 F.2d 272, 275 (CCPA 1980).
Second, in rejecting claim 1, the Examiner found that Hauzer’s
apparatus is fully capable being operated with arc vaporization at three
settings. Non-Final Act. 5.
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Appellant argues that this finding is erroneous because Hauzer only
describes being operated as an arc vaporization source at a single setting.
Appeal Br. 14–17. At the other setting, Hauzer describes operation as a
cathode sputtering source. Id.
We are persuaded by this argument.
Hauzer expressly describes an apparatus that operates as either a
cathode sputtering source or an arc discharge vaporization source. Hauzer
1:7–13. Hauzer, therefore, only describes a single setting at which its
apparatus is an arc discharge vaporization source.
In support of the rejection, the Examiner points to passages in Hauzer
which state that it is possible to optimize the spacing between the target and
the magnet assembly. Ans. 4 (citing Hauzer 4:27–32). Based on this
statement, the Examiner finds that Hauzer teaches that the apparatus is fully
capable of operating as an arc discharge vaporization source at any setting or
spacing between 2 cm and 20 cm. Id.
Where the rejection falls short, however, is that it lacks any
explanation as to why a person having ordinary skill in the art would have
used more than one optimized setting during arc discharge vaporization. In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”).
On the record before us, we reverse the rejection of claim 1.
Accordingly, we also reverse the rejection of dependent claims 3, 4, 6, and,
and 11–15.
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IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6, 8,
11–15 103(a)
Hauzer, Ramalingam,
Jinbo,
1, 3, 4, 6,
8, 11–15
REVERSED