Ex Parte Abenthung et alDownload PDFPatent Trial and Appeal BoardJul 26, 201713310140 (P.T.A.B. Jul. 26, 2017) Copy Citation 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. 13/310,140 12/02/2011 PETER ABENTHUNG SB-596D1 8487 24131 7590 07/28/2017 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, EL 33022-2480 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 07/28/2017 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): boxoa@patentusa.com docket @ paten tusa. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER ABENTHUNG, KARL HUBER, HARALD LACKNER, GERHARD LEICHTFRIED, PETER POLCIK, and CHRISTIAN WERATSCHNIG Appeal 2016-001117 Application nGlOjMO1 Technology Center 1700 Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—12. We have jurisdiction. 35 U.S.C. § 6(b). An oral hearing was held on July 20, 2017.2 We REVERSE. 1 According to the Appellants, the real party in interest is Plansee SE. Appeal Br. 1. 2 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2016-001117 Application 13/310,140 STATEMENT OF THE CASE3 Appellants describe the invention as relating to a tubular target to be as used as material to be sputtered as part of a cathode atomization system. Spec. 3^4. The target comprises molybdenum or molybdenum alloy. Id. at 3. Claim 1, reproduced below with emphasis added to certain key recitations and spacing added for readability, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. A tubular target, comprising: a molybdenum tube formed of a metal powder of Mo or Mo alloy, said molybdenum tube having ends and said molybdenum tube having: an oxygen content less than 50 gg/g; a density greater than 99% of a theoretical density; and an average grain size transversely to an axial direction of said tube of less than 100 pm; and a supporting tube of titanium or titanium alloy connected to said molybdenum tube and a metallurgical bond connection formed between said molybdenum tube and said supporting tube, said supporting tube reaching beyond the ends of said molybdenum tube. Appeal Br. 10 (Claims App’x). 3 In this opinion, we refer to the Final Office Action dated March 5, 2015 (“Final Act.”), the Appeal Brief filed June 11, 2015 (“Br.”) and the Examiner’s Answer dated September 8, 2015 (“Ans.”). 2 Appeal 2016-001117 Application 13/310,140 REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Hunt et al. US 6,073,830 (hereinafter “Hunt”) Ueda et al. US 2003/0136662 Al (hereinafter “Ueda”) Smathers et al. US 2007/0007131 Al (hereinafter “Smathers”) Lemon et al. US 2008/0193798 Al (hereinafter “Lemon”) REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1—3 and 6—12 under 35 U.S.C. § 103 as unpatentable over Lemon in view of Ueda and further in view of Hunt. Final Act. 2. Rejection 2. Claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over Lemon in view of Ueda and Hunt and further in view of Smathers. Id. at 5. June 13, 2000 July 24, 2003 Jan. 11,2007 Aug. 14, 2008 ANALYSIS Rejection 1. The Examiner rejects claim 1 as obvious over Lemon in view of Ueda and further in view of Hunt. The Examiner finds that Lemon in view of Ueda does not specify a metallurgical bond connection between the claimed molybdenum tube and the titanium support. Ans. 4. The Examiner finds that Hunt discloses metallurgical bond between a sputtering target and a backing plate and concludes that it would be obvious to employ such a bond with Lemon in view of Ueda “in order to achieve good thermal 3 Appeal 2016-001117 Application 13/310,140 and electrical contact between the Mo tube and Ti backing tube as disclosed by Hunt. . . Id. Appellants argue that none of the references, including Hunt, explain how two tubes (i.e., an inner tube and an outer tube if an arrangement as depicted in Ueda Figure 1 is used) could be connected utilizing the diffusion bonding technique of Hunt. Appeal Br. 7. Appellants are thus arguing that, despite any potential benefits of diffusion bonding, use of diffusion bonding to connect the tubes of Lemon in view of Ueda would not be obvious because the references do not teach how to perform bonding in this configuration or even that such bonding is possible. We begin our analysis of Appellants’ argument with claim construction. The Examiner states that “[h]ow the diffusion bonding is formed between the two members is a process limitation.” Ans. 4. Appellants, however, persuasively explain that “metallurgical bond” describes the type of “connection” recited in claim 1. Appeal Br. 4. We agree that a metallurgical bond is one where, for example, the materials merge into one another on a microscopic scale, and “metallurgical bond” is a structural recitation because it affirmatively describes this type of structure. The Examiner therefore bears an initial burden of explaining why such structure is obvious. We agree with Appellants that, on the present record, the Examiner has not met this burden. While the Examiner presents findings as to why a person of skill in the art might desire a metallurgical bond (Final Act. 4), the Examiner does not explain why a person would have understood that such a bond could be implemented in the Lemon/Ueda combination. The Examiner has not adequately explained, for example, how a technique of Hunt could 4 Appeal 2016-001117 Application 13/310,140 bond an inner tube with an outer tube. Appeal Br. 7. A person of skill in the art would not have had reason to combine Hunt’s metallurgical bonding with the Lemon/Ueda combination absent some reasonable expectation that such bonding could be successfully implemented in that context, and the Examiner has not explained why the person of skill in the art would have had such an expectation. We therefore do not sustain the Examiner’s rejection of claim 1 or the claims that depend from claim 1. Rejection 2. The Examiner additionally applies the Smathers reference in rejecting claims 4 and 5. Ans. 5—6. The Examiner’s explanation of Smathers does not address the error explained above. Id. We therefore reverse this rejection for the reasons explained above. DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1-12. REVERSED 5 Copy with citationCopy as parenthetical citation