Ex Parte Abenthung et al

Patent Trial and Appeal Board

Jul 26, 2017

13310140 (P.T.A.B. Jul. 26, 2017)

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
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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
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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
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