Ex Parte Alami et alDownload PDFPatent Trial and Appeal BoardJan 26, 201812543721 (P.T.A.B. Jan. 26, 2018) 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. 12/543,721 08/19/2009 Jones Alami P7784US 7928 78631 7590 01/30/2018 RORFRTS TtRFFN EXAMINER OERLIKON METCO (US) INC. ABRAHAM, IBRAHIME A 1101 PROSPECT AVENUE WESTBURY, NY 11590 ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 01/30/2018 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): ROBERT.GREEN@OERLIKON.COM gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONES ALAMI, GEORG ERKENS, TARIQ RASA, and JORG VETTER Appeal 2017-002749 Application 12/543,721 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and JANE E. INGLESE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 18-26 and 34—412 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appellants identify the real party in interest as “Oerlikon Surface Solutions AG” (Appeal Brief filed April 22, 2016, hereinafter “Appeal Br.,” 3). 2 Appeal Br. 8-29; Reply Brief filed December 6, 2016, hereinafter “Reply Br.,” 2-6; Final Office Action entered October 14, 2015, hereinafter “Final Act.,” 3-18; Examiner’s Answer entered October 6, 2016, hereinafter “Ans.,” 2-19. Appeal 2017-002749 Application 12/543,721 I. BACKGROUND The subject matter on appeal relates to a physical vapor deposition (PVD) coating device (Specification filed August 19, 2009, hereinafter “Spec.,” 1,11. 3-5). The Appellants’ Figure 1 is reproduced as follows: Figure 1 above depicts an exemplary PVD coating device in accordance with the claims on appeal, wherein the device includes: a process chamber 2 having chamber walls 21; an ignition anode 3 for setting up and/or maintaining an arc between a consumable cathode (target) 4 and the anode 3; a source cathode 8; electrical energy sources 5-7; and an electron shield 81 (Spec. 9,1. 14-11,1. 10). According to the Appellants, a substrate is not shown in Figure 1 “[d]ue to clarity reasons,” but “[t]he person skilled in the art [would have] know[n] how and where in the process chamber the substrate can be advantageously placed” {id. at 10,11. 5-7). Representative claim 18 is reproduced from the Claims Appendix to the Appeal Brief (Appeal Br. 30), with key limitations emphasized, as follows: 2 Appeal 2017-002749 Application 12/543,721 18. A physical vapour deposition coating device, comprising: a process chamber; an anode; a consumable cathode configured to be consumed by an electrical discharge for coating a substrate located within the process chamber; said consumable cathode and said anode being structured and arranged to one of: produce and/or maintain an arc between the anode and the consumable cathode; and/or ionize target material of the consumable cathode to generate a plasma; a source cathode that is different from the consumable cathode; an electron shield shielding the source electrode; a first electrical energy source comprising negative and positive poles; the negative pole of the first electrical energy source being connected to the consumable cathode; a second electrical energy source separate from the first electrical energy source and comprising negative and positive poles; the positive pole of the second electrical energy source being connected to the anode; a third electrical energy source separate from the first and second electrical energy sources and comprising negative and positive poles; the third electrical energy source being structured and arranged to switch on during coating of the substrate; the negative pole of the third electrical energy source being connected to the source cathode; and the positive pole of the third electrical energy source being connected to the electron shield, 3 Appeal 2017-002749 Application 12/543,721 wherein the source cathode is structured and arranged to confine the plasma by pushing back electrons toward a center of the process chamber. II. REJECTIONS ON APPEAL On appeal, the Examiner maintains several rejections under pre-AIA 35 U.S.C. § 103(a), as follows: A. Claims 18, 19, 22, 25, 34, 35, 38, and 41 as unpatentable over Minomura3 in view of Cordes et al.4 (hereinafter “Cordes”); B. Claims 20, 21, 23, 24, and 36 as unpatentable over Minomura in view of Cordes and Vetter et al.5 (hereinafter “Vetter”) C. Claim 37 as unpatentable over Minomura in view of Cordes, Vetter, and Chistyakov;6 D. Claims 26 and 39 as unpatentable over Minomura in view of Cordes and Chistyakov; and E. Claim 40 as unpatentable over Minomura in view of Cordes and Sunthankar et al.7 (hereinafter “Sunthankar”). (Ans. 2-19; Final Act. 3-18.) III. DISCUSSION Rejection A. The Appellants provide arguments under various sub headings identified by one or more claims (Appeal Br. 9-21). We address 3 US 4,225,409, issued September 30, 1980. 4 US 3,927,225, issued December 16, 1975. 5 US 5,294,322, issued March 15, 1994. 6 US 2007/0034497 Al, published February 15, 2007. 7 US 2003/0230483 Al, published December 18, 2003. 4 Appeal 2017-002749 Application 12/543,721 these arguments separately to the extent that they meet the requirements for separate consideration pursuant to 37 C.F.R. § 41.37(c)(l)(iv). 1. Claim 18 The Examiner finds that Minomura describes a PVD coating device including every limitation recited in claim 18, except it does not explicitly disclose the disputed limitations highlighted above—i.e., “wherein the source cathode is structured and arranged to confine the plasma by pushing back electrons toward a center of the process chamber” (Ans. 2-3). The Examiner finds further, however, that Cordes teaches a device in which shields 52, 53 and source cathodes 50, 51 “are arranged to direct and confine the electrons and ion plasma formed in a plane between the substrate and consumable cathode” (id. at 4) (citing Cordes, Fig. 3 and col. 4,1. 25-col. 6, 1. 18). Based on these findings, the Examiner concludes that a person of ordinary skill in the art would have combined Minomura and Cordes “in order to direct and confine the electrons and ion plasma formed in a plane between the substrate and consumable cathode as taught by Cordes” and, thus, “focus more of the coating material on the substrate as opposed to the coating material being wasted on coating the chamber walls” (id. at 4). The Appellants disagree with the Examiner’s finding that Cordes teaches the disputed limitation, arguing that “[t]he claim does not merely recite a source cathode that can ‘confine the electrons and ion plasma formed in a plane between the substrate and the consumable cathode’” but, instead, “specifically recites the source cathode is structured and arranged to confine the plasma by pushing back electrons toward a center of the process chamber” (Appeal Br. 10-11). According to the Appellants, “electron shield 81 [as shown in their Figure 1] shields the source cathode 8 which can push 5 Appeal 2017-002749 Application 12/543,721 back electrons e’ to a center of the chamber” (id. at 11) (bolding added). The Appellants argue that, by contrast, “the shields 52 and 53 of CORDES are merely used to shield filaments 50 and 51 which apparently only help to confine a plasma of electrons and positive ions to a plane between the cathode 56 and substrate” (id.) (bolding added). The Appellants argue that although Cordes teaches creating a plasma between a platinum cathode and a substrate, “there is no mention of the filaments 50 and 51 being utilized to confine the plasma, much less, by pushing back electrons toward a center of the process chamber (claim 18)” (id. at 12) (bolding added). Thus, the dispositive issue arising from these contentions is whether the Examiner provided a sufficient factual basis upon which to reasonably conclude that the structural arrangement disclosed in Cordes’s Figure 3 would inherently or necessarily meet the disputed limitations highlighted above in claim 18. It is well-settled that “during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). “Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Id. at 322. “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Applying this longstanding claim interpretation principle applicable to proceedings before the PTO and taking account of the Appellants’ arguments, we discern no error in the Examiner’s claim construction and factual finding that Cordes describes, either explicitly or inherently, the 6 Appeal 2017-002749 Application 12/543,721 disputed claim limitations, as broadly recited in claim 18. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As an initial matter, the Appellants’ Figure 1 appears to show that it is shield 81 in combination with other elements including source cathode 8— not the source cathode 8 per se—that is “structured and arranged to confine the plasma by pushing back electrons toward a center of the process chamber,” as recited in claim 18. But even if it is the source cathode 8 that is responsible for confining the plasma and pushing back the electrons toward a center of the process chamber, we agree with the Examiner’s analysis. Cordes’s Figure 3 is reproduced as follows: 48 Cordes’s Figure 3 above depicts a sputtering apparatus 25 including, inter alia, a platinum cathode 56, a wafer 42, shields 45, 52, 53, and filaments 50, 51, wherein some of the generated electrons and ions are confined generally 7 Appeal 2017-002749 Application 12/543,721 in a plane parallel to the surface of the cathode 56 and wafer 42 by a magnetic field schematically designated as “H” having a direction as indicated by arrow 49 (Cordes, col. 5,11. 11-30). Specifically, in the Answer, the Examiner finds that Cordes’s filaments 50, 51 are source cathodes provided with electron shields 52, 53 (Ans. 4) (citing Cordes, Fig. 3 and col. 4,1. 25-col. 6,1. 18). The Appellants do not specifically refute this finding in the Reply Brief (Reply Br. 2-6). Rather, they repeat the argument made in the Appeal Brief (Appeal Br. 10- 11) that claim 18 does not merely recite a source cathode that can confine the electrons and ion plasma formed in a plane between a substrate and a consumable cathode, as explicitly disclosed in Cordes’s column 5, lines 23- 30 (Reply Br. 2). But as the Examiner points out (Ans. 16), the disputed claim limitations do not limit all the electrons to be pushed back toward a center of the process chamber. Nor do they place any particular limits on what regions can be considered “toward a center of the process chamber” (claim 18). Under the broadest reasonable interpretation not inconsistent with the Appellants’ written description, we agree with the Examiner that Cordes’s partial shielding provided by shields 52, 53 for filaments 50, 51, which are undisputedly source cathodes, relative to the center region of the coating device would reasonably appear to result in at least some of the electrons being pushed back towards the device’s center region to result in at least some plasma being confined. Indeed, it would reasonably appear that Cordes’s shield 45 (Cordes, col. 5,11. 1-10) would also act to confine the plasma by pushing back some of the electrons towards the center. The Appellants do not direct us to any objective evidence (e.g., experimental 8 Appeal 2017-002749 Application 12/543,721 data in a sworn declaration) to demonstrate the contrary. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Cordes’s explicit teaching that “[s]ome of the generated electrons and ions pass through the apertures of each shield [52, 53] and appear in the region between the cathode 56 and wafer 42 where they are confined generally in a plane . . . H” (col. 5,11. 23-30) is supportive—not inconsistent—with the Examiner’s finding that Cordes’s arrangement would result in the effects recited in the disputed limitations. As the Examiner finds, “[cjonfining the plasma to [a] plane parallel between the substrate 42 and consumable cathode 56 would read on at least ‘pushing back’ some electrons toward a center of the process chamber” because “the center of the process chamber of Cordes is located in a plane between the substrate and consumable cathode” (Ans. 16) (bolding added). For these reasons, and those given by the Examiner, we uphold Rejection A as entered against claim 18. 2. Claims 34 and 38 The Appellants’ arguments for claims 34 and 38 are substantially the same as those offered for claim 18 (Appeal Br. 12-19). Therefore, we also sustain Rejection A as entered against these claims. 3. Claims 25 and 35 Claim 25 depends from claim 18 and recites: “wherein the anode is an ignition anode and is spaced from a wall of the process chamber and is configured to produce and/or maintain an arc between the consumable cathode and the ignition anode” (Appeal Br. 31). Claim 35, which depends from claim 34, recites the same limitations {id. at 32). 9 Appeal 2017-002749 Application 12/543,721 The Examiner finds that Minomura’s anode 2 meets the limitations recited in claim 25 (Ans. 5). The Appellants contend that because Minomura “describes the anode 4 as generating the plasma, it is not apparent how the Examiner can construe anode 2 as the recited ignition anode configured to produce and/or maintain an arc between the consumable cathode and the ignition anode” (Appeal Br. 20) (bolding added). We do not find the Appellants’ argument persuasive. Minomura teaches that “[djirect current is passed through cathode 1 to emit thermoelectrons and a constant voltage of 300 V is applied to auxiliary anode 4 to bring the thermoelectrons into collision with the argon atoms and to induce ionization of the argon atoms, thus generating a plasma P” (Minomura, col. 3,11. 43^18 and Fig. 1). Thus, the Appellants are correct that Minomura teaches operating the device such that anode 4 is the anode that generates the plasma. But Minomura also teaches that “[t]he voltage of the argon plasma is controlled by applying a certain voltage to anode 2” {id., col. 3,11. 48-50). Given that description, we discern no reason why anode 2 could not be used to induce ionization and thus generate plasma, if desired. As the Examiner points out (Ans. 5), claim 25 is directed to an apparatus. Therefore, “if a prior art apparatus teaches all of the structural limitations of an apparatus claim, then, a recitation with respect to the manner in which the claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” (id.). See, e.g., In re Sinex, 309 F.2d 488, 492 (CCPA 1962). For these reasons, we sustain Rejection A as entered against claims 25 and 35. 10 Appeal 2017-002749 Application 12/543,721 4. Claims 19, 22, and 41 For claims 19, 22, and 41, the Appellants rely on the same arguments offered in support of claim 18 (Appeal Br. 21). Therefore, we sustain Rejection A as entered against these claims for the same reasons discussed above for claim 18. Rejection B. The Appellants argue against Rejection B on the basis of: claim 36; and claims 20, 21, 23, and 24 (Appeal Br. 22-25). The Appellants’ arguments in support of these claims are substantially the same as that offered for claim 18. Therefore, we uphold Rejection B for the same reasons given above for claim 18. Rejection C. Claim 37, which depends from claim 36, recites that “the device utilizes high power pulsed magnetron sputtering (HPPMS) and the process chamber comprises a wall that defines a ground potential” (Appeal Br. 33). The Examiner finds that Chistyakov teaches that HPPMS creates high density plasma suitable for sputtering (Ans. 12). The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art... to have applied the HPPMS of Chistyakov, for the sputtering cathode of Minomura/Cordes/Vetter, in order to create high density plasma suitable for sputtering as taught by Chistyakov” {id. at 12-13). The Appellants contend that the Examiner’s conclusion based on the combined prior art references constitutes reversible error because both Minomura and Cordes use “low voltage” whereas Chistyakov uses “high power” (Appeal Br. 26). Specifically, the Appellants argue that Minomura teaches using voltages of 300 V DC and 90-150 V for anodes 4 and 2, respectively, and Cordes teaches using -30 V for filaments 50, 51 {id.). The 11 Appeal 2017-002749 Application 12/543,721 Appellants argue that, by contrast, Chistyakov teaches using 0.1 kW-lOkW for plasma generation and 10 kW-1,000 kW for generating high-power pulse {id.). According to the Appellants, the only reason for combining these references appears to be based on their disclosure, which is improper {id. at 27). The Examiner responds that the Appellants are incorrect in attempting to compare volts (Minomura and Cordes) with power (Chistyakov) (Ans. 18). The Examiner finds that the current Specification indicates that the HPPMS is being used for the consumable cathode component, and, therefore, the voltages for the consumable cathodes must be compared {id. at 18-19). The Appellants do not dispute the Examiner’s finding that it is the voltages that are applied to the consumable cathode that must be compared. Rather, they argue that the voltages described in Minomura and Cordes are at least an order of magnitude lower than those disclosed in Chistyakov (Reply Br. 5). In addition, the Appellants argue that the Examiner’s finding that Cordes teaches applying a voltage of 0-5 kV to the consumable cathode is incorrect because Cordes teaches a selectively variable output voltage of 0-5 kV {id. at 6). The Appellants’ arguments fail to identify a reversible error in the Examiner’s rejection. As a preliminary matter, we observe that the Appellants do not direct us to a definition as to what constitutes “HPPMS.” Minomura teaches applying a voltage of about 1-2 kV to the target (consumable cathode) (Minomura, col. 3,11. 53-55). Cordes teaches applying a variable output voltage of 0-5 kV to cathode 56 (consumable Pt cathode) (Cordes, col. 4,11. 55-63; col. 5,11. 65-68; Fig. 3). Chistyakov 12 Appeal 2017-002749 Application 12/543,721 teaches applying a voltage of up to about 5 kV (Chistyakov, 43^48). Therefore, these references teach comparable voltages being applied to the consumable cathodes. Moreover, claim 37 is directed to a device, not a method. Therefore, patentability must be based on structure—i.e., that the structures disclosed in Minomura and Cordes are incapable of operating in HPPMS mode. For these reasons, we uphold the Examiner’s rejection. Rejections D-F. The Appellants’ arguments mirror those offered in support of claims 18 and 37 (Appeal Br. 27-28). Therefore, we sustain these rejections for the same reasons discussed above for claims 18 and 37. IV. SUMMARY Rejections A through F are sustained. Therefore, the Examiner’s final decision to reject claims 18-26 and 34—41 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation