Ex Parte Hattori et al

Board of Patent Appeals and Interferences

Aug 14, 2009

10876525 (B.P.A.I. Aug. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKESHI HATTORI, KUNIO SAEGUSA, and
YUZO SHIGESATO
____________

Appeal 2009-005860
Application 10/876,525
Technology Center 1700
____________

Decided: August 14, 2009
____________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
TERRY J. OWENS and PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 15-22. We have jurisdiction pursuant to
35 U.S.C. § 6. Oral arguments were presented on August 11, 2009.

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Appellants' claimed invention is directed to a sputter target
comprising indium (In), antimony (Sb), and oxygen (O) with a Sb/In ratio of
from 1.5 to 2.0, and a method of preparing a InSbO4-containing film
utilizing such a target.
Claim 15 is illustrative and reproduced below:
15. A target for sputtering, which contains In, Sb and O, and whose
atomic ratio of Sb/In is from 1.5 to 2.0.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Vossen, Jr. 3,749,658 Jul. 31, 1973
Sinclair 3,388,053 Jun. 11, 1968
Keiji1 JP 09-071419 Mar. 18, 1997
Shigeta JP 03-106017 May 2, 1991
Tetsuo JP 08-124437 May 17, 1996

Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP 09-071419 (Keiji) in view of JP 03-106017 (Shigeta).2
Claims 17, 18, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keiji in view of Shigeta and Vossen, Jr. Claim 19 stands

1 The Examiner and Appellants refer to JP 09-071419 using the named
inventor’s translated first (given) name, Keiji, rather than the translated
surname (family name), Sato. We shall follow that convention in this
Decision to avoid confusion. Similarly, JP 08-124437 is referred to with the
translated first (given) name, Tetsuo, rather than the surname (family name),
Matuda, by both Appellants and the Examiner - a convention which we
follow herein.
2 Our references to Keiji and Shigeta are to the English language
translations, respectively, prepared by the McElroy Translation Company
and FLS, Inc. that are of record.
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rejected under 35 U.S.C. § 103(a) as being unpatentable over Keiji in view
of Shigeta, Vossen, Jr., and JP 08-124437 (Tetsuo).3 Claim 20 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Keiji in view
of Shigeta, Vossen, Jr., Tetsuo, and Sinclair.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we concur with Appellants that
the Examiner has failed to establish a prima facie case of obviousness for the
claimed subject matter. Accordingly, we will not sustain the Examiner's
rejections for substantially the reasons set forth in the Appeal Brief and
Reply Brief.
All of the appealed claims require a sputter target that includes In, Sb,
and O with an atomic ratio of Sb/In of 1.5 to 2.0, as at least a part of the
claimed subject matter. The Examiner relies on a combination of teachings
of Keiji and Shigeta for allegedly suggesting such a sputter target in all of
the separate obviousness rejections.
The Examiner acknowledges that Keiji does not teach a material for a
sputtering target with the claimed atomic ratio of Sb/In. However, the
Examiner maintains that it would have been obvious to one of ordinary skill
in the art at the time of the invention to modify the material taught by Keiji
to comprise a ratio of Sb/In corresponding to Appellants’ claimed ratio given
the additional teachings of Shigeta in order to increase carrier density and
improve Hall mobility (Ans. 4).
Appellants contend, inter alia, that the teachings of Shigeta do not
relate to an oxide material for a target with a rutile crystal structure, as is the

3 Our references to Tetsuo are to the English language translation prepared
by FLS, Inc., of record.

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subject of Keiji, and that the Examiner’s proposed combination of references
would not have suggested a modification to Keiji as suggested by the
Examiner (App. Br. 14-17; Reply Br. 5-7).

PRINCIPAL ISSUE
Have Appellants identified reversible error in the Examiner’s
determination that it would have been obvious to one of ordinary skill in the
art to modify the relative amount of In and Sb in the material of Keiji to an
amount corresponding to Appellants’ claimed ratio in view of the teachings
of Shigeta?

PRINCIPLES OF LAW
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Patent and Trademark Office (PTO). See
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
“[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.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Moreover, rejections based
on § 103(a) must rest on a factual basis with the facts being interpreted
without impermissible hindsight reconstruction of the claimed invention
from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

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FINDINGS OF FACT
In addition to factual determinations set forth elsewhere in this
Opinion, we note the following findings of fact.
Keiji discloses a transparent conductive double oxide material of a
formula “M1-x SbO4 [M = In or Ga, -0.1 ≤ x ≤ 0.1] having rutile crystalline
structure”, which material can be doped with at least one specified Group IV
metal element (¶ 0007).
Keiji teaches that “it is important that the mole ratio of In or Ga to Sb
be 1-x:1” where -0.1 ≤ x ≤ 0.1 (¶ 0009). Keiji teaches that the disclosed
double oxide transparent material having rutile crystalline structure and
characterized by such a constituency of In (or Ga) and Sb is expected to
have high electrical conductivity properties (id.).
Shigeta discloses a method of making a thin film including In and Sb
without worsening Hall mobility using a target having a ratio of In to Sb of
from 50 to 50 through 20 to 80 (pp. 4-7). Shigeta teaches that the thin film
can be applied to an electromagnetic conversion element, such as a Hall
element (p. 2). Shigeta teaches that carrier density was higher with
increased Sb ratio when a glass substrate was employed for the thin film
(Example 1, pp. 6 and 7).
Shigeta does not describe the presence of O in the target or that a
rutile crystalline form is present in the target or the film made therefrom (see
generally Shigeta).

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DISCUSSION
Claims 15 and 16
On this record, we agree with Appellants that the teachings of Shigeta
and Keiji are disparate and not combinable as suggested by the Examiner
because Keiji is directed to a double oxide rutile crystalline material, which
is disclosed as requiring a particular ratio of In/Sb that is outside the here-
claimed range whereas Shigeta is directed to a non-oxygen containing film
and target for manufacturing such (App. Br. 14-17; Reply Br. 3-8). Also,
the Examiner has not established that the target or film material of Shigeta
possesses a rutile crystalline form as required by Keiji (App. Br. 14-15;
Reply Br. 5-6). In this regard, the Examiner has not explained how the
Examiner’s conjecture about a trace amount of oxygen being necessarily
present in Shigeta’s target, even if the Examiner had shown this to be the
case, would have led one of ordinary skill in the art to discount the teachings
of Keiji concerning the required In/Sb ratio of the double oxide material
taught therein in favor of the teachings of Shigeta, which teachings of
Shigeta do not address a double oxide material (see generally Ans.). Absent
the presentation of a sound basis for the proposed modification of Keiji, the
Examiner’s rejection appears to be based on impermissible hindsight.
Consequently, the Examiner has not furnished a sustainable case of
obviousness for either of rejected claims 15 and 16, which each require a
target that includes Sb, In and O and a ratio of Sb/In of 1.5 to 2.0, based on
the Examiner’s ill considered proposed combination of Keiji and Shigeta.
Accordingly, we do not reach Appellants’ Declaration evidence
submitted in support of Appellants’ non-obviousness arguments given the
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lack of the presentation of a prima facie case of obviousness by the
Examiner. See In re Geiger, 815 F. 2d 686, 688, (Fed. Cir. 1987).

Claims 17-22
The three separate obviousness rejections that variously pertain to the
claims under this sub-heading all are premised on the above-discussed
combination of Keiji and Shigeta for suggesting a target material including
O, Sb, and In, with a ratio of Sb to In, as previously mentioned, with
additional references added by the Examiner to allegedly suggest other
limitations of claims 17-22. Because each of these additional rejections are
infected with the same reversible error with regard to the Examiner’s
proposed combination of Keiji and Shigeta as discussed above, we agree
with Appellants that these latter rejections are not sustainable for the reasons
set forth in the Appeal Brief and Reply Brief (App. Br. 17-20; Reply Br. 8-
9).

CONCLUSION
Appellants have identified reversible error in the Examiner’s
determination that it would have been obvious to one of ordinary skill in the
art to modify the relative amount of In and Sb in the material of Keiji to an
amount corresponding to Appellants’ claimed ratio in view of the teachings
of Shigeta.

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ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

tc

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