Ex parte Hughes

Board of Patent Appeals and Interferences

Jun 15, 2001

08379868 (B.P.A.I. Jun. 15, 2001)

1 The appellant filed an amendment under 37 CFR § 1.116 (1981)
on April 8, 1996, proposing a change to claim 20. (Paper 6.) The
proposed amendment was approved by the examiner and has been entered.
(Advisory action of April 19, 1996, paper 7.)
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS J. HUGHES
____________
Appeal No. 1998-2308
Application No. 08/379,868
____________
ON BRIEF
____________
Before OWENS, TIMM, and DELMENDO, Administrative Patent Judges.
DELMENDO, 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 1 through 23, which are all of
the claims pending in the subject application.1
The subject matter on appeal relates to a method of depositing
an oxidized metal coating on a substrate in a chamber having
Appeal No. 1998-2308
Application No. 08/379,868
2
throughout an atmosphere comprising a mixture of reactive and inert
gases and having a sputtering station and an oxidizing
station spaced apart within the chamber. Further details of this
appealed subject matter are recited in illustrative claims 1, 10, 12
through 14, 19, and 20, which are reproduced below:
1. A method of depositing an oxidized metal coating
on a substrate in a chamber having throughout an
atmosphere comprising a mixture of reactive and inert
gases and having a sputtering station and an oxidizing
station spaced apart within said chamber, the oxidizing
station providing a glow discharge, including the steps of
disposing the substrate at the sputtering station and
there sputtering onto the substrate from a metal target a
layer of elemental metal and oxidized metal, and moving
the substrate to the oxidizing station and there
subjecting said layer to reactive ions which oxidize the
elemental metal in said layer.
10. A method as in claim 1 in which said sputtering
step comprises applying to said target a generally square
wave voltage having a positive portion which is less than
fifty percent of a cycle and a negative portion which is
more than fifty percent of a cycle and provides a negative
DC component.
12. A method as in claim 10 wherein the voltage is
applied from a low-impedance source.
13. A method as in claim 10 wherein the oxidizing
station is provided with a non-sputtering cathode
including the step of applying to said cathode a negative
DC potential.
Appeal No. 1998-2308
Application No. 08/379,868
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14. A method as in claim 13 wherein the potential is
applied from a high-impedance source.
19. A method of depositing oxidized coatings on a
pair of substrates in a chamber having throughout an
atmosphere comprising a mixture of reactive and inert
gases and having a sputtering station and an oxidizing
station spaced apart within said chamber, the oxidizing
station providing a glow discharge, including the steps of
disposing one substrate at the sputtering station and
there sputtering onto the substrate from a metal
target a layer of elemental metal and oxidized metal,
disposing the other substrate at the oxidizing station and
there subjecting it to reactive ions which oxidize the
metal in any layer of elemental metal and oxidized metal
previously sputtered thereon, and repetitively moving the
one substrate between the sputtering and oxidizing
stations while repetitively moving the other substrate
between the oxidizing and sputtering stations.
20. A method of depositing an oxidized metal coating
on a substrate in a chamber having throughout an
atmosphere comprising a mixture of reactive and inert
gases and having a sputtering station comprising an
electrode and a target including the steps of disposing
the substrate at the sputtering station, applying between
the electrode and the target a generally square wave
voltage such that the target has a negative voltage
relative to the electrode for more than half a cycle and a
positive voltage relative to the electrode for less than
half a cycle, each of said positive and negative voltages
producing discharges well into the abnormal glow region
but a safe margin below the voltage at which an arc
discharge would be initiated, the positive and negative
voltages having absolute values roughly equal to one
another, the square wave voltage having a roughly constant
RMS value irrespective of its duty cycle, and varying the
duty cycle of said square wave voltage to oppositely vary
the DC and RMS AC components thereof such that the RMS AC
Appeal No. 1998-2308
Application No. 08/379,868
4
component is sufficiently large to cause complete
sputtering of oxide coatings formed on the target.

The examiner relies upon the following prior art references as
evidence of unpatentability:
Quazi 4,693,805 Sep. 15, 1987
Scobey et al. 4,851,095 Jul. 25, 1989
(Scobey)
Scherer et al. 4,931,169 Jun. 5, 1990
(Scherer)
Latz et al. 5,122,252 Jun. 16, 1992
(Latz)
Kügler 5,292,417 Mar. 8, 1994
(filing date Apr. 8, 1992)
The following grounds of rejection are presented for our review
in this appeal:
I. Claims 12 and 14 stand rejected under the second paragraph
of 35 U.S.C. § 112 as indefinite. (Examiner’s answer, pages 3-4.)
II. Claims 1 through 9 and 15 through 19 stand rejected under
35 U.S.C. § 103 as unpatentable over Kügler in view of Scobey. (Id.
at pages 4-8.)
III. Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kügler in view of Scobey, as applied to claims 1
through 9 and 15 through 19, and further in view of Latz. (Id. at
pages 8-9.)
Appeal No. 1998-2308
Application No. 08/379,868
5
IV. Claims 10 through 12 and 20 through 23 stand rejected
under 35 U.S.C. § 103 as unpatentable over Kügler in view of Scobey,
as applied to claims 1 through 9 and 15 through 19, and further in
view of Quazi and Scherer. (Id. at pages 9-11.)
We reverse the aforementioned rejection for reasons which
follow.
Prior to addressing the merits, it is important to emphasize
the procedural burdens allocated to an examiner and an applicant
during the examination process. The initial burden of establishing a
prima facie case of unpatentability rests on the examiner. See,
e.g., In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only by meeting this initial
burden can the examiner shift the burden of coming forward with
argument or evidence to the applicant. Id.
Rejection I
Claims 12 and 14 stand rejected under the second paragraph of
35 U.S.C. § 112 as indefinite.
As pointed out by the appellant (substitute appeal brief, pages
11-13), a claim complies with the second paragraph of section 112 if,
when read in light of the specification, it reasonably apprises those
Appeal No. 1998-2308
Application No. 08/379,868
6
skilled in the art of the scope of the invention. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94
(Fed. Cir. 1986).
Here, the examiner has taken the position that the terms “low”
and “high” appearing in appealed claims 12 and 14, respectively, are
relative terms which lack “basis for comparison.” (Examiner’s
answer, pages 4 and 18.) However, the examiner has not adequately
explained on this record why appealed claims 12 and 14, given the
specification description at pages 6-7, do not reasonably apprise
those skilled in the relevant art of the scope of the invention
recited in these claims.
Accordingly, we cannot uphold the examiner’s rejection of
appealed claims 12 and 14 on this ground.
Rejections II and III
Claims 1 through 9 and 15 through 19 stand rejected under 35
U.S.C. § 103 as unpatentable over Kügler in view of Scobey. Further,
claims 13 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable
over Kügler in view of Scobey, as applied to claims 1 through 9 and
15 through 19, and further in view of Latz.
Appeal No. 1998-2308
Application No. 08/379,868
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Kügler describes a method of coating at least one object with
at least one layer, wherein an ohmically conductive target is
sputtered in a glow discharge, which is electrically supplied by a DC
signal and a superimposed AC signal. (Column 3, lines 62-66.)
Kügler further teaches that the sputtered particles react with a gas
in a space between the target and the object and that the layer
deposition process is controlled in the unstable transition mode
between the metallic and reactive modes, whereby the deposited layer
is electrically less conductive than the target material. (Column 3,
line 66 to column 4, line 5.) According to Kügler, the method may
further comprise a post-reaction step “[i]f the obtained reaction
rate ( is not yet sufficient.” (Column 13, lines 8-9.)
Although Kügler teaches that the sputtered layer can either be
post-reacted in chamber 10 (column 13, lines 9-11) or that “[i]t is
possible and often preferred to couple” the chamber 10 (Fig. 2) in-
line with a “post-reaction” chamber (column 13, lines
25-29), the examiner has not pointed to any teaching in Kügler of “a
chamber having throughout an atmosphere comprising a mixture of
reactive and inert gases and having a sputtering station and an
oxidizing station spaced apart within said chamber” as required by
appealed claim 1 or 19.
Appeal No. 1998-2308
Application No. 08/379,868
8
To account for this difference, the examiner relies on the
teachings of Scobey. (Examiner’s answer, page 7.) Specifically,
Scobey teaches as follows:
In a presently preferred approach for forming thin
film coatings including refractory metal coatings and
optical quality dielectric coatings such as metal oxide
coatings, our invention uses an in-line translational
processing configuration, or a cylindrical processing
configuration in which substrates are mounted on a
rotating cylindrical drum carrier, or on a rotating
planetary gear carrier, or on a continuous moving web. The
substrates are moved past a set of processing stations
comprising (1) at least one preferably linear cathode
plasma generating device (e.g., a planar magnetron or a
Shatterproof rotating magnetron) operating in a metal
deposition mode for depositing silicon, tantalum, etc.,
alternated or sequenced with (2) a similar device such as
a planar magnetron operating in a reactive plasma mode, or
an ion gun or other ion source configured to produce an
elongated uniform high intensity ion flux adjacent the
periphery of the carrier, for generating an intense
reactive plasma, using oxygen or other reactive gases
including but not limited to nitrogen, hydrogen or gaseous
oxides of carbon. The arrangement provides long narrow
zones for both deposition and reaction with complete
physical separation of the zone boundaries. When similar
magnetron cathodes are used, one is operated using a
relatively low partial pressure of the reactive gas
(such as oxygen) to provide the metal deposition mode
while the other is operated at a relatively higher
reactive gas partial pressure to generate the intense
reactive plasma for oxidation, etc. [Col. 3, ll. 13-42.]
Appeal No. 1998-2308
Application No. 08/379,868
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As pointed out by the appellant (reply brief, page 2), however,
Scobey teaches that the individual sputter devices 30 are physically
separated by baffles 32 such that the chamber 10 is divided “into
different regions or sub-chambers at each sputterer in which
different gas atmospheres and/or gas partial pressures can be
established.” (Emphasis added; Figs. 1 and 4; column 7, lines 55-
60.) Therefore, the individual sputter devices 30 described in
Scobey cannot be said to be spaced apart in “a chamber having
throughout an atmosphere of reactive and inert gases” (emphasis
added) as recited in the appealed claims. Instead, Scobey teaches
that the chamber 10 contains a plurality of different atmospheres.
While Scobey states that the plasma “extends essentially throughout
the vacuum sputtering chamber” (column 9, lines 20-24), this does
not make up for the lack of a teaching or suggestion in the applied
prior art to conduct the process in an apparatus which contains only
one atmosphere throughout the chamber, which contains spaced-apart
sputtering and oxidizing stations.
It is true that, in proceedings before the U.S. Patent and
Trademark Office (PTO), claims must be interpreted by giving words
their broadest reasonable meanings in their ordinary usage, taking
Appeal No. 1998-2308
Application No. 08/379,868
10
into account the written description found in the specification. In
re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). However, the interpretation of
the claim language must be “reasonable in light of the totality of
the written description.” In re Baker Hughes Inc., 215 F.3d 1297,
1303, 55 USPQ2d 1149, 1153 (Fed. Cir. 2000).
In our view, the examiner’s reading of the appealed claims is
not consistent with the description found in the specification, which
is directed solely to processes that use a chamber having only one
atmosphere and having spaced-apart sputtering and oxidizing stations.
(Specification, page 1, lines 4-9; Fig. 1.)
Under these circumstances, we determine that the combination of
Kügler and Scobey does not result in the invention recited in the
appealed claims. Since Latz does not cure the fundamental
deficiencies of Kügler and Scobey, we hold that the examiner has not
established a prima facie case of obviousness against the subject
matter of the appealed claims within the meaning of 35 U.S.C. § 103.
Rejection IV
Appeal No. 1998-2308
Application No. 08/379,868
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Claims 10 through 12 and 20 through 23 stand rejected under 35
U.S.C. § 103 as unpatentable over Kügler in view of Scobey, as
applied to claims 1 through 9 and 15 through 19, and further in view
of Quazi and Scherer.
The examiner appears to admit that neither Kügler nor Scobey
describes a sputtering step which comprises applying to the target a
“generally square wave voltage having a positive portion which is
less than fifty percent of a cycle and a negative portion which is
more than fifty percent of a cycle and provides a negative DC
component” as recited in appealed claim 10 or “a generally square
wave voltage such that the target has a negative voltage relative to
the electrode for more than half a cycle and a positive voltage
relative to the electrode for less than half a cycle” as recited in
appealed claim 20. (Examiner’s answer, page 10.) To remedy this
additional difference, the examiner relies on Quazi and Scherer.
(Id. at pages 10-11.) The examiner’s conclusion is stated as
follows:
Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was
made to have applied waveform having a positive portion
which is less than fifty percent of a cycle and a negative
portion which is more than fifty percent of a cycle and
provides a negative dc component as taught by Quazi and
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Application No. 08/379,868
12
Scherer et al. because it is desired to deposit largely
disturbance free dielectric coatings. [Id. at p. 11.]
Because Quazi and Scherer are cited only to show the particular
waveform recited in the appealed claims, it follows then that our
comments concerning rejections II and III are also pertinent for this
rejection as applied to appealed claims 10 through 12. Moreover, it
is our judgment that the examiner’s
position is without merit. As pointed out by the appellant
(substitute appeal brief, page 14), Quazi relates to methods that use
a sinusoidal waveform as opposed to a generally square wave voltage
as recited in the appealed claims. (Column 6, lines 39-45.) Also,
the examiner has not identified any teaching or suggestion in
Scherer, much less a reasoned explanation, why the teachings of this
reference are pertinent to a method that uses a generally square
waveform as recited in the appealed claims. Absent specific evidence
of a motivation or suggestion and the requisite reasonable
expectation of success from the prior art to combine these
references, the examiner’s rejection cannot be sustained.
For these reasons, we must also reverse the examiner’s
rejection of appealed claims 10 through 12 and 20 through 23 under 35
U.S.C. § 103 as unpatentable over the applied prior art.
Appeal No. 1998-2308
Application No. 08/379,868
13
Summary
In summary, we reverse all of the examiner’s rejections, namely
rejections I through IV identified above.
The decision of the examiner is reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 1998-2308
Application No. 08/379,868
14
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