Ex Parte Ivanov

Patent Trial and Appeal Board

Feb 14, 2013

12387134 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/387,134 04/28/2009 Eugene Y. Ivanov 020324 254P2 CON 9107
33805 7590 02/14/2013
WEGMAN, HESSLER & VANDERBURG
6055 ROCKSIDE WOODS BOULEVARD
SUITE 200
CLEVELAND, OH 44131
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
02/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EUGENE Y. IVANOV
____________

Appeal 2012-001423
Application 12/387,134
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2012-001423
Application 12/387,134

2
DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-4 and 8-12 under 35 U.S.C. § 103(a) as unpatentable over
Lo (US 6,328,927 B,1 issued Dec. 11, 2001) in view of Kohsaka (US 6,200,694
B1, issued Mar. 13, 2001) and claims 1-6 and 8-13 under 35 U.S.C. § 103(a) as
unpatentable over Suzuki (US 6,582,535 B1, issued Jun. 24, 2003) in view of
Kohsaka alone, or further in view of Lo.2 We have jurisdiction under 35 U.S.C.
§ 6(b).3
For the reasons explained below, we AFFIRM the rejection of claims 1-3, 5,
6, and 8-13 under 35 U.S.C. § 103(a) as unpatentable over Suzuki in view of
Kohsaka alone, or further in view of Lo. Because we recognize our conclusion is
based on facts and reasons which differ substantially from those advanced by the
Examiner, we denominate the affirmed rejection as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b). We REVERSE the rejection of
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Suzuki in view of Kohsaka
alone, or further in view of Lo, and the rejection of claims 1-4 and 8-12 under
35 U.S.C. § 103(a) as unpatentable over Lo in view of Kohsaka.
The invention relates to methods for making high purity sputter targets.
(Spec. [0002].) Claim 1 is representative of the invention and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. Method of preparing a W sputter target comprising:
a) providing a powder consisting essentially of W particles
having a particle size of less than about 100 microns and a purity of at
least 5Ns;

1 Final Office Action mailed Dec. 10, 2010
2 Appeal Brief filed Jul. 5, 2011 (“App. Br.”)
3 An oral hearing was held before this Board Panel on Feb. 5, 2013.
Appeal 2012-001423
Application 12/387,134

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b) pressure consolidating said particles at heated temperature
conditions of from about 1,000°C to 2,000°C to form a plate having a
density of greater than about 95 % of the theoretical density; and
c) thermomechanically rolling the plate material so that it has a
density of above about 97.5 % of the theoretical density by hot rolling
said plate at a temperature of about 1400°C to 1700°C resulting in a
thickness reduction of greater than about 40%.
Lo discloses “the combination of [a] HIPing process with a small particle
size starting [tungsten] powder produces a highly dense tungsten sputter target,”
(col. 2, l. 66-col. 3, l. 1) i.e., “99% density can be achieved” (id. at col. 2, l. 65).
Lo states that a CIP step may be conducted prior to the HIP step. (Id. at col. 2,
l. 55.)
Suzuki discloses hot pressing tungsten powder to achieve a density of 93%
or more (col. 3, ll. 1-4), followed by HIP to achieve a density of 99% or more (id.
at ll. 11-13). The hot pressing is performed at a temperature of 1600 ºC (1873 ºK)
or more and pressure of 200 kg/cm2 (19.6 MPa) or more. (Id. at col. 2, ll. 25-27.)
The HIP treatment is performed at a temperature of 1700 ºC (1973 ºK) or more and
pressure of 1000 kg/cm2 (98.1 MPa) or more. (Id. at col. 2, ll. 25-27.)
Kohsaka discloses a method wherein a mixture of Mo and W is sintered,
such as by hot pressing, and then subjected “to a HIP treatment or to [] a hot
working operation [such] as . . . [hot] rolling.” (Col. 7, ll. 39-48.) According to
Kohsaka, “[t]he hot press ought to be carried out under the conditions of heating
temperature of not less than 1973K and planar pressure of not less than 20 MPa.”
(Id. at ll. 48-51.) “The HIP treatment is advantageously carried out under the
conditions of heating temperature of not less than 1773K and pressure of not less
than 150 MPa.” (Id. at ll. 55-57.) The temperature of the hot working, e.g., hot
rolling, is “not less than 1673K, preferably not less than 1873K” and “the ratio of
Appeal 2012-001423
Application 12/387,134

4
reduction by rolling ought to be not less than 50% for the purpose of raising the
relative density of the target beyond 98%.” (Id. at col. 9, ll. 14-15, 19-22.)
Kohsaka discloses the sinter destined to undergo hot working “ought to possess a
relative density of not less than 90%.” (Id. at col. 8, ll. 28-30.)
The Examiner finds Lo and Suzuki each disclose the invention as claimed in
appealed claim 1 with the exception of a hot rolling step. (Ans. 4 5, 7-8.) The
Examiner finds Kohsaka discloses a process for producing tungsten sputtering
targets which utilizes a hot working operation such as hot rolling following
“conventional powder metallurgy techniques (e.g., sintering, HIP, compaction,
etc.)” to increase the density of the final target “to a value of 98% or higher.” (Id.
at 5, 8.) The Examiner determines it would have been obvious to one of ordinary
skill in the art at the time of the invention to have added a hot rolling step to the
processes of Lo and Suzuki based on Kohsaka’s disclosure that hot rolling
enhances the density of a target formed by conventional powder metallurgy
techniques. (Id. at 5-6, 8.)
As pointed out by Appellant, Kohsaka discloses the use of either a hot
rolling step or a HIP treatment following hot pressing. (App. Br. 11.) The
evidence of record does not support the Examiner’s finding that Kohsaka discloses
or suggests hot rolling following a HIP treatment. Thus, the Examiner’s fact
finding is insufficient to support the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art to modify the processes of Lo and
Suzuki to add an additional step of hot rolling after the HIP treatments. However,
we find Kohsaka teaches that, following a hot pressing treatment to achieve a
density of not less than 90%, either hot rolling or HIP can be employed to further
increase density beyond 98%. (See Kohsaka col. 8, ll. 62-66.) Accordingly, we

4 Examiner’s Answer mailed Aug. 22, 2011.
Appeal 2012-001423
Application 12/387,134

5
determine it would have been obvious to one of ordinary skill in the art at the time
of the invention to have substituted Kohsaka’s hot rolling step for the HIP
treatment in Suzuki’s process based on Kohsaka’s indication that hot rolling can be
used in place of HIP to provide the predictable and achievable result of increasing
the density of a hot pressed tungsten powder having a density of not less than 90%
(e.g., Suzuki’s hot pressed tungsten powder having a density of 93% or more) to
98% or more. See Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1338
(Fed. Cir. 2010); In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“Where a skilled artisan
merely pursues ‘known options’ from a ‘finite number of identified, predictable
solutions,’ obviousness under § 103 arises.”)); cf. In re Mayne, 104 F.3d 1339,
1340 (Fed. Cir. 1997) (substitution of one known element for a known equivalent
is prima facie obvious).
Appellant suggests Kohsaka teaches away from hot pressing prior to hot
rolling, arguing “Kohsaka criticizes hot pressing.” (App. Br. 10 (citing Kohsaka
col. 8, ll. 28-38).) Kohsaka discloses that when a hot pressing technique is used to
obtain the sinter “the possibility of Mo and W reacting with the carbon mold will
arise when the temperature is raised to a level at which necessary densification is
attained” (col. 8, ll. 35-38). We do not view this cautionary statement as a teaching
away from using hot pressing prior to hot rolling since Kohsaka expressly teaches
hot pressing can be used before either HIP or hot rolling to produce a high density
target (see Kohsaka col. 7, ll. 39-48 supra p. 3). Cf. Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.”).
Appeal 2012-001423
Application 12/387,134

6
Appellant argues “Suzuki . . . also casts doubt that hot rolling techniques
would enhance sputtering performance.” (App. Br. 7.) In the background section
of Suzuki referenced by Appellant, Suzuki discusses prior art methods wherein
rolling techniques were said to result in the undesirable formation of large crystal
grains. (Suzuki col. 1, ll. 32-45.) We agree with the Examiner that “one of
ordinary skill in the art would [have] recognize[d from Kohsaka’s disclosure] that
rolling methods are available that seek to cure the deficiencies of the prior art
referred to by Suzuki.” (Ans. 12.)
Appellant also relies on unexpected results in support of nonobviousness.
We agree with the Examiner’s criticisms of this evidence (id. at 18-19), and
emphasize that, although secondary considerations such as unexpected results must
be taken into account, they do not necessarily control the obviousness conclusion.
See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir.
2009) (“[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness”); Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007).
CONCLUSION
We AFFIRM the rejection of claims 1-3, 5, 6, and 8-13 under 35 U.S.C.
§ 103(a) as unpatentable over Suzuki in view of Kohsaka alone, or further in view
of Lo. Because we recognize our conclusion is based on facts and reasons which
differ substantially from those advanced by the Examiner, we denominate the
affirmed rejection as a NEW GROUNDS OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Suzuki in view of Kohsaka alone, or further in view of Lo.
Appeal 2012-001423
Application 12/387,134

7
Claim 4 requires hot rolling following hot isostatically pressing. The applied prior
art does not disclose or suggest hot rolling following a HIP treatment.
We REVERSE the rejection of claims 1-4 and 8-12 under 35 U.S.C.
§ 103(a) as unpatentable over Lo in view of Kohsaka. Lo discloses a HIP
treatment but does not disclose or suggest a hot pressing step. The Examiner’s
rejection over Lo in view of Kohsaka is based on a finding that Kohsaka discloses
or suggests hot rolling following a HIP treatment. The evidence of record does not
support this finding.
37 C.F.R. § 41.50(b) provides that an appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of the
appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record. . . .

AFFIRMED-IN-PART;
37 C.F.R. § 41.50(b)

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