Ex Parte Perrot et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10657085 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RENE PERROT, THOMAS J. HUNT,
HOLGER J. KOENIGSMANN, and PAUL S. GILMAN
____________

Appeal 2009-007469
Application 10/657,085
Technology Center 1700
____________

Decided: March 24, 2010
____________

Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-6, 8-12, and 14-17. We have jurisdiction under 35
U.S.C. § 6(b).

Appeal 2009-007469
Application 10/657,085

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A method of manufacturing a sputter target assembly
comprising the steps of:
a) manufacturing a backing plate, the backing plate having a
planar top surface and a cylindrical recess therein, the recess having a depth
and a diameter, and the backing plate having a yield strength:
b) manufacturing a near final shape target insert, wherein
the target insert has a frusta-conical rear surface that corresponds to the
cylindrical recess of the backing plate and a frusta-conically configured front
surface, wherein at least about fifty percent of the front surface is frusta-
conically configured, the target insert further having a yield strength greater
than that of the backing plate, and a height greater than the depth of the
cylindrical recess in the backing plate; and
c) hot pressing the target insert into the cylindrical recess of
the backing plate to a state of plastic deformation so as to diffusion bond the
target insert to the backing plate and form the target assembly, where the
target insert protrudes above the planar front surface of the backing plate.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hunt US 6,599,405 B2 Jul. 29, 2003
Hunt US 5,674,367 Oct. 7, 1997
Bilz1 DD 150,482 Sep. 2, 1981

REJECTION(S)
1. Claims 1-6, 8-12 and 14-17 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, and
the Amendment to the Specification filed on April 12, 2006, which amended

1 We use the English Abstract of record.
2
Appeal 2009-007469
Application 10/657,085

paragraph [0026] to include “wherein at least about fifty percent of the front
surface is frusta-conically configured”, is objected to as being new matter.
2. Claims 1-6, 8-12 and 14-17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hunt ‘405 in view of Hunt ‘367 and Bilz.
ISSUE
1. Have Appellants identified error in the Examiner’s determination that
(1) the aspect of the claims pertaining to “wherein at least about fifty percent
of the front surface is frusta-conically configured” fails to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph, and
(2) the Amendment to the Specification filed on April 12, 2006 which
amended paragraph [0026] to include “wherein at least about fifty percent of
the front surface is frusta-conically configured” is new matter?
We answer this question in the affirmative.

2. Have Appellants identified error in the Examiner’s determination that
Hunt ‘405 in view of Hunt ‘367 and Bilz would have suggested the claimed
subject matter as set forth in Appellants’ claim 1?
We answer this question in the negative.

FINDINGS OF FACT
Original claim 14 recites that the target insert has a “frusta-conical
shaped front surface and a frusta-conical shaped rear surface, the rear
surface having at least about sixty percent of its surface area conical-
shaped”. Paragraph [0011] of the Specification, as originally filed, also
discloses that the target insert has a frusta-conical shaped front surface, and a
3
Appeal 2009-007469
Application 10/657,085

frusta-conical shaped rear surface, the rear surface having at least about sixty
percent of its surface area conical-shaped. Paragraph [0010] of the original
Specification and original claim 9 disclose a “rear surface having at least
about fifty percent of its surface are conical-shaped”.
The Examiner states that “it appears from Fig. 4 that the majority of
the surface of target is frusta-conical . . .” Ans. 8.
Figure 4 shows front surface 44 having the same shape as rear surface
46.
Appellants do not dispute the Examiner’s findings regarding Hunt
‘405, and we refer to the Examiner’s findings made on pages 5-7 of the
Answer.
Hunt '367 teaches a circular target. Hunt’ 367, col. 3 ll. 4-6. The target
front surface extends above the target backing plate. Hunt ‘367, Figure 7.
Hunt ‘367 teaches this allows for thicker targets. Hunt ‘367, col. 2, ll. 6-8.
Bilz teaches a target front surface where the target front surface is
frusta-conical to obtain a uniform coating. Bilz, Abstract, Figure 1. Bilz
shows a target front surface which has at least 50% of the front surface
frusta conically configured. Bilz, Figure 1.
PRINCIPLES OF LAW
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. The content
of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
4
Appeal 2009-007469
Application 10/657,085

In responding to a prima facie case of obviousness, one cannot show
non-obviousness by attacking references individually where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
In an obviousness rejection, the combination of references must be
considered as a whole, rather than the specific teaching of each reference. In
re Simon, 461 F.2d 1387, 1390 (CCPA 1972); In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971).
Applicant’s motivation does not control the obviousness analysis;
rather, “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007).
ANALYSIS
1. The 35 U.S.C. § 112, first paragraph, Rejection and the Objection to
the Amendment the Specification filed on April 12, 2006
The Examiner’s position is that the claimed phrase “wherein at least
about fifty percent of the front surface is frusta-conically configured” is not
supported by Appellants’ original disclosure. Ans. 4. For the same reasons,
the Examiner has objected to the Amendment the Specification filed on
April 12, 2006, which amended paragraph [0026] to include “wherein at
least about fifty percent of the front surface is frusta-conically configured”
as being new matter.
5
Appeal 2009-007469
Application 10/657,085

Appellants argue that Figure 4 of their Specification provides support
for a target wherein at least about fifty percent of the front surface is frusta-
conically configured. Reply Br. 3.
In response, the Examiner states that “it appears from Fig. 4 that the
majority of the surface of target is frusto-conical but the range of how much
is not supported by the specification or the drawings”. The Examiner
contends that proportions of features in a drawing are not evidence of factual
proportions when drawings are not to scale. Ans. 8-9.
We agree with Appellants that Figure 4 supports the phrase “wherein
at least about fifty percent of the front surface is frusta-conically configured”
when the drawings and Specification are considered as a whole, for the
following reasons.
As pointed out by Appellants on page 3 of the Reply Brief, the
Examiner admits that “it appears from Fig. 4 that the majority of the surface
of target is frusto-conical”. Furthermore, original claim 14 recites that the
target insert has a “frusta-conical shaped front surface and a frusta-conical
shaped rear surface, the rear surface having at least about sixty percent of its
surface area conical-shaped”. Paragraph [0011] of the Specification, as
originally filed, also discloses that the target insert has a frusta-conical
shaped front surface, and a frusta-conical shaped rear surface, the rear
surface having at least about sixty percent of its surface area conical-shaped.
Paragraph [0010] of the original Specification and original claim 9 disclose a
“rear surface having at least about fifty percent of its surface are conical-
shaped”. This disclosure, coupled with Figure 4 (depicted below) showing
6
Appeal 2009-007469
Application 10/657,085

front surface 44 having the same shape as rear surface 46 supports the phrase
“wherein at least about fifty percent of the front surface is frusta-conically
configured”. Kaslow, 707 F.2d at 1375.

Figure 4 is reproduced below:

In view of the above, we reverse the rejection of claims 1-6, 8-12 and
14-17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and we reverse the objection to the
Amendment to the Specification filed on April 12, 2006.
2. Obviousness Rejection
We select claim 1 for consideration in this appeal, based upon
Appellants’ arguments. 37 C.F.R. § 41.37(c)(1)(vii)(2007).
7
Appeal 2009-007469
Application 10/657,085

Appellants do not dispute the Examiner’s findings regarding Hunt
‘405. Br. 10. We refer to the Examiner’s findings in this regard made on
pages 5-7 of the Answer.
The Examiner states that the differences between Hunt '405 and
Appellants’ claims are that (1) the target insert protruding above the planar
front surface of the backing plate is not discussed, (2) the front surface of the
target has a frusta-conical configuration is not discussed, and (3) wherein at
least about fifty percent of the front surface is frusta-conically configured is
not discussed.
Regarding the target insert protruding above the planar front surface
of the backing plate, the Examiner relies upon Hunt '367 for teaching a
circular target. Hunt’ 367, col. 3 ll. 4-6. The target front surface extends
above the target backing plate. Hunt ‘367, Figure 7. Ans. 7.
Regarding the front surface of the target having a frusta-conical
configuration, the Examiner finds that Hunt ‘405 teaches that the target front
surface can be frusta-conical. Hunt ‘405, Figure 7. The Examiner also finds
that Bilz teaches a target front surface where the target front surface is
frusta-conical to obtain a uniform coating. Bilz, Abstract; Figure 1. Ans. 7.
The Examiner explains that the motivation for utilizing a target that is frusta-
conical and that extends above the surface of the backing plate is that it
allows for utilizing thicker targets. Hunt ‘367, col. 2 , ll. 6-8. Ans. 7.
Regarding wherein at least about fifty percent of the front surface is
frusta-conically configured, the Examiner relies upon Bilz for teaching a
target front surface which has at least 50% of the front surface frusta-
conically configured. Bilz, Fig. 1.
8
Appeal 2009-007469
Application 10/657,085

Appellants argue that while Hunt '367 discloses that side wall 37 of
target 38 is tapered, it is designed to increase the integrity of the target rather
than extend the life of the target.2
Appellants argue that in Hunt '367, it is not the sputtering surface 40
which is tapered, but the side wall 37. Appellants argue that this differs from
their claimed invention wherein material is added to the front surface of the
target, rather than tapering the side walls. Appellants argue that the material
is added in a frusta-conical configuration to the front surface of the target,
over at least about fifty percent of the front surface of target, so as to extend
the target life. Appellants argue that these features are not suggested by Hunt
'367.
We are not convinced by these arguments because the Examiner does
not rely upon Hunt ‘367 for these argued features. In re Merck & Co., Inc.,
800 F.2d at 1097; In re Keller, 642 F.2d at 426 ; In re Simon, 461 F.2d at
1390; In re McLaughlin, 443 F.2d at 1395 (CCPA 1971). The Examiner
relies upon Hunt ‘367 for teaching a target front surface that extends above
the target backing plate as shown in Figure 7.
Appellants then argue that Bilz does not concern the manufacturing of
a sputter assembly, wherein the target is affixed into a backing plate, and
that Bilz does not disclose the claimed process of hot pressing a target insert
into the backing plate to a state of plastic deformation so as to diffusion
bond these elements. Appellants also argue that Bilz does not concern the

2 The reason for the taper does not have to be the same for the teaching to
be applicable. KSR, 550 U.S. at 420 (2007).

9
Appeal 2009-007469
Application 10/657,085

thickness of the target assembly, but rather the uniformity of the film applied
on the substrate. Br. 11.
Again, we are not convinced by these arguments because the
Examiner does not rely upon Bilz for any of these argued features, as
explained by the Examiner on pages 9-10 of the Answer. Id. The Examiner
relies upon Bilz for teaching at least about fifty percent of the front surface
is frusta-conically configured as shown in Figure 1. The Examiner explains
that the motivation for incorporating this feature into the combination of
Hunt ‘367 in view of Hunt ‘405 is to deposit coatings uniformly. Ans. 8.
Also, Bilz does not have to be concerned with the thickness of the target
assembly, as argued by Appellants. KSR, 550 U.S. at 420 (2007). Also, as
explained by the Examiner on page 9-10 of the Answer, Hunt '405 and Hunt
‘367 address thickness for a target in a backing plate.
CONCLUSIONS OF LAW
1. Appellants have identified error in the Examiner’s determination that
(1) the aspect of the claims pertaining to “wherein at least about fifty percent
of the front surface is frusta-conically configured” fails to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph, and
(2) the Amendment to the Specification filed on April 12, 2006 which
amended paragraph [0026] to include “wherein at least about fifty percent of
the front surface is frusta-conically configured” is new matter.
2. Appellants have not identified error in the Examiner’s determination
that Hunt ‘405 in view of Hunt ‘367 and Bilz suggest the claimed subject
matter as set forth in Appellants’ claim 1.

10
Appeal 2009-007469
Application 10/657,085

DECISION
1. The rejection of claims 1-6, 8-12 and 14-17 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is reversed, and the objection to the Amendment to the Specification filed on
April 12, 2006 is reversed.
2. The rejection of claims 1-6, 8-12 and 14-17 under 35 U.S.C. § 103(a)
as being unpatentable over Hunt ‘405 in view of Hunt ‘367 and Bilz 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)(1)(v).
AFFIRMED

tc

PRAXAIR, INC.
LAW DEPARTMENT - M1 557
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113
11