Ex Parte Ramm

Patent Trial and Appeal Board

May 26, 2016

12428699 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/428,699 0412312009 Jurgen Ramm
86378 7590 05/31/2016
Pearne & Gordon LLP
1801East9th Street
Suite 1200
Cleveland, OH 44114-3108
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NOSP-43701US1 9456
EXAMINER
ABRAHAM, IBRAHIME A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN RAMM
Appeal2014-004084
Application 12/428,699 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1--4, 6, 14 and 15.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm.
1 According to the Appeal Brief, the Real Party in Interest is Oerlikon
Trading AG, Truebbach. App. Br. 3.
2 According to the Examiner, pending claims 7-13 and 16 have been
withdrawn from consideration. Ans. 2.
Appeal2014-004084
Application 12/428,699
BACKGROUND
Appellant's invention relates to a method for producing metal oxide
layers, by means of arc vaporization comprising at least two metallic and/or
semi-metallic components. (Spec. 1.) Claim 1 is reproduced below from the
Claims Appendix to the principal Brief:
1. Method for producing layers, by means of arc vaporization
comprising a ternary and/or higher oxide of metallic and semi-
metallic components, characterized in that a specific synthesis
of a desired crystal structure of the layer is achieved by
determining a formation temperature that is necessary for the
synthesis of the desired crystal structure and based upon the
phase diagram choosing a composition of the alloy targets in
such a way that the phase diagram of the components with the
chosen composition exhibits a transition from a completely
liquid phase into a phase comprising solid components, the a
temperature at such transition determining the formation
temperature at which the oxide is deposited on a substrate, and
depositing the oxide on the substrate with such chosen alloy
target,
characterized in that the layer has a proportion of more
than 70 at% aluminum oxide in corundum structure by using at
least one alloy target consisting of aluminum and at least one
further metallic or semi-metallic component, wherein the target
has one of the following compositions in at%:
Au: 20 to 30
B: smaller 3
Be: 20 to 30
C: smaller 3
Cr: greater 10 to 25
Fe: 5 to 15
Hf: 5 to 10
Ir: 10 to 15
La: 10 to 15
2
Appeal2014-004084
Application 12/428,699
Mo: 2 to 5
Nb: 1to3
Ta: 1 to 3
Ti: 2 to 6
V: 3 to 8
W: 5 to 8
Y: 12 to 16
Zr: 2 to 4
the rest being essentially Al, however not less than 70.
The Examiner maintains3, and Appellant appeals, the rejection of
claims 1--4, 6, 14, and 15 under 35 U.S.C. 103(a) as obvious over Brandle et
al. (US 6,602,390 Bl) in view of Morikawa et al. (US 2004/0121147 Al) as
evidenced by Okamoto (JPEDAV (2008) 29:112-113).
OPINION4
For the reasons set forth below, we affirm the rejection of claims 1--4,
6, 14, and 15. The rejection on appeal appears in the Final Action and the
Answer. (Final Act. 3-8; Ans. 2-7).
The Examiner found Brandle teaches a cathodic arc evaporation
apparatus and method of using the apparatus employing an alloy target of
3 According to the Examiner, the obviousness-type double patenting
rejection, the 35 U.S.C. § 112 1st paragraph rejection and the 35 U.S.C. §
112 2nd paragraph rejection have been withdrawn. Final Act. 2.
4 Appellant presents arguments directed only to independent claim 1. See
Appeal Brief, generally. We limit our discussion to independent claim 1.
3
Appeal2014-004084
Application 12/428,699
aluminum and chromium to form a metal alloy oxide layer of (Al, Cr)203 on
a workpiece. (Final Act. 3; Ans. 3; Brandle cols. 3-5) Brandle does not
explicitly teach that the layer is deposited to have a specific synthesis of a
desired crystal structure corresponding to a formation/substrate temperature.
The Examiner found Morikawa teaches depositing a tertiary oxide film of
(Al, Cr)203 to have a corundum crystal structure. (Morikawa i-fi-f 12-15)
Morikawa teaches the objects having a hard film of alumina layer with
corundum crystal structure formed thereon have excellent heat resistance
and wear resistance. (Morikawa i-f 18). The Examiner found Okamato
discloses a phase diagram for an aluminum and chromium alloy containing
10-20 wt% chromium. (Final Act. 4; Ans. 4; Okamato Fig. 1). The
Examiner determined that the combination of Brandle, Morikawa, and
Okamato would have rendered obvious a method of cathodic arc evaporation
of an alloy target of aluminum and chromium to form objects having a hard
film of alumina layer with corundum crystal structure. (Final Act. 4; Ans.
4).
Appellant argues the combination of Brandle, Morikawa, and
Okamoto does not disclose, teach or render foreseeable the method for
"specific synthesis of a desired crystal structure of the layer is achieved by
determining a formation temperature that is necessary for the synthesis of
the desired crystal structure" as required by claim 1. Appellant further
argues that those references, either alone or in combination do not teach,
"based upon the phase diagram[,] choosing a composition of the alloy
targets in such a way that the phase diagram of the components with the
4
Appeal2014-004084
Application 12/428,699
chosen composition exhibits a transition from a completely liquid phase into
a phase comprising solid components." (App. Br. 8-9).
Appellant's arguments are not persuasive of reversible error.
Appellant has not disputed that it would have been obvious to combine
Brandle, Morikawa, and Okamoto as suggested by the Examiner.
Appellants have not disputed that Morikawa describes conditions, including
temperature, necessary for depositing a tertiary oxide film of (Al, Cr)203 to
have a corundum crystal structure having a hard film of alumina layer with
corundum crystal structure from an aluminum chromium alloy. (App. Br. 8)
Appellant has not disputed that a person of ordinary skill in the art would
have been capable of utilizing arc vaporization techniques on the alloy target
described by Brandle to form the layer having a hard film of alumina layer
with corundum crystal structure. 5 (App. Br. 7). Appellant acknowledges
Okamoto discloses the phase diagram for an aluminum chromium alloy.
(App. Br. 8). Phase diagrams, such as depicted by Okamoto, describe the
physical states of a substance under different conditions of temperature and
pressure. These diagrams include the description of the transition to liquid
state from solid state. As set forth above, Morikawa is concerned with the
selection of the optimum temperature necessary for achieving an alumina
layer with corundum crystal structure. Cf In re Boesch, 617 F.2d 272, 276
(CCP A 1980) ([D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art."); In re
5 Compare Specification 4: "the formation temperature of the oxides exerts
a considerably influence for instance on the crystal structure of the layers to
be formed with these oxides, a specific synthesis of desired crystal structure
by means of arc vaporization is hereby possible."
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Appeal2014-004084
Application 12/428,699
Aller, 220 F.2d 454, 456 (CCP A 1955) ("[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation."). A skilled
artisan would have sufficient skill to consult the appropriate reference
materials, including phase diagrams, to determine the optimum conditions,
including temperature for achieving an alumina layer with corundum crystal
structure. Appellant has not adequately explained why skilled artisan would
not have been capable of determining the optimum conditions, including
temperature for achieving an alumina layer with corundum crystal structure.
See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on
the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390
(CCP A 1969).
CONCLUSION
For the reasons presented by the Examiner and those presented above
we sustain the Examiner's obviousness rejection of claims 1--4, 6, 14, and
15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
6