Ex Parte Segal et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10614807 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VLADIMIR M. SEGAL, WUWEN YI, STEPHANE FERRASSE,
CHI TSE WU, SUSAN D. STROTHERS, FRANK A. ALFORD and
WILIAM B. WILLETT
____________

Appeal 2009-004511
Application 10/614,807
Technology Center 1700
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Decided: October 27, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2009-004511
Application 10/614,807

DECISION ON APPEAL
This is an appeal from the final rejection of claims 16, 19-39 and 110.
Claim 16 is illustrative:
16. A copper alloy sputtering target consisting essentially of :

less than or equal to about 99.99% copper, by weight;

at least one alloying element selected from the group consisting of Cd,
Ca, Au, Ag, Be, Li, Mg, Al, Pd, Hg, Ni, In, Zn, B, Ga, Mn, Sn, Ge,
W, Cr, O, Sb, Ir, P, As, Co, Te, Fe, S, Ti, Zr, Sc, Si, Pt, Nb, Re, Mo,
and Hf, a total amount of the at least one alloying element present in
the target being at least 100 ppm and less than 10% by weight; the
target having a hardness of at least 40 HB; and

an average grain size of less than 1 micron with a grain size
uniformity standard deviation throughout the target of less than or
equal to about 15% (I-sigma).

The Examiner relies upon the following references as evidence of
obviousness:
Perry 6,896,748 B2 May 24, 2005
Pavate 6,391,163 B1 May 21, 2002
Nagano 2001/0035238 A1 Nov. 1, 2001

Appellants’ claimed invention is directed to a copper alloy sputtering
target consisting essentially of no more than about 99.99% copper, by
weight, and at least one of 38 alloying elements. The alloy has a hardness of
at least 40 HB, and a grain size uniformity standard deviation throughout the
target of less that or equal to about 15%.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claim 16 and 19-28 over Pavate in view of Perry,
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Application 10/614,807

(b) claims 29, 30 and 32-37 over Perry,
(c) claims 31, 38 and 39 over Perry in view of Pavate, and
(d) claim 110 over Perry in view of Nagano and Pavate.
Appellants do not present an argument that is reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter would have been obvious to one of ordinary skill in the art within the
meaning of §103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s rejection for essentially those reasons expressed in
the Answer.
Appellants make no argument that the combined teachings of the
applied references would not have made the claimed invention obvious to
one of ordinary skill in the art under §103. Rather, the principal argument
advanced by appellants is as follows:
The Applicant respectfully considers Perry as a reference that is not
relevant to the case at hand, primarily because the Perry reference was
not filed prior to the effective filing date of the claims of the current
application, which was December 16, 1999. The parent application,
which is now US 6878250 filed on December 16, 1999, and one of the
priority applications, US Provisional Application 60/396544, which
was filed on June 16, 2002, both predate the filing date of the Perry
reference-July 18, 2002.
(App. Br. 8, first para.)
It is the Examiner’s position that the present claims on appeal are not
entitled to the filing date of the ‘250 patent and the provisional application
because they do not provide original written descriptive support within the
meaning of 35 U.S.C. § 112, first paragraph. In particular, the Examiner
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Appeal 2009-004511
Application 10/614,807

maintains that the ‘250 patent and the provisional application do not provide
descriptive support for the claimed hardness of at least 40 HB and grain size
uniformity standard deviation throughout the target of less than or equal to
about 15%, and all the 38 recited alloying elements.
It is well settled that an applicant, when faced with a written
description rejection under § 112, first paragraph, must respond by placing
on the record where, by column and line number in the specification or
supporting documents, the descriptive support for each disputed claim
limitation maybe found. See Hyatt v. Doll, 576 F.3d 1246, 1286 (Fed. Cir.
2009); In re Alton, 76 F.3d 1168, 11759 ( Fed. Cir. 1996). In the present
case appellants have not met their burden.
Appellants submit that support for the claimed alloying elements can
be found in the ‘250 patent at col. 4, ll. 42-44 which reads “[h]igh strength
monolithic targets may be fabricated from metal materials like pure
aluminum, copper, gold, platinum, nickel, titanium, and their alloys”.
However, this disclosure provides support for only 5 of the recited 38
alloying elements, and places no limitation on the amount of copper being
less than or equal to about 99.99%, by weight. Clearly, this relatively
narrow class of alloys does not describe the much more extensive class
presently claimed.
The Provisional Application cited by Appellants is even less availing
since it provides no disclosure of the claimed alloys and claims a monolithic
cooper target comprising at least about 99.9% copper. Also, we note that the
provisional application lists different inventors than the inventors of the
present application and has a filing date of July 16, 2002, not the date stated
by Appellants, June 16, 2002.
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Appeal 2009-004511
Application 10/614,807

Appellants also contend “[i]t is clear that if the ‘250 patent were not
the parent patent application to the current continuation-in-part application,
it would have been cited as a 103(a) reference for mentioning “alloying
elements and other elements” (App. Br. 15, last para.). However, it is by
now axiomatic that an applicant may not establish descriptive support for a
claim recitation by demonstrating its obviousness under § 103.
Concerning the claimed “grain sized uniformity standard deviation
throughout the target of less than or equal to about 15%”, Appellants cite the
‘250 patent at col. 5, ll.5-15, col. 10, ll. 40-46, and col.11, ll. 4-11. However,
the cited passages are totally devoid of any disclosure of a grain size
uniformity standard deviation, let alone a value that is less than or equal to
about 15%. We also find no support for this claim limitation in the
provisional application.
As for the claimed hardness of at least 40 HB, Appellants submit that
the claimed hardness is an inherent property based on the specific material
disclosed in the ‘250 patent (Rep. Br. 14, 3rd para.). However, Appellants
have not presented a compelling, substantive analysis, let alone objective
evidence, to establish the asserted inherency. Appellants’ arguments in the
Brief are no substitute for objective evidence. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims 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)(iv).

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Appeal 2009-004511
Application 10/614,807

AFFIRMED

tc

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