Ex Parte Takahashi et alDownload PDFPatent Trials and Appeals BoardMay 23, 201913521148 - (D) (P.T.A.B. May. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/521,148 07/09/2012 Hideyuki Takahashi 270 7590 05/28/2019 HOWSON & HOWSON LLP 350 Sentry Parkway Building 620, Suite 210 Blue Bell, PA 19422 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. OGOSH215USA 8629 EXAMINER BRAYTON, JOHN JOSEPH ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 05/28/2019 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): docketing@howsoniplaw.com ckodroff@howsoniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIDE YUKI TAKAHASHI and YOSHIMASA KOIDO Appeal2018-006551 Application 13/521,148 Technology Center 1700 Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-006551 Application 13/521,148 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1---6 and 9-11. Claims 7-8 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a Sb-Te-based alloy sintered compact sputtering target. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An Sb-Te-based alloy sintered compact sputtering target having a composition containing Sb and Te as main constituent elements thereof and carbon or boron in an amount of 0.1 to 30at%, having a relative density of 97 .85% or more, and having a structure comprising particles of an Sb-Te-based alloy phase and a dispersion of fine grains of the carbon or boron, the structure being formed by sintering a uniform mixture of a powder of the Sb-Te based alloy and a powder of the carbon or boron, wherein the particles of the Sb-Te-based alloy phase have an average size of 3 µm or less and a standard deviation of less than 1.00, the fine grains of the carbon or boron have an average size of 0.5 µm or less and a standard deviation of less than 0.20, and, for the average size of the particles of the Sb-Te-based alloy phase expressed by X and the average size of the fine grains of the carbon or boron expressed by Y, a ratio, Y/X, is within a range of 0.155 or more to 0.5 or less. Claims Appendix (Br. 31 ). 1 The real party in interest is identified as "JX Nippon Mining & Metals Corporation." Appeal Brief of November 6, 2017 ("Br."), 2. 2 Final Office Action of June 6, 2017 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of March 27, 2018 ("Ans."). No Reply Brief was filed. 2 Appeal2018-006551 Application 13/521,148 REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Yadav Nonaka Khang Yahagi Hashimoto US 2003/0207112 Al US 2005/0031484 Al US 2009/0014318 Al US 2009/0301872 Al JP 2001-098366 A REJECTIONS Nov. 6, 2003 Feb. 10,2005 Jan. 15,2009 Dec. 10, 2009 April 2001 Claims 1---6 and 11 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Yahaqi in view of Yadav and Hashimoto. Final Act. 3. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Yahaqi, Yadav, Hashimoto, and Nonaka. Final Act. 9. Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Yahaqi, Y adav, Hashimoto, and Khang. Final Act. 10. OPINION Rejection of Claim l3 Yahagi describes a Sb-Te based alloy having carbon or boron from "0.1 to 10 at%" and further states that "if the additive content exceeds 10 at%, this is undesirable since the resistance will increase and it will cause the function of the phase change recording layer to deteriorate." Yahagi ,r 35. 3 Because Appellants do not argue the rejection of claims 2, 3, 5, and 11 separately, they stand or fall with claim 1. Br. 13-22; see also 37 C.F.R. § 4I.37(c)(l)(iv). 3 Appeal2018-006551 Application 13/521,148 Because the prior art range overlaps with that of the recited "carbon or boron in an amount of 0.1 to 30at%," we agree with the Examiner that a prima facie case of obviousness has been established. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art."); see Final Act. 3. Appellants argue that Yahagi teaches away from the recited "0.1 to 30 at%" by describing certain undesirable results when the carbon or boron content exceeds 10 at%. Br. 5, 13. Because the recited range of 0.1 to 30 at% includes a carbon or boron content that is below 10 at%, Appellants' argument is not commensurate in scope with the claim limitation at issue and we are accordingly not persuaded that reversible error has been identified. Y ahagi describes that the generation of arcing and particles in a Sb-Te based alloy may be more effectively inhibited when the ratio of Y /X of the alloy is between 1/10 and 1/10000 than if the Y/X ratio exceeds 1/10. Yahagi ,r,r 30, 31. Based on this teaching, Appellants argue that a skilled artisan would not have found obvious a Y /X ratio that is "within a range of 0.155 or more to 0.5 or less," as recited in claim 1. Br. 5, 8. "Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention. A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination." Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted). "Under 35 U.S.C. § 103, a reference must be considered not only for what it expressly teaches, but also for what it fairly suggests." In re Lamberti, 545 4 Appeal2018-006551 Application 13/521,148 F.2d 747 (CCPA 1976). "[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered in determining obviousness." In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). In this case, the Examiner undisputedly finds that a Y/X ratio exceeding 0.1 is considered in Yahagi - albeit not a preferred embodiment. Compare Ans. 4, with Br. 5, 8, 13-15. The Examiner also finds that the Y/X ratio is a result effective variable (Final Act. 4) and the "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276 (CCPA 1980). We are not persuaded that Appellants has identified reversible error in the Examiner's findings because the arguments are not supported by the record. For example, contrary to Appellants' argument that Yahagi shows that arcing generation cannot be inhibited when the Y /X ratio exceeds 1/10 and thus teaches away from the recited limitation (Br. 8, 9, 13-15), Y ahagi merely states that "the effect of inhibiting the generation of arcing and particles is low" when the Y /X ratio exceeds 1/10 (Yahagi ,r 31 ). Y ahagi also describes that "the average crystal grain size of the Sb-Te base alloy particles is 500 µm, preferably 100 µm or less, and more preferably 50 µm or less." Y ahagi ,r 31. Appellants' argument that Y ahagi does not teach or suggest "an average size of 3 µm or less" as recited is not persuasive because "the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious" and Appellants have not carried this burden. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). More specifically, Appellants' arguments are directed to whether a skilled artisan would have reasonably interpreted Yahagi's teaching of 50 µm or less to encompass the recited 5 Appeal2018-006551 Application 13/521,148 range (Br. 7, 16-18) but not directed to "the existence of unexpected properties in the range claimed" or whether "the art in any material respect taught away from the claimed invention." In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997) (internal citations omitted) (holding that a prima facie obviousness case may be rebutted if an applicant can establish these two factors with evidence). The Examiner's finding here that Yahagi teaches a particle size of 50 µm or less which encompasses the recited size is supported by the record. Final Act. 3; Ans. 4--5. Appellants also argue that the prior art does not teach or suggest "a uniform mixture of a powder of the Sb-Te based alloy and a powder of the carbon or boron" as recited. Appellants cites FIG. 1 ofYahagi as sole evidence showing that the prior art mixture is not uniformly distributed. Br. 5. As the Examiner points out, claim 1 does not specify any condition or parameter under which the uniformity of the mixture is assessed. Ans. 3. Moreover, FIG. 1 ofYahagi is an SEM photograph at a particular magnification of a sinter sputtering target whereas claim 1 does not limit the "uniform mixture" to be one that is observed based on an SEM photograph at the particular magnification. Appellants' argument is not commensurate in scope with the claim language and does identify reversible error in the Examiner's findings here. With regard to the particles having a "standard deviation of less than 1.00" and carbon or boron having a "standard deviation of less than 0.20," the Examiner finds that Y ahagi teaches the standard deviations as a result effective variable. Final Act. 5 ( citing Yahagi ,r 32). The Examiner further finds that Y adav describes a similar compound with the recited standard deviations. Id. at 5---6. 6 Appeal2018-006551 Application 13/521,148 Appellants argue, on the other hand, that FIG. 1 ofYahagi shows grain sizes ranging from several µm to several 10 µm failing to meet the recited standard deviation. Br. 10. Because Appellants do not explain how FIG. 1 ofYahagi exhibits these sizes and the argument is not supported by citation to the texts of Y ahagi or other factual evidence, we are unpersuaded by Appellants' attorney argument. We further note that Appellants have not adequately explained what the standard deviation of the prior art particles is based on these particle sizes. Appellants also disagree with the Examiner as to whether paragraph 32 of Yahagi describes the recited standard deviations as result effective variables. Br. 10. Even if, for the sake of argument, we agree with Appellants' position, "the discovery of a previously unappreciated property of a prior art composition, ... does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). In this case, the Examiner has established that Yahagi describes a Sb-Te based alloy having the recited compositions. Final Act. 5. The Examiner also finds that Yadav describes a Sb-Te based alloy with the recited standard deviations. Id. at 6. The evidence therefore establishes that the recited composition having the standard deviations is known in the art. Id. at 5-6. Appellants' argument that the alloy in Y adav is produced by an emulsion combustion method which differs from that used in Y ahagi and the application at issue (Br. 10-11, 19-21) does not identify reversible error in the Examiner's finding of the compositional identities. With regard to the recited "relative density of 97 .85% or more," Appellants argue that the Examiner reversibly erred in finding that Hashimoto describes such a relative density in a compound that lacks carbon 7 Appeal2018-006551 Application 13/521,148 or boron. Br. 11, 21-22. We again note that because the Examiner has shown that the recited composition is known in the art, "the discovery of a previously unappreciated property of a prior art composition, ... does not render the old composition patentably new to the discoverer." Atlas Powder Co., 190 F.3d at 1347. Based on the record before us, we are not persuaded that the Examiner reversible erred in rejecting claim 1. Rejection of Claims 4 & 6 Dependent claims 4 and 6 recite a common limitation "having an average deflective strength of 100 MPa or higher." Appellants argue that the Examiner reversibly erred in finding that Y ahagi teaches or suggests this limitation because Y ahagi uses a different method to produce the compound at issue. Br. 23. Appellants argue that the different production methods would affect whether the resulting product is in the form of an "extremely fine powder." Id. As the Examiner points out, claim 1 recites various compositions of an alloy which are known in the art. Ans. 12. Appellants do not argue that the particular production method affects the recited property. To the extent that the recited average deflective strength is not explicitly described in the prior art, "the discovery of a previously unappreciated property of a prior art composition, ... does not render the old composition patentably new to the discoverer." Atlas Powder Co., 190 F.3d at 1347. Moreover, because of the PTO's inability to manufacture products or to obtain and compare prior art products, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of a claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have not shown that 8 Appeal2018-006551 Application 13/521,148 the Examiner reversibly erred in finding that a skilled artisan would have found the recited property obvious based on the compositional identities. Rejection of Claim 9 over Yahaqi, Yadav, Hashimoto, and Nonaka Dependent claim 9 recites "wherein the amount of carbon or boron contained in the target is 15 to 30 at%." The Examiner finds that Nonaka teaches or suggests this limitation. Final Act. 9 (citing Nonaka 7, Table 5); Ans. 12. Appellants argue that both Yahagi and Nonaka teach away from the recited 15 to 30 at%. Br. 26. "Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention. A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination." Syntex (U.S.A.) LLC, 407 F.3d at 1380 (citations omitted). Based on the disclosures ofYahagi and Nonaka, a skilled artisan would have understood to apply these ranges with the corresponding effects. See Nokana ,r 30 ("[I]fthe [carbon or boron] content exceeds 12 %, it is also not preferable .... ") (cited in Br. 26); see also Yahagi ,r 35 ("[I]fthe additive content exceeds 10 at%, this is undesirable since the resistance will increase and it will cause the function of the phase change recording layer to deteriorate."). Rejection of Claims 9 & 10 over Yahaqi, Yadav, Hashimoto, and Khang Dependent claim 9 recites "wherein the amount of carbon or boron contained in the target is 15 to 30 at%." Dependent claim 10 recites "wherein the composition contains carbon in an amount of 15 to 30 at%." Appellants do not dispute the Examiner's finding with regard to Khang. Compare Br. 27-29, with Final Act. 10 (citing Khang ,r,r 9, 28). 9 Appeal2018-006551 Application 13/521,148 Appellants, however, argue that whereas Y ahagi requires fine carbon powder particles, Khang' s teachings are directed to fullerene and thus a skilled artisan would not have found it obvious to modify Y ahagi with Khang. Br. 28. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious," the answer depends on "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. at 417. In this case, the Examiner finds that a skilled artisan would have found claims 9 and 10 obvious based on the combined teaching "because it would produce a phase change layer by sputtering with increase uniformity and relatively high phase change characteristics." Final Act. 10 ( citing Khang ,r 30). Appellants do not address this rationale and the underlying fact findings. Thus, we are unpersuaded that Appellants' identified reversible error. DECISION The Examiner's decision 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). See 37 C.F.R. § 1.136(a)(l )(iv). 10 Appeal2018-006551 Application 13/521,148 AFFIRMED 11 Copy with citationCopy as parenthetical citation