Ex Parte Weigert et alDownload PDFBoard of Patent Appeals and InterferencesOct 25, 201011012982 (B.P.A.I. Oct. 25, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/012,982 12/15/2004 Martin Weigert P/4308-31 7465 81900 7590 10/26/2010 Klaus P. Stoffel 475 Park Avenue South 15th Floor New York, NY 10016 EXAMINER KERNS, KEVIN P ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 10/26/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARTIN WEIGERT, JOSEF HEINDEL and UWE KONIETZKA ____________ Appeal 2009-007663 Application 11/012,982 Technology Center 1700 ____________ Before SALLY G. LANE, MICHAEL P. TIERNEY, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007663 Application 11/012,982 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-5. (Appeal Brief 4 (filed December 26, 2007) [hereinafter App. Br.]; Reply Brief 2 (filed June 4, 2008) [hereinafter Rep. Br.].) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants describe a process for producing a hollow tubular sputtering target. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A process for producing a hollow tubular sputtering target from a silicon-based alloy with an Al content of 5-50 wt.%, comprising the steps of: inserting a casting core in a hollow cylindrical casting mold; melting the alloy; and vacuum-casting the alloy in the hollow cylindrical casting mold to produce tubular sections.[] THE REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Aoyama JP 4-184732 July 1, 1992 (English Translation of Record) Schlott EP 1 186 682 March 13, 2002 (English Translation of Record) Weigert US 6,581,669 B2 June 24, 2003 Heck US 6,719,034 B2 April 13, 2004 Appeal 2009-007663 Application 11/012,982 3 The Examiner rejected claims 1, 2, and 5 under 35 U.S.C. § 103(a) as being obvious over Aoyama in view of Schlott or Heck; and entered new grounds of rejection in the Examiner’s Answer rejecting claims 1, 2, and 5 over Schlott or Heck in view of Aoyama. (Examiner’s Answer entered March 31, 2008, hereinafter “Ans.,” 4-6, 8-11.) The Examiner rejected claims 3 and 4 over the above combinations further in view of Weigert. (Ans. 7-8, 11-13.) ISSUE Would a process for producing a hollow tubular sputtering target from a silicon-based alloy having an aluminum content of 5 to 50 weight percent as recited in claim 1 have been obvious over Aoyama and Schlott or Heck? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and Final Office Action as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. We add the following factual findings (FF) supported by the record by a preponderance of the evidence: 1. Schlott discloses producing a hollow tubular sputtering target and discloses: “[a]lthough therefore metals and alloys with a melting point less than 420ºC, such as tin for example, are preferred, the process as claimed in the invention can likewise be used for target materials with higher melting points.” (Para. [0012].) 2. Schlott discloses that controlled solidification of the target material is advantageous “in order to achieve a favorable stress distribution over the length of the cylindrical target material.” (Para. [0019].) Appeal 2009-007663 Application 11/012,982 4 PRINCIPLES OF LAW “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’l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Supreme Court further explained, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. ANALYSIS Appellants state that claims 3 and 4 stand or fall with independent claim 1. (App. Br. 9; Rep. Br. 9.) Accordingly, we confine our discussion to appealed claim 1, which contains claim limitations representative of the arguments made by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii), and our comments regarding claim 1 apply equally to the Examiner’s rejections of claims 3 and 4.2 Appellants do not dispute the Examiner’s findings regarding Aoyama, Heck, and Schlott. (App. Br. 7; Rep. Br. 7.) Appellants also do not specifically address the Examiner’s reasons for combining the references articulated in the Examiner’s Answer. (Ans. 6, 9, and 11.) Rather, 2 Only those arguments actually made by Appellants have been considered in this decision. Arguments which Appellants could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appeal 2009-007663 Application 11/012,982 5 Appellants contend that one of ordinary skill in the art would not have used the silicon/aluminum alloy disclosed in Aoyama in casting a tubular body as described in Heck and Schlott due to the increased risk of cracking of the higher melting, more brittle Si/Al alloy disclosed in Aoyama versus the lower melting, softer casting materials disclosed in Heck and Schlott. (App. Br. 7-8; Rep. Br. 6-7.) We are not persuaded by Appellants’ argument. Schlott specifically discloses that the target materials with higher melting points may be used in preparing hollow tubular sputtering targets. (FF 1.) In addition, Appellants have not disputed the Examiner’s position that cracking may be prevented by the controlled cooling of the casting mold disclosed in Schlott and Heck. (Ans. 15-16.) Indeed, Schlott specifically discloses that the stress distribution throughout the tubular target may be controlled by cooling. (FF 2.) Moreover, Appellants have not provided any persuasive evidence that one of ordinary skill in the art would have expected the Si/Al alloys disclosed in Aoyama to be unsuitable. (Ans. 16.) Accordingly, we affirm all of the Examiner’s rejections of claims 1-5. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (holding that when a rejection is based on a combination of references, the order in which prior art references are cited to the Applicant is of no significance, but merely a matter of exposition). CONCLUSION The Examiner correctly determined that a process for producing a hollow tubular sputtering target from a silicon-based alloy having the aluminum content recited in the claims would have been obvious over Aoyama and Schlott or Heck. Appeal 2009-007663 Application 11/012,982 6 ORDER We affirm the Examiner’s decision rejecting claims 1-5 under 35 U.S.C. § 103(a). 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 KMF Klaus P. Stoffel 475 Park Avenue South, 15th Floor New York, NY 10016 Copy with citationCopy as parenthetical citation