Ex Parte Weigert et al

Board of Patent Appeals and Interferences

Oct 25, 2010

11012982 (B.P.A.I. Oct. 25, 2010)

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