Ex Parte Yamamoto et al

Board of Patent Appeals and Interferences

Dec 16, 2010

90007824 (B.P.A.I. Dec. 16, 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.
90/007,824 11/28/2005 6033542 283161US0RX 9293
22850 7590 12/16/2010
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MCDONALD, RODNEY GLENN
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
12/16/2010 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 Kobelco Research Institute, Inc.,
Patent Owner and Appellant
____________

Appeal 2010-009563
Reexamination Control 90/007,824
Reissue Application 11/430,299
Patent 6,033,542
Technology Center 3900
____________

Before ROMULO H. DELMENDO, SALLY G. LANE, 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”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009563
Reexamination Control 90/007,824
Reissue Application 11/430,299
Patent 6,033,542

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Kobelco Research Institute, Inc., the owner of the patent under
reexamination (hereinafter the “‘542 Patent”), appeals under 35 U.S.C. §§
134(b) and 306 from a final rejection of claims 1-10 (Substitute Appeal
Brief filed December 23, 2009, hereinafter “App. Br.,” at 4; Final Office
Action mailed August 15, 2008).2 We have jurisdiction under 35 U.S.C. §§
134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Tosoh Corporation (Request for Ex Parte
Reexamination filed November 28, 2005). An application for reissue of the
‘542 Patent was filed on May 9, 2006 and assigned Application No.
11/430,299. The reexamination and reissue proceedings were merged on
October 10, 2006. (Decision Merging the Reexamination and the Reissue
mailed October 13, 2006.)
We heard Patent Owner’s oral arguments on November 17, 2010, a
written transcript of which will be entered into the record in due course.
The ‘542 Patent states that the invention includes an aluminum (Al)
alloy film deposited by sputtering using a target of Al alloy with rare earth
elements such as neodymium (Nd) in amounts of 0.05-15 atomic (at) %.
(Col. 4, ll. 13-20, col. 5, ll. 7-8, col. 8, ll. 1-5.)

2 See Patent Assignment Abstract of Title, Reel 013907, Frame 0953, which
was entered into the record of this proceeding as “Title Report” on
November 20, 2005.
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Claims 1 and 6 on appeal read as follows:
1. A sputtering target consisting of an alloy of Al and
0.05-15 at% Nd.
6. The sputtering target of claim 1, wherein said
sputtering target is produced by a method comprising:
-melting Al and Nd under vacuum;
-adjusting the content of Nd in an Al matrix to be in a
range of 0.05 to 15 at%; and
-allowing the alloy of Al and Nd to solidify.

(Claims App’x, App. Br. 20.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed March 17, 2010, hereinafter
“Ans.,” 2):
Tawara EP 0 531 808 March 17, 1993
Appellant relied on certain parts of the following (App. Br. 21)3:
Ex. A: Decl. of Professor Jeffrey T. Glass dated February 6,
2008; and
Ex. B: Decl. of Hiroshi Goto dated February 1, 2008.

The Examiner rejected claims 1-10 as follows:

3 Appellant also presents the Declaration of Eisuke Kusumoto dated
February 5, 2008 as evidence of commercial success. However, as the
Examiner points out, this declaration pertains to obviousness under 35
U.S.C. § 103(a), whereas the Examiner’s rejection of the claims over Tawara
is under 35 U.S.C. § 102(b). (Ans. 11.) Accordingly, even if we assume
that it is persuasive, we need not address the Kusumoto Declaration in this
decision because it is ineffective to rebut an anticipation rejection.
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I. Claims 1-10 under 35 U.S.C. § 251 as being based on a
defective reissue declaration (Ans. 3-5); and
II. Claims 1-10 under 35 U.S.C. § 102(b) as anticipated by Tawara
(Ans. 5-7).

ISSUES
Reissue Declaration
The Examiner stated the addition of dependent claims alone is not an
error correctable by reissue per Patent Office Policy. (Ans. 3-5.) In the
instant case, the Examiner stated that the scope of the patent is not alleged to
be deficient in whole or in part because independent claim 1 has not been
amended and would cover broader subject matter than added claims 6-10.
(Ans. 3.)
Appellant acknowledges that the Board’s recent decision in Ex parte
Tanaka, 93 USPQ2d 1291 (BPAI 2009) (Precedential) is dispositive of this
issue, but argues that because Tanaka is on appeal to the Court of Appeals
for the Federal Circuit, it is not binding on the instant case. (Reply Br. 14.)
Appellant argues that In re Handel, 312 F.2d 943 (CCPA 1963) and
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556 (Fed. Cir.
1989) provide support for Appellant’s position that reissue is a proper forum
for adding dependent claims 6-10. (App. Br. 17-18.)
35 U.S.C. § 102(b) Rejection
Regarding claim 1, the Examiner found that Tawara discloses a layer
formed from Al and a rare earth element alloy, where the rare earth element
is preferably neodymium in amounts of 0.05 to 10 at %. (Ans. 6.) The
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Examiner also found that Tawara discloses the reflecting layer may be
formed by sputtering using an alloy of Al and rare earth element. (Id.)
Regarding claim 6, the Examiner found that “the sputtering product is
suggested by Tawara regardless of how the product was produced.” (Id.)
Appellant argues that Tawara does not specifically disclose a
sputtering target consisting of an alloy of Al and Nd because as evidenced
by the Glass Declaration, Tawara discloses many alloy combinations such
that one of ordinary skill in the art would not readily envisage the recited
alloy. (App. Br. 5-7.) Appellant also argues that a reflective layer of a
binary alloy of Al and Nd may be formed by other methods besides an alloy
target. (App. Br. 7-8.) Appellant contends that the Glass Declaration
provides evidence that the alloy sputtering target produced by the method
recited in claim 6 imparts a different structure and different properties to the
resulting alloy. (App. Br. 11-13.) Specifically, Appellant contends that
when produced in a vacuum, alloys do not contain nitrided or oxidized
products, which would be present under other techniques for producing
alloys such as atmospheric melting methods. (App. Br. 13-14.)
Thus, the principal issues in this appeal are:
Did the Examiner err in rejecting claims 1-10 under 35 U.S.C. § 251
as being based on a defective reissue declaration?
Did the Examiner err in finding claim 1 anticipated by Tawara?
Did the Examiner err in finding that the process of producing the alloy
recited in claim 6 results in an alloy that is anticipated by Tawara?

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FINDINGS OF FACT (“FF”)
1. Tawara discloses a “reflecting layer formed from an alloy
consisting of aluminium and a metal of a rare earth element”
where the rare earth element “more preferably, is neodymium
or gadolinium” and is present in a range of 0.05 to 10 at %.
(Col. 3, ll. 5-15.)
2. Tawara discloses that the reflective layer “can be formed
conveniently by the method of sputtering using an alloy of
aluminum and the rare earth element of a specified composition
as the target.” (Col. 4, ll. 11-15.)
3. Example 1 of Tawara discloses a reflecting layer of a binary
alloy of aluminum and neodymium or gadolinium that is
deposited by the sputtering method. (Col. 4, ll. 35-41.)
4. Professor Glass declared that “Tawara is silent with respect to
the method by which an A1-Nd alloy sputtering target may be
made.” (Glass Declaration, page 8.) Professor Glass also
stated:
This deficiency is important as there are several methods
for making alloys. These methods include: spray
forming (using a molten mixture to spray on a collector
using N2 gas atomizer), vacuum melting and casting (also
includes substitution of inert gas after evacuation to
vacuum condition), powder processing, ordinary melting
and casting in the air, flame or plasma spray, electron-
beam melting and plasma arc melting.
(Id.)
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5. Professor Glass declared: “The alloys resulting from each of
these processes var[y] widely in their structure and properties”
and that “the more common approach would be either an
ordinary melting and casting in air or a powder processing
method.” (Glass Declaration, page 8.)
6. Professor Glass declared that melting Al and Nd under vacuum
provides superior properties such as greater purity and
controllable homogeneous microstructure and composition as
well as a target with fewer voids or cracks and a greater density
than alloys produced by the powder processing method. (Glass
Declaration, page 8.) Professor Glass also stated that the
vacuum melting process provides a target with greater purity
and fewer defects than alloys produced by melting and casting
in air. (Glass Declaration, page 9.)

PRINCIPLES OF LAW
The specific wording used in §251 limits the scope of the
Director's power to grant reissue patents only in situations in
which the original patent is deemed wholly or partly inoperative
or invalid by reason of a defective specification or drawing, or
by reason of the patentee claiming more or less than he had a
right to claim in the patent. The Office's interpretation of §251
to disallow reissue applications that simply add narrower claims
to the reissue patent when no assertion of inoperativeness or
invalidity for the reasons set forth in §251 can be made by the
patentee, is in keeping with the plain wording and scope of
§251.
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Ex parte Tanaka, 93 USPQ2d at 1299 (emphasis in original).

[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is
based on the product itself. The patentability of a product
does not depend on its method of production. If the product
in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.

In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (internal citations omitted).
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).

ANALYSIS
Appellant separately argues claims 1 and 6, but does not separately
argue claims 2-5 and 7-10. Accordingly, we confine our discussion to
appealed claims 1 and 6, which contain claim limitations representative of
the arguments made by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii).

Issue 1
We decline Appellant’s invitation to revisit the issue in Tanaka of
whether the addition of dependent claims alone is appropriate for a reissue
proceeding. Though Tanaka may be on appeal to the Court of Appeals for
the Federal Circuit, we are still bound by the reasoning set forth therein.
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Thus, as Appellant acknowledges, Tanaka is dispositive of the present issue.
Accordingly, we affirm the Examiner’s rejection of claims 1-10 under 35
U.S.C. § 251. Regarding Handel and Hewlett-Packard, as these cases were
extensively discussed in Tanaka, we see no need to repeat that discussion
here. See Tanaka, 93 USPQ2d at 1294-96.

Issue 2
We discern no error in the Examiner’s finding that Tawara discloses
the recited alloy. Tawara expressly describes a binary alloy of aluminum
and “a metal of a rare earth element” (emphasis added), “more preferably . .
. neodymium or gadolinium.” (FF 1, 3; Ans. 7-8.) Appellant’s position as
evidenced by the Glass Declaration that Tawara broadly discloses other
combinations of alloys such that one of ordinary skill in the art would not
envisage a binary alloy of aluminum and neodymium is belied by Tawara’s
express preference for a binary alloy of aluminum and neodymium. (FF 1;
Ans. 9-10.)
For similar reasons, Appellant’s arguments regarding other possible
methods discussed in the Goto and Glass Declarations by which the
reflective layer of a binary alloy of Al or Nd may be formed are also not
persuasive. The method of forming the reflective layer disclosed in Tawara
is sputtering using aluminum alloy targets. (FF 2, 3; Ans. 11.) Tawara’s
Example 1 discloses a reflecting layer of a binary alloy of aluminum and
neodymium produced by the sputtering method. (FF 3.) Thus, even though
the Goto and Glass Declaration discuss other methods of sputtering that
could be employed in forming the reflective layer, the existence of such
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other methods does not change the express disclosure of an alloy sputtering
target in Tawara.
In addition, because Tawara discloses the alloy is “binary,” there are
no other elements present in the binary alloy sputtering target. To the extent
that Appellant contends that the “consisting of” language in claim 1 excludes
sputtering targets in which the aluminum and neodymium alloy has been
produced under atmospheric conditions, due to the presence of nitrides and
oxides in the resulting alloy, we disagree. Such impurities are not excluded
by the “consisting of” language in the claims. Conoco Inc. v. Energy &
Environmental International LC, 460 F.3d 1349 (Fed. Cir. 2006) (“Although
‘consisting of’ is a term of restriction, the restriction is not absolute. The
Patent Board of Appeals has interpreted ‘consisting of’ to ‘close[ ] the claim
to the inclusion of materials other than those recited except for impurities
ordinarily associated therewith.’ Ex parte Davis, 80 U.S.P.Q. 448, 450 (Pat.
Office Bd. App. 1948).”)

Issue 3
Claim 6, however, stands on different footing than claim 1. Claim 6 is
a product-by-process claim in which the sputtering target is produced by
“melting Al and Nd under vacuum.” Because Tawara discloses a binary
alloy of Al and Nd, we are of the opinion that the Examiner properly shifted
the burden to Appellant to provide evidence to show a difference between
the alloys of Tawara and the alloys as claimed. Appellant stated that Tawara
does not specify how the binary alloy is produced. (FF 4.) Appellant has
provided evidence in the Glass Declaration that alloys may be produced by
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several different methods, and that alloys produced by the vacuum melting
procedure have superior properties over alloys produced by other methods.
(FF 4-6.)
In light of Appellant’s evidence, we cannot agree with the Examiner
that the alloy target of claim 6 is anticipated by Tawara regardless of how
the product was produced. The Examiner does not discuss why the evidence
provided by Appellant is insufficient to show that the alloys disclosed in
Tawara do not necessarily have the same structure and properties as the
alloys produced by the process recited in claim 6. Accordingly, we reverse
the Examiner’s decision to reject claims 6-10 as anticipated by Tawara.

CONCLUSION
On this record, Appellant has failed to demonstrate any error in the
Examiner’s factual findings and conclusions that claims 1-10 were properly
rejected under 35 U.S.C. § 251 as being based on a defective reissue
declaration and claim 1 is anticipated by Tawara.
However, we agree with Appellant that the Examiner erred in finding
that the process of producing the alloy recited in claim 6 results in an alloy
that is anticipated by Tawara.

DECISION
The Examiner’s decision to reject claims 1-10 under 35 U.S.C. § 251
is affirmed. The Examiner’s decision to reject claims 1-5 under 35 U.S.C. §
102(b) as being anticipated by Tawara is affirmed.
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The Examiner’s decision to reject claims 6-10 under 35 U.S.C. §
102(b) as being anticipated by Tawara is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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FOR PATENT OWNER:
Oblon, Spivak, McClelland Maier & Neustadt, L.L.P.
1940 Duke Street
Alexandria, VA 22314

FOR THIRD-PARTY REQUESTER:
Gregory S. Rosenblatt
Wiggin and Dana, LLP
One Century Tower
P.O. Box 1832
New Haven, CT 06508