Martin Dubs et al.

Patent Trials and Appeals Board

Sep 3, 2021

2020004280 (P.T.A.B. Sep. 3, 2021)

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.
13/258,576 09/22/2011 Martin Dubs TSW-45324US1 4231
86378 7590 09/03/2021
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
MCDONALD, RODNEY GLENN
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
09/03/2021 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN DUBS, KURT RUHM, and HARTMUT ROHRMANN
Appeal 2020-004280
Application 13/258,576
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s decision rejecting claims 1–5, 7, 8, 10–13, 15–17, 19, 20, 22, 23,
and 25–35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).

1 The following documents are of record: Specification filed September 22,
2011 (“Spec.”); Final Office Action dated April 8, 2019 (“Final Act.”);
Appeal Brief filed November 19, 2019 (“Appeal Br.”); Examiner’s Answer
dated March 23, 2020 (“Ans.”); and Reply Brief filed May 20, 2020 (“Reply
Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as EVATEC AG. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus for coating a substrate by reactive
sputtering, comprising:
an axis,
a cover comprising an inner surface and at least two
targets in an arrangement symmetrical to said axis,
a substrate carrier for carrying said substrate and means
for rotating said substrate carrier around said axis,
a stabilizing mechanism configured to stabilize the
reactive sputtering of the substrate by use of constant voltage
sputtering, and
a power supply connected to said targets,
wherein said targets are alternatively operable as cathode
and anode,
wherein the power supply is configured to operate said
targets alternatively as cathode and anode, such that during a
time a target is operated as an anode, one or more targets are
operated as cathodes,
wherein surfaces of said targets are arranged such that the
surfaces, when unsputtered, are angled with respect to a plane
perpendicular to said axis, and
wherein an angle of the angled unsputtered surfaces of
said targets with respect to the plane perpendicular to the axis is
between 2° and 20°.
Appeal Br. 21 (Claims App.).
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REFERENCES
Name Reference Date
Mintz US 4,595,482 June 17, 1986
Lamont US 5,114,556 May 19, 1992
Teschner US 6,096,174 Aug. 1, 2000
Goedicke US 6,340,416 B1 Jan. 22, 2002
Xiong US 6,537,428 B1 Mar. 25, 2003
Wickramanayaka US 2005/0115827 A1 June 2, 2005
Stang EP 0450163 Oct. 9, 1991

APPEALED REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1–5, 7, 10–13, 15–17, 20, 23, and 26–34 over
Wickramanayaka, Xiong, Goedicke or Teschner, and Stang (Final Act. 2–
12);
2. claims 8, 19, 22, and 25 over Wickramanayaka, Xiong,
Goedicke or Teschner, Stang, and Mintz (id. at 13); and
3. claim 35 over Wickramanayaka, Xiong, Goedicke or Teschner,
Stang, and Lamont (id. at 13–14).
NEW GROUND OF REJECTION
Claims 1–5, 7, 8, 10–13, 15–17, 19, 20, 22, 23, and 25–35 are rejected
under 35 U.S.C. § 112, ¶ 2 or 35 U.S.C. § 112(b) as indefinite.
Independent claims 1 and 10 recite, “wherein surfaces of said targets
are arranged such that the surfaces, when unsputtered, are angled with
respect to a plane perpendicular to said axis, and wherein an angle of the
angled unsputtered surfaces of said targets with respect to the plane
perpendicular to the axis is between 2° and 20°.” Appeal Br. 21, 23 (Claims
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App.) (emphasis added). The Specification describes an embodiment in
which the “targets are arranged such that a plane defined by an unsputtered
front plane of the respective target is angled with respect to a plane
perpendicular to [the symmetry] axis, in particular angled by an angle
between 2° and 20°.” Spec. 10:7–10. It is unclear whether claims 1 and 10
are limited to this explicitly described embodiment, or whether “when
unsputtered” is conditional language such that the claims broadly encompass
an apparatus or method in which partially sputtered targets are arranged at
any angle with respect to a plane perpendicular to the symmetry axis.
During prosecution “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112 . . . as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); cf. In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.”). Because claims 1
and 10 are indefinite, their dependent claims are also indefinite.
OPINION
In the interest of administrative and judicial economy, wherever
reasonably possible, it is appropriate to make a reasonable, conditional
interpretation of claims that is adequate to resolve patentability issues. See
Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Ionescu,
222 USPQ 537, 540 (Bd. App. 1984). For purposes of deciding the 35
U.S.C. § 103(a) rejections, we interpret the phrase “wherein surfaces of said
targets are arranged such that the surfaces, when unsputtered, are angled
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with respect to a plane perpendicular to said axis” as meaning that the
“targets are arranged such that a plane defined by an unsputtered front plane
of the respective target is angled with respect to a plane perpendicular to said
axis” (Spec. 10:7–10).
The Appellant relies on the same arguments in support of patentability
of all claims subject to the above-listed first ground of rejection. See
generally Appeal Br. 11–18. As to the remaining grounds of rejection, the
Appellant argues only that the additional references fail to cure the
deficiencies in the Examiner’s rejection of independent claims 1 and 10. See
id. at 19.
The Examiner’s and the Appellant’s respective positions raise the
following issues for our consideration: Has the Appellant identified
reversible error in either of the Examiner’s findings that the ordinary artisan
would have modified Wickramanayaka’s apparatus or method to (1) adjust
the targets’ angles within the claimed range of “between 2° and 20°” (claims
1, 10); and (2) use a power supply configured to operate the targets
alternatively as cathode and anode, “such that during a time a target is
operated as an anode, one or more targets are operated as cathodes” (claims
1, 10)? We determine that the Appellant has not identified reversible error
for the reasons discussed below.
We first address issue (1). Relying on Stang’s disclosure of adapting
the targets’ angles to sputtering conditions, Stang ¶ 11, the Examiner found
that adjusting the targets’ angles within the claimed range would have been a
matter of routine optimization. Final Act. 4. The Appellant acknowledges
Stang’s teaching that the target angles can be adapted to the sputtering
conditions, but argues that “one skilled in the art would start with a possible
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range of angles between 0 to 90 degrees, for example, but would have no
guidance on what angles to try or what other parameters to control in
coordination with the angles to optimize for any such best results.” Appeal
Br. 16–17.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). In other words, a
result-effective variable is a variable that achieves a recognized result,
regardless of whether the variable affects the same result or property
described in the Specification. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419–20 (2007) (“In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. . . . [A]ny need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”).
In the present case, Stang teaches that sputtering conditions can affect
the main migration directions of the coating material, but the migration
directions can be adjusted by changing the targets’ angles with respect to the
substrate, i.e., with respect to a plane perpendicular to the symmetry axis.
See Stang Abstract, ¶ 11. Like the Appellant, Wickramanayaka wants a
uniform coating. Compare Spec. 18:19–23 (“Good uniformity is achieved by
a suitable choice of distance between target centre and rotation axis, of
distance between target centre and substrate surface and of angle between
target surface and substrate surface or rotation axis.”), with Wickramanayaka
¶ 55 (“[T]he operation results in a uniform side-wall coverage and better
bottom coverage 28 in holes or trenches 29 on the wafer 24 . . . .”).
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Therefore, given the absence of unexpected results, it is reasonable to
conclude that the ordinary artisan would have adjusted the targets in the
Wickramanayaka apparatus, as modified by the applied references, to the
same angles recited in the claims to achieve coating uniformity.
Turning next to issue (2), the Examiner found that Wickramanayaka
discloses an apparatus for sputter coating a substrate in which the targets are
symmetrical about an axis and the target’s surfaces are angled with respect
to a plane perpendicular to the axis. See Final Act. 3. The Examiner found
that, based on the teachings of Teschner or Goedicke, the ordinary artisan
would have modified Wickramanayaka to use a power supply configured to
operate the targets alternatively as cathode and anode, such that when one
target was operated as an anode, another target was operated as a cathode.
Final Act. 4; Ans. 15.
The Appellant argues that the Examiner’s proposed modification
would have rendered Wickramanayaka unsatisfactory for its intended
purpose of achieving uniform side-wall coverage of wafer holes or trenches.
Appeal Br. 13–14. The Appellant explains that to achieve this goal,
Wickramanayaka accelerates ionized sputtered atoms such that, as they
reach the wafer surface, their path is “almost or preferably normal, i.e.,
perpendicular, to the wafer surface.” Id. at 14 (citing Wickramanayaka
¶¶ 54–55, 65, Fig. 3). The Appellant argues that Goedicke’s and Teschner’s
cathode/anode arrangements are such that they generate a strong E-field
oriented parallel to the wafer surface. Id. The Appellant contends that the
sputtered ions’ and atoms’ movements in a direction parallel to the wafer
surface “would prevent them from reaching a near-field zone of the
substrate, in which the redirecting and accelerating forces of the self-bias are
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sufficiently strong to achieve Wickramanayaka’s desired perpendicular
movement.” Id. at 15; see also Reply Br. 2–4.
The Appellant’s argument is not persuasive because the Appellant
fails to consider the teachings of the prior art as a whole, and does not cite to
objective evidence to support its arguments regarding the operation of the
prior art devices. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(explaining that argument by counsel cannot take the place of evidence). For
example, the Appellant’s argument assumes a modification of
Wickramanayaka to include Goedicke’s or Teschner’s arrangement in which
a counter electrode is directly opposite the cathode. Appeal Br. 14. But the
Examiner’s rejection relies on Goedicke and Teschner solely for a teaching
of, and reason to modify Wickramanayaka to include, a power supply
configured to operate targets alternatively as cathode and anode. See Final
Act. 4. Moreover, the Appellant’s argument fails to take into account
whether the ordinary artisan would have reasonably expected that any
deviation from Wickramanayaka’s desired perpendicular movement caused
by Goedicke’s or Teschner’s power supply could be corrected via Stang’s
teaching to adjust the targets’ angles.
The Appellant also argues that modifying Wickramanayaka to include
Stang’s adjustable target mechanism would have required redesign of
Wickramanayaka’s reactor, and that Stang’s features would not have been
combined with Goedicke’s and Teschner’s features because they are from
two inherently different technologies. Appeal Br. 17. These arguments are
not persuasive because they are contrary to the relevant case law. “It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
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elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted). Further, whether two prior art references relate to the same
technology is not relevant to an obviousness determination. Rather, each
prior art reference must be within the realm of prior art that one of ordinary
skill in the field of the inventor should be charged with knowing. See In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
For the above reasons, as well as the reasons stated in the Final Office
Action and the Answer, we are not persuaded of reversible error in the
Examiner’s rejections.3
DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–5, 7, 8,
10–13,
15–17,
19, 20,
22, 23,
25–35
112 Indefiniteness 1–5, 7,
8, 10–
13, 15–
17, 19,
20, 22,
23, 25–
35
1–5, 7,
10–13,
15–17,
20, 23,
26–34
103(a) Wickramanayaka,
Xiong, Goedicke,
Stang
1–5, 7,
10–13,
15–17,
20, 23,
26–34

8, 19, 22,
25
103(a) Wickramanayaka,
Xiong, Goedicke,
Stang, Mintz
8, 19, 22,
25

3 We note that even if we were to interpret “when unsputtered” as
conditional language, we would reach the same conclusion.

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35 103(a) Wickramanayaka,
Xiong, Goedicke,
Stang, Lamont
35
1–5, 7,
10–13,
15–17,
20, 23,
26–34
103(a) Wickramanayaka,
Xiong, Teschner,
Stang
1–5, 7,
10–13,
15–17,
20, 23,
26–34

8, 19, 22,
25
103(a) Wickramanayaka,
Xiong, Teschner,
Stang, Mintz
8, 19, 22,
25

35 103(a) Wickramanayaka,
Xiong, Teschner,
Stang, Lamont
35
Overall
Outcome
1–5, 7, 8,
10–13,
15–17,
19, 20,
22, 23,
25–35
1–5, 7,
8, 10–
13, 15–
17, 19,
20, 22,
23, 25–
35

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED; 37 C.F.R. § 41.50(b)