Peter Abenthung et al.

Patent Trials and Appeals Board

Aug 1, 2019

14352725 - (D) (P.T.A.B. Aug. 1, 2019)

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.
14/352,725 04/18/2014 Peter Abenthung SB-701 3686
24131 7590 08/01/2019
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER ABENTHUNG, CHRISTIAN LINKE,
ANDRE DRONHOFER, HARTMUT WOLF,
TOBIAS WILL, and WOLFGANG KOECK
____________

Appeal 2018-000092
Application 14/352,725
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
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The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s decision to reject claims 26–41.2 We have
jurisdiction under 35 U.S.C. § 6(b).3
We affirm.
I. BACKGROUND
The subject matter on appeal relates to a tubular target with a
specified composition and specified characteristics (Specification filed April
18, 2014 (“Spec.”),4 1, ll. 2–7; 14, ll. 3–9; Drawings filed April 18, 2014,
Fig. 1). Representative claim 26 is reproduced from the Claims Appendix to
the Appeal Brief, as follows:
26. A tubular target, comprising:
a target body of refractory metal or a refractory metal alloy
having a refractory metal content of ≥ 50 atom%;
said target body including at least one tubular section X
having a relative density RDx, at least in regions thereof, and at
least one tubular section Y having a relative density RDy, at least
in regions thereof;

1 The Applicant is “PLANSEE SE” (Application Data Sheet filed April 18,
2014, 6), which is also identified as the real party in interest (Appeal Brief
filed June 2, 2017 (“Appeal Br.”), 1).
2 Appeal Br. 2–8; Reply Brief filed October 2, 2017 (“Reply Br.”), 1–3;
Non-Final Office Action entered February 3, 2017 (“Non-Final Act.”), 3–9;
Examiner’s Answer entered August 11, 2017 (“Ans.”), 2–11.
3 We heard oral arguments from the Appellant’s representative on July 25,
2019. A written transcript will be entered into the electronic record when it
is made available.
4 The Specification was published on August 28, 2014 as US 2014/0238850
A1 (“US ’850”).
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at least one said tubular section X having, at least in
regions thereof, a greater external diameter than regions of said
at least one tubular section Y; and
RDy–RDx ≥ 0.001.
RDy
(Reply Br. 5 (Corrected Claims Appendix)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected as follows:
A. Claims 34, 35, and 38–40 under pre-AIA 35 U.S.C. § 112, ¶ 2, as
indefinite;
B. Claims 26, 32–37, and 39–41 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Abenthung et al.5 (“Abenthung”); and
C. Claims 27–31 and 38 under 35 U.S.C. § 103(a) as unpatentable
over Abenthung in view of Fujii et al.6 (“Fujii”).
(Ans. 2–11; Non-Final Act. 3–9).
III. DISCUSSION
Rejection A. The Appellant does not offer any argument against this
rejection in the Appeal Brief (Appeal Br. 2–8). Indeed, the Appellant does
not even acknowledge the rejection in the Appeal Brief (id. at 2).7
Therefore, we summarily sustain the rejection without considering the
merits. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“In the event

5 US 2007/0086909 A1, published April 19, 2007.
6 US 2004/0055884 A1, published March 25, 2004.
7 In the Reply Brief, the Appellant states that “the necessary corrections will
be held in abeyance until this appeal has been concluded” (Reply Br. 1).
Our review, however, is limited to the rejections based on the current record.
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of . . . a waiver, the [Board] may affirm the rejection . . . without considering
the merits.”).
Rejection B. The Appellant’s arguments focus only on independent
claim 26 and dependent claim 33 (Appeal Br. 2–8). Therefore, we confine
our discussion to these two claims. All other claims subject to this rejection
stand or fall with claim 26, which we select as representative pursuant to 37
C.F.R. § 41.37(c)(1)(iv).
1. Claim 26
The Examiner finds that Abenthung describes a tubular target based
on a refractory metal (i.e., molybdenum) having a relative density of at least
99% (Ans. 3). The Examiner also finds that Abenthung teaches the target
body as having tubular ends having greater external diameters than a
deformed center tubular section (id.). The Examiner determines:
[S]ince Abenthung . . . teaches an additional process of
deforming the central tubular section Y by forging, a prima facie
case of either anticipation or obviousness has been established
that Abenthung . . . also teaches the resulting central tubular
section Y having a property of an average density RDym to be
greater than an average density of RDxm to satisfy the claimed
equation (RDym-RDxm)/RDym ≥ 0.01 [sic, 0.001] resulting
from the additional process of deformation via forging, as
evidenced by Applicant’s published Specification (US
2014/0238850) at para 0039 and 0041-0042 teaching that
additional processing by deforming the tubular section Y of a
refractory metal by forging satisfies the equation
(RDy-RDx)/RDy ≥ 0.001.
(Id.).
The Appellant contends that “[i]n order to satisfy a ratio of relative
densities (RDy-RDx)/RDy ≥ 0.001, as required by claim 26, it is absolutely
necessary for the material of the tubular target not to be completely dense, at
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least in the region(s) X” (Appeal Br. 3). According to the Appellant, “‘if the
density ratio is lower, the advantages indicated [in the Specification] are no
longer achieved to a sufficient extent’” (id. at 4 (quoting Spec. 4, ll. 25–27)).
The Appellant argues that, by contrast, “Abenthung does not disclose a ratio
of relative densities at all, simply because Abenthung teaches its tubular
target to be ‘free from pores and also free from grain boundary cracks’” (id.
(quoting Abenthung ¶ 36)). The Appellant argues that “even though
Abenthung teaches that a tubular target can be produced by extrusion,
followed by forging (e.g. for adjusting the final wall thickness, [0038]), the
tubular target of Abenthung is already fully dense” and, therefore, “[i]t is
simply not possible to produce or establish relative density gradients over
the length of the tubular target” (id. at 4–5). Furthermore, the Appellant
alleges that the “Primary Examiner mistakenly interprets the microstructure
of the green body for the final product” and that the “processes of
Abenthung and of the claimed invention differ from each other” (id. at 5).
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Abenthung describes a tubular target formed of molybdenum or a
molybdenum alloy having an oxygen content of less than 50 µg/g, a density
of greater than 99% of the theoretical density, and an average grain size of
less than 100 µm (Abenthung, Abstract and ¶¶ 18–24). In describing the
production method, Abenthung teaches that “[t]he use of glass powder as a
lubricant achieves the effect of an outstanding surface of the tubular target in
the case of both extrusion and co-extrusion, whereby the machining can be
reduced to a minimum” (id. ¶ 36). According to Abenthung, “this ensures
that the tubular target is free from pores and also free from grain boundary
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cracks” (id. (emphasis added)). Abenthung further teaches that, after
extrusion or co-extrusion, “the wall thickness over the length of the
molybdenum tube or composite tube can also be varied by a subsequent
forging process” and that “[t]he wall thickness can in this case be
advantageously made thicker in the region of the tube ends” (id. ¶ 38).
Abenthung teaches that by this method, “the density is greater than 99% of
the theoretical density, preferably greater than 99.8% of the theoretical
density” (id. ¶ 40 (emphasis added)).
As the Appellant acknowledges (Appeal Br. 6), Abenthung’s
disclosure that the use of glass powder lubricant “ensures that the tubular
target is free from pores” (id. ¶ 36) is merely aspirational or describes a
desirable (i.e., preferred) result. We reach that determination because
Abenthung’s disclosure as a whole would have indicated to a person having
ordinary skill in the art that the prior art target body density before forging
may be as low as slightly above 99% of the theoretical density (id. ¶ 40),
although higher densities would be desirable or preferable as we stated
above. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”); Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry,
‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”) (internal citation omitted).
Having found that Abenthung’s target body prior to forging may have
a density as low as slightly above 99% of theoretical density, we discern no
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reversible error in the Examiner’s well-supported finding that the relative
density ratio for Abenthung’s embodiment in which the density prior to
forging is slightly greater than 99% of theoretical density would reasonably
appear to satisfy the relationship recited in claim 26 (Ans. 3, 8–9 (comparing
Abenthung’s disclosed method of product with the method described in
current Specification (¶¶ 39, 41–42)). Cf. In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]e conclude that . . . the virtual identity of monomers
and procedures sufficed to support a prima facie case of unpatentability of
Spada’s polymer latexes.”).
As for the Appellant’s broad reference to certain advantages disclosed
in the current Specification (Appeal Br. 4), we find that it is insufficient
because the Appellant does not direct us to any objective evidence of
unexpected results over Abenthung’s tubular target. Indeed, a mere
difference of 0.001 in terms of a ratio of relative densities for any relative
lengths for tubular sections X and Y is unlikely to produce an unexpected
difference over Abenthung’s preferred tubular target that is completely free
from pores. Cf. Titanium Metals Corp. of America v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985).
For these reasons and those given by the Examiner, we uphold the
Examiner’s rejection as maintained against claim 26.
2. Claim 33
Claim 33, which depends from claim 26, recites: “wherein at least
one said tubular section X has a uniform pore structure with an average pore
diameter in the tubular section X being between 10 nm and 10 μm” (Reply
Br. 6).
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The Appellant argues that “Abenthung does not disclose a uniform
pore structure of a region X of between 10 nm and 100 μm” but “instead
teaches that the tubular target is free of pores following the extrusion step”
(Appeal Br. 7). We do not find this argument persuasive to identify
reversible error.
As the Examiner points out (Ans. 10–11), the current Specification
states that a “fine and uniform pore structure is preferably achieved when the
tubular target has been produced by powder metallurgy” and that such a
technique results in the an average pore diameter in the tubular section X
preferably from 10 nm to 10 µm (Spec. 7, ll. 1–5; US ’850, ¶ 20). Because
Abenthung’s production method (e.g., Abenthung, ¶¶ 18–24) is substantially
similar to that described in the current Specification (Spec. 7, ll. 1–5 and 9,
ll. 4–8; US ’850 ¶¶ 20, 29), it would reasonably appear that Abenthung’s
method would necessarily produce tubular targets having sections with
average pore diameter ranges that at least overlap the Inventors’ specified
range. Spada, 911 F.2d at 708.
Accordingly, we also sustain the rejection as maintained against claim
33.
Rejection C. The Appellant does not argue this rejection separately
(Appeal Br. 2–8). Therefore, we uphold Rejection C for the same reasons
stated above for claim 26.
IV. SUMMARY
Rejections A through C are sustained. Therefore, the Examiner’s
decision to reject claims 26–41 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).
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AFFIRMED