SULZER METAPLAS GMBH

Patent Trials and Appeals Board

Apr 23, 2020

14188134 - (D) (P.T.A.B. Apr. 23, 2020)

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.
14/188,134 02/24/2014 Joerg VETTER P45234 1195
7055 7590 04/23/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOERG VETTER, STEFAN ESSER,
JURGEN MUELLER, and GEORG ERKENS
Appeal 2019-004185
Application 14/188,134
Technology Center 1700
Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–36. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as OERLIKON
SURFACE SOLUTIONS AG, PFAFFIKON. Appeal Br. 3.
Appeal 2019-004185
Application 14/188,134
2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a cylindrical
evaporation source that could be used in a sputtering process, vacuum
evaporation process, or, preferably, a cathode vacuum evaporation process.
Spec. ¶ 2. Such a process can be used to apply thin layers or films through
an arc coating process. Id. ¶¶ 4, 11–17. The evaporation source holds target
material to be evaporated in the process. See, e.g., id. ¶ 63. The geometry of
the evaporation source can be important to the process. Id. ¶ 18. The present
invention seeks to overcome problems with prior evaporation sources. Id. ¶
27–35. Moveable magnets as part of the evaporation source can, for
example, serve to set magnetic field strength. Id. ¶ 77.Claim 16 is
illustrative:
16. A cylindrical evaporation source comprising:
a target material arranged on an outer cylindrical wall;
a carrier system yoke disposed inside the outer
cylindrical wall and being elongate when viewed from an axial
direction of the outer cylindrical wall;
said carrier system yoke having an outer end, an inner
end arranged closer to a center of the outer cylindrical wall than
the outer end, and first and second opposite sides;
a magnet system comprising:
an elongate first magnetic field source being
elongate when viewed from an axial direction of the
outer cylindrical wall and being disposed inside the outer
cylindrical wall, said elongate first magnetic field source
having a first end spaced from a center of the elongate
first magnetic source and an oppositely arranged free end

2 In this Decision, we refer to the Non-Final Office Action dated June 25,
2018 (“Final Act.”), the Appeal Brief filed November 26, 2018 (“Appeal
Br.”), the Examiner’s Answer dated March 8, 2019 (“Ans.”), and the Reply
Brief filed May 8, 2019 (“Reply Br.”).
Appeal 2019-004185
Application 14/188,134
3
spaced from the center of the elongate first magnetic
source; and
an elongate second magnetic field source being
elongate when viewed from an axial direction of the
outer cylindrical wall and being disposed inside the outer
cylindrical wall, said elongate second magnetic field
source having a first end spaced from a center of the
second magnetic source and an oppositely arranged free
end spaced from the center of the second magnetic
source;
the first magnetic field source pivoting with respect to
the carrier system yoke about a first axis;
said free end of the first magnetic field source being
movable from a first angular position relative to the first
opposite side of the carrier system yoke to a second smaller
angular position that is alongside the first opposite side;
the second magnetic field source pivoting with respect to
the carrier system yoke about a second axis; and
said free end of the second magnetic field source being
movable from a first angular position relative to the second
opposite side of the carrier system yoke to a second smaller
angular position that is alongside the second opposite side,
wherein the first and second axes are spaced from each
other and are offset from a center axis of the outer cylindrical
wall.

Appeal Br. 30 (Claims App.) (emphasis added).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Halsey et al.
(“Halsey”)
Barankova et al.
(“Barankova”)
Chetcuti et al.
(“Chetcuti”)
Reference
US 5,855,744

US 6,351,075 B1

US 2013/0146444 A1

Date
Jan. 5, 1999

Feb. 26, 2002

June 13, 2013

Appeal 2019-004185
Application 14/188,134
4
Obara
Bellido-Gonzalez
Iseki3

JP 11029866A
GB 2 393 321 A
JP 2005-336520A

July 11, 1997
April 6, 2002
May 25, 2004

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 16–344 under 35 U.S.C. § 112 as failing to comply with the
written description requirement. Non-Final Act. 3.
B. Claims 17 and 215 under 35 U.S.C. § 112 indefinite. Non-Final Act.
4.
C. Claims 16–25, 31–34, and 36 under 35 U.S.C. § 103 as obvious over
Barankova in view of Bellido-Gonzalez. Id. at 5.
D. Claims 26 and 28 under 35 U.S.C. § 103 as obvious over Barankova
in view of Bellido-Gonzalez and Obara. Id. at 9.
E. Claim 27 under 35 U.S.C. § 103 as obvious over Barankova in view
of Bellido-Gonzalez and Halsey. Id. at 9–10.
F. Claims 29 and 30 under 35 U.S.C. § 103 as obvious over Barankova
in view of Bellido-Gonzalez and Iseki. Id. at 10.
G. Claim 31 under 35 U.S.C. § 103 as obvious over Barankova in view
of Bellido-Gonzalez and Chetcuti. Id. at 11.
H. Claim 35 under 35 U.S.C. § 103 as obvious over Barankova in view
of Bellido-Gonzalez and Halsey. Id. at 12.

3 The Examiner refers to this reference as Izeki.
4 The Examiner withdrew the written description rejection with respect to
claims 35 and 36. Ans. 3.
5 The Examiner withdrew the indefiniteness rejection with respect to claim
25. Ans. 3.
Appeal 2019-004185
Application 14/188,134
5
OPINION
Rejection A, written description: The Examiner rejects claims 16–34
under 35 U.S.C. § 112 as failing to comply with the written description
requirement. Non-Final Act. 3. To determine whether the written description
requirement is met, we consider whether disclosure of the earlier application
relied upon “conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, [the inventor] was in possession of the
invention.” In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).
The Examiner determines that claim 16 requires “a carrier system
yoke being elongate when viewed from an axial direction,” “an elongate first
magnetic field source being elongate when viewed from an axial direction,”
and “an elongate second magnetic field source being elongate when viewed
from an axial direction.” Non-Final Act. 3. The Examiner states that the
Specification does not support three distinct axial directions. Id.
Appellant argues that the claims do not recite three distinct axial
directions. Appeal Br. 9–10. Appellant’s argument is persuasive of
Examiner error. Each of claim 16’s “axial direction” recitations recite “axial
direction of the outer cylindrical wall.” Appeal Br. 30 (Claims App.)
(emphasis added). Although the claim refers to “an axial direction” for a
first, second, and third time, claim 16 nonetheless refers to the same axial
direction (axial direction of the outer cylindrical wall) in all three instances.
As Appellant argues, Figure 2a of the Specification, for example, provides
adequate written description support for these recitations. Appeal Br. 9. We,
therefore, do not sustain the Examiner’s rejection.
Rejection B, indefiniteness: The Examiner rejects claims 17 and 21
under 35 U.S.C. § 112 indefinite. Non-Final Act. 4. The Examiner states that
claims 17 and 21 are unclear as to what axes the first and second pivotally
Appeal 2019-004185
Application 14/188,134
6
moveable carrier arms pivot around. Id. Appellant argues that the language
is not unclear merely because Appellant did not specify pivot axes. Appeal
Br. 13.
Appellant’s argument persuades us of reversible error. Although
claims 17 and 21 do not specify what axes the carrier arm is “pivotably
movable about,” the Examiner has not adequately explained why the scope
of the claim is unclear. Rather, the lack of specificity presents an issue of
breadth, not indefiniteness. In re Gardner, 427 F.2d 786, 788 (CCPA 1970)
(“Breadth is not indefiniteness.”). We, therefore, do not sustain the
Examiner’s rejection.
Rejections C–H, obviousness. The Examiner rejects independent
claims 16 and 36 under 35 U.S.C. § 103 as obvious over Barankova in view
of Bellido-Gonzalez. Non-Final Act. 5. The Examiner rejects independent
claim 35 under 35 U.S.C. § 103 as obvious over Barankova in view of
Bellido-Gonzalez and Halsey. Id. at 12.
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
Appeal 2019-004185
Application 14/188,134
7
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. In
particular, we first focus on key recitations of independent claim 16, 35, and
36, in the context of the Specification that relates to those recitations. Claim
16 recites, for example, “the first magnetic field source pivoting6 with
respect to the carrier system yoke about a first axis” and “said free end of the
first magnetic field source being moveable from a first angular position
relative to the first opposite side of the carrier system yoke to a second
smaller angular position that is alongside the first opposite side.” Appeal Br.
30 (Claims App.). Similarly, claim 35 recites “the free end of the first
pivotally mounted magnetic field source pivoting towards the first opposite
facing side and away from the outer cylindrical wall and vice versa,” and
claim 36 recites “the first magnetic field source pivoting with respect to the
carrier system yoke about a first axis between a first position and a position
that is alongside the first opposite side.” Id. at 34–35.
An example of the pivoting as recited by Appellant’s claims is
illustrated by the Specification at Figure 2a. We reproduce Figure 2a below.

6 Because claim 16 is directed to an apparatus and not a method, we interpret
this “pivoting” language as meaning “capable of pivoting.”
Appeal 2019-004185
Application 14/188,134
8

Figure 2a illustrates a plan view of an embodiment of the Specification’s
evaporation source. Spec. ¶ 54. Figure 2a shows magnetic field sources 401
and 402 pivotally attached to ferrite yoke 410 via carrier system 500. Spec.
¶¶ 74–76. The magnetic field sources can pivot so that the angle, α2 or α2,
varies between 0º and approximately 130º. Id. ¶ 75. As the angle varies, the
far end of the magnet may be alongside one side of the yoke or can be
farther away.
The Examiner finds that the claims’ recitations relating to pivoting of
the magnetic field sources is taught by Bellido-Gonzalez. See, e.g., Ans. 6
(explaining that the Office Action admits that primary reference Barankova
teaches rotating but not pivoting). Appellant argues, however, that Bellido-
Gonzalez only teaches that its magnetic sources are rotably mounted (i.e.,
capable of turning about an axis central to the magnetic source) rather than
pivotably mounted as recited by claims 16, 35, and 36. See, e.g., Appeal Br.
17–22, 26–28; Reply Br. 3–5. Appellant emphasizes that when Bellindo-
Gonzalez uses the term “pivotable” it is referring to rotation about the
Appeal 2019-004185
Application 14/188,134
9
magnetic sources’ central axis. Reply Br. 4. The preponderance of the
evidence supports Appellant’s position.
Bellindo-Gonzalez’s Figures 1, 2, 6, and 7 illustrate magnetic field
sources 12 and 14. Each field source turns about the magnetic field source’s
central axis as illustrated by the Figures’ arrows (21, 22, 61, 62, 71, and 72)
and as illustrated by the magnetic field sources’ change in position from
Figure 1 to Figure 2 and the change in position from Figure 6 and 7. The text
of Bellindo-Gonzalez further explains that magnetic field can be varied “by
pivoting the magnetic devices about their axes.” Bellindo-Gonzalez 6:5–7
(emphasis added). Bellindo-Gonzalez also refers to the motion illustrated by,
for example, Figures 2 and 6 as rotation. Id. at 9:19–23; 11:9–14. The
Examiner has not adequately explained how Bellindo-Gonzalez teaches the
pivoting movement as the independent claims on appeal recite.
Because the Examiner has not adequately established that any of the
cited references teach or suggest an apparatus capable of the pivoting
movement recited by independent claims 16, 35, or 36, we do not sustain the
rejection of those claims. Because the Examiner’s treatment of dependent
claims does not cure this error, we also do not sustain the rejection of the
dependent claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–34 112 written description 16–34
17, 21 112 indefiniteness 17, 21
16–25, 31–
34, 36
103 Barankova, Bellido-
Gonzalez
16–25, 31–
34, 36
26, 28 103 Barankova, Bellido-
Gonzalez, Obara
26, 28
Appeal 2019-004185
Application 14/188,134
10
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27 103 Barankova, Bellido-
Gonzalez, Halsey
27
29, 30 103 Barankova, Bellido-
Gonzalez, Iseki
29, 30
31 103 Barankova, Bellido-
Gonzalez, Chetcuti
31
35 103 Barankova, Bellido-
Gonzalez, Halsey
35
Overall
Outcome
16–36

REVERSED