Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 17 objected to because of the following informalities:
In claim 17, the limitation “said desired final” should be amended to read “a desired final shape” to align with claims 18 and 19.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Applicant’s amendments to the claims have overcome the previously presented rejections under 35 U.S.C. 112(a) and 112(b) except for those recited below.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3, 5-8, 10, 21, and 23-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 3 and 21, the limitation “said metal powder and said BN powder are mixed in a mixing ratio from about 1:0.01 to 1:1” is not fully supported by the specification. Rather, the specification recites that Ta powder and BN powder may be mixed in the claimed ratio (in para 0034) or W powder and BN powder may be mixed in the claimed ratio (para 0039) but does not recite the claimed mixing ratio for other metal powders and thus the claims are not fully supported.
In claims 3 and 21, the limitation “said metal powder, said BN powder, and said optional binary or ternary compound powder are mixed in a mixing ratio from about 3:1:1 to 6:1:3” is not fully supported by the specification. Rather, the specification recites that the claimed mixing ratio may be used with Mo as the metal powder, and Si3N4 as the “optional binary or ternary compound powder” (paragraph 0028) but there is no support for the claimed mixing ratio with other metal powders and/or other binary/ternary compound powders and thus the claims are not supported.
In claim 3 and 21, the limitation “surface impurities are removed from said metal powder” is not fully supported by the specification. Rather, the specification describes that surface impurities may be removed from W powder due to the decomposition reaction of BN with W (see para 0041) but does not describe removing surface impurities of other metal powders and therefore the claims are not fully supported.
In claim 3 and 24, the limitation “wherein B and said flow of N gas are provided by a decomposition reaction of said BN powder” is not fully supported by the specification. Rather, the specification describes that surface impurities may be removed from W powder due to the decomposition reaction of BN with W (see para 0041) but does not describe a decomposition reaction of BN with other metal powders and therefore the claims are not fully supported.
In claim 23, the limitation “a step of covering, by atomizing the target blank” is not supported by the original specification. Rather, the specification describes that the covering step of forming a barrier layer is performed by reactive sputtering from a W/B target and not by “atomizing” the target blank and therefore the claim is not fully supported.
Claims 5-8, 10, and 25-28 depend on claims 3 and 21 and thus lack written description support by virtue of depending on the aforementioned claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 17, the limitation “clean N gas” is indefinite because “clean” is a relative term and it is unclear what is required (i.e., what purity) to be considered “clean”. The term “clean” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This rejection may be overcome by deleting the word “clean” such that the claim recites “N gas”.
Claims 18-20 are indefinite by virtue of depending on an indefinite claim.
Response to Arguments
Applicant’s arguments, see pg. 7-8, filed 9/3/2025, with respect to claims 3, 17, and 21 have been fully considered and are persuasive. The rejection under 35 U.S.C. 103 of 3/3/2025 has been withdrawn.
Allowable Subject Matter
Claims 17-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 17, the closest prior art to the claimed invention is Mashima (JP H06248446 A), Shin (NPL – “WO3 addition, crystal phase evolution and properties of Y2O3-Doped AlN ceramics), Juliano (US 9150958 B1), and Miyashita (US 20140021043 A1). Mashima teaches preparing a Me-B, such as W-B, target by hot pressing powders and then joining the sintered body to a copper plate to obtain a desired final target, wherein the hot-pressing takes place at a temperature above 1600°C. Shin teaches forming tungsten boride by reaction of BN and W powder where BN is the only source of boron (devoid of B powder) and wherein N2 (clean N gas) is formed as a product of the reaction and thus would inherently remove at least some surface impurities, such as nitrogen impurities. Juliano teaches forming sputtering targets from spherical powders made by atomization of a melt/solid. Additionally, Miyashita teaches gaseous impurities of nitrogen and oxygen are removed by using an atomizing method, which may be optimized to achieve a nitrogen content below 20 ppm. The aforementioned references fail to explicitly teach the W powder and BN powder are mixed in a mixing ratio from about 1:0.01 to 1:1. Additionally, there is no teaching, suggestion, or motivation to modify the aforementioned references to mix the W powder and BN powder in the claimed ratio. Therefore, claim 17 contains allowable subject matter.
Claims 18-20 depend on claim 17 and thus would be allowable for the same reasons.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PATRICK S OTT/Examiner, Art Unit 1794