DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/29/2026 has been entered.
Claim Interpretation
The phrase “one or more active elements” in claim 1 has been interpreted as ‘one or more elements of oxygen (O), iron (Fe), sulfur (S), hydrogen (H), and chromium (Cr), wherein the one or more elements have particular ranges from the Specification, resulting in the one or more elements being carbon getters’, as is consistent with para 0055-0056, 0058, 0060,0064-0065, 0067, and 0078 of Applicant’s Specification.
Claim Objections
Claims 5 and 6 are objected to under 37 CFR 1.75 as each being a substantial duplicate of amended claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
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 2 and 4-6 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.
Amended claim 2 recites “the CuMn of the low carbon defect CuMn sputtering target, including after any alloy addition and excluding said one or more active elements, has a purity of at least about 99.999%” (emphasis added). There is no support for this negative requirement in the Specification in view of reasoning that a negative claim requirement introduces new concepts since an express exclusion of certain elements implies permissible inclusion of all other elements not so expressly excluded. Ex parte Grasselli, 231 USPQ 393, 394 (BD. App. 1983; aff’dmem., 738 F.2d 453 (Fed. Cir, 1984).
Amended claim 4 (dependent on amended claim 1) recites “a dissolution device”. There is no support in the Specification for two distinct ‘dissolution devices’ (i.e. “a dissolution device” in claim 1, and another “a dissolution device” in claim 4. Claims 5 and 6 are also rejected as depending on claim 4.
Amended claim 5 (dependent on amended claim 1) recites “a crucible”. There is no support in the Specification for two distinct ‘crucibles’ (i.e. “a crucible” in claim 1, and another “a crucible” in claim 4. Claim 6 is also rejected as depending on claim 5.
Amended claim 6 (dependent on amended claim 1) recites “a dissolution rate”. There is no support in the Specification for two distinct ‘dissolution rates (i.e. “a dissolution” in claim 1, and another “a dissolution” in claim 46.
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 4-6 are 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.
Amended claim 4 (dependent on amended claim 1) recites “a dissolution device”. It is unclear as to whether the “dissolution device” of claim 4 is intended to be the same “dissolution device” of claim 1, or distinct ‘dissolution devices’ thereof. Claims 5 and 6 are also rejected as depending on claim 4.
Amended claim 5 (dependent on amended claim 1) recites “a crucible”. It is unclear as to whether the “crucible” of claim 5 is intended to be the same “crucible” of claim 1, or distinct ‘crucibles’ thereof. Claim 6 is also rejected as depending on claim 5.
Amended claim 6 (dependent on amended claim 1) recites “a dissolution rate”. It is unclear as to whether the “dissolution rate” of claim 6 is intended to be the same “dissolution rate” of claim 1, or distinct ‘dissolution rates’ thereof.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nagata et al (WO 2015/099119, machine translation cited below).
With respect to claim 1, Nagata discloses in Table 1, Comparative Examples 1-6 (CE1-6) a CuMn sputter target comprising Cu at purity 4N-6N (99.99%-99.9999%) and Mn at a “high-purity” and a wt% between 0.1-20, with an oxygen concentration of between 0.1-150 wtppm of a total weight of the CuMn sputter target (p. 4), with Table 1 having CE2 of Cu at purity 6N (99.9999%), Mn at 0.5 wt%, and the oxygen concentration of 120 wtppm of the total weight of the CuMn sputter target (p. 4); although CE1-6 would be considered nonpreferred embodiments by Nagata, Nagata is still “relevant as prior art for all they contain” since “nonpreferred and alternative embodiments constitute prior art” (MPEP 2123, I-II). In addition Nagata states that “high-purity copper used as the material for the sputtering target of the present invention means copper having a purity of 4N (99.99%) or higher” (p. 2), thus Nagata defines the phrase “high-purity” to mean 99.99% or higher; as such, one or ordinary skill would have expected or found obvious that the “high-purity” for the Mn is then 99.99% or higher. Since Nagata is silent as to any carbon defects being present, the CuMn sputter target is considered to have a “low carbon defect” as required by the preamble of claim 1. Furthermore Nagata’s Table 1 CE2 teaches the CuMn sputter target comprises the oxygen concentration of 120 wtppm, with the oxygen concentration of 120 wtppm being sufficient as a “carbon getter” to provide the low carbon defect according to Applicant’s Specification para 0055-0056, 0058, ,0064, 0067, and 0078; as such the oxygen concentration 120 wtppm in the CuMn sputter target is “one or more active elements” that provide the CuMn sputter target to have the “low carbon defect” required by claim 1. The limitations of “the alloy addition is added as a late addition by a dissolution device after the Cu has melted, the melted Cu forming a molten bath to which the alloy addition is added later; wherein the alloy addition is directionally dispensed by the dissolution device into a stirring wake of the molten bath in a crucible during a creation of a low carbon defect CuMn ingot used to form the sputtering target; and wherein the dissolution device dispenses the alloy addition at a dissolution rate of about 17 grams/second (g/s) to about 167 g/s” are product-by-process limitations and have not been given patentable weight, since “patentability of a product [i.e. sputter target] does not depend on its method of production. If the product [i.e. sputter target] in the 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” (MPEP 2113).
With respect to claim 2, Nagata further discloses in Table 1 CE1-6 the CuMn sputter target comprises the oxygen concentration of 60-150 wtppm and a carbon concentration of 40-90 wtppm, and CE2 has the oxygen concentration of 120 wtppm and carbon concentration of 50 wtppm; Nagata is silent as to any other amounts of impurities or elements present. Thus the CuMn sputter target of Nagata is considered to have a purity of at least about 99.999%.
With respect to claims 3-7, Nagata discloses the CuMn sputter target required by claim 1. The limitations required by claims 3-7 are product-by-process limitations and have not been given patentable weight, since “patentability of a product [i.e. sputter target] does not depend on its method of production. If the product [i.e. sputter target] in the 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” (MPEP 2113).
Response to Arguments
Applicant’s Remarks on p. 7-13 filed 5/29/2026 are addressed below.
112 Rejections
On p. 7-8, Applicant points to Specification para 0024, 0052, 0055, 0062, and 0078 in explanation for claim 2 as to how the overall purity of the CuMn is at least 99.999% with respect to oxygen being about 100-4000ppm.
The explanation in view of para 0062 and 0078 is found persuasive; the previous 112(b) has been withdrawn. The Examiner suggests amending claim 2 to recite “overall purity” as is consistent with at least para 0062 and 0078.
103 Rejections
On p. 8-10, Applicant argues that the product-by-process limitations of amended claim 1 present a different product than Nagata.
The Examiner respectfully disagrees. Claim 1 recites the product of a CuMn sputter target comprises Cu with a purity of at least about 99.9999%; an alloy addition of Mn with a purity of about 99.9-99.999% and a content of up to about 5 wt%; and oxygen at a concentration of about 100-4000 ppm.
To this, Nagata teaches at least in Table 1 Comparative Example 2 (CE2) the product of the CuMn sputter target with the Cu at purity 6N (99.9999%), the Mn at 0.5 wt%, and the oxygen concentration of 120 wtppm of the total weight of the CuMn sputter target (p. 4). Nagata also teaches that Mn is “high-purity” (p. 4), and defines the phrase “high-purity” to mean 99.99% or higher (p. 2); thus one or ordinary skill would have expected or found obvious that the “high-purity” for the Mn in CE2 is then 99.99% or higher.
Therefore Nagata teaches the product recited by claim 1, and as such, the product-by-process limitations of amended claim 1 have not been given patentable weight (MPEP 2113).
The previous rejections of Nagata in view of Aoki and Otsuki have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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