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 .
Claim Rejections - 35 USC § 112
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 1-15 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.
Claim 1, line 1, “the sputtering target blank” lacks antecedent basis. Should this be “a sputtering target blank”?
Claim 1, lines 13 and 14, “the sulfur concentration values” lacks antecedent basis.
Claim 1, line 15, “the sulfur concentration values” lacks antecedent basis.
Claim 3, line 1, “percent” lacks antecedent basis. Should this be “percentage”?
Claim 9, lines 5 and 6, “copper alloys, copper-chromium based alloys, and/or copper-nickel-silicon-chromium based alloys” is unclear because copper alloys cover the other variants.
Claim 9, lines 10-11, is indefinite because “the sulfur concentration values” lacks antecedent basis.
Claim 9, line 12, is indefinite because “the sulfur concentration values” lacks antecedent basis.
Claim 9, lines 15 and 16, is indefinite because the phrase “wherein the predetermined sulfur concentration value range is between and includes about 0.35-0.65 wt% sulfur throughout the sputtering target blank” repeats from lines 8 and 9 of the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Segal et al. (U.S. PGPUB. 2004/072009) in view of Takahashi et al. (JP 2011-225986 A1).
At the outset it should be noted that the claims will be treated as product claims even though the claims are written as “product by process” by claims.
See MPEP 2113 Product-by-Process Claims – PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS –
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim").
INDEPENDENT CLAIM 1:
Product limitations:
Regarding claim 1, Segal et al. teach a sputtering target assembly comprising a sputtering target blank and a backing plate. The sputtering target comprising copper and sulfur. A sputtering target assembly is formed by joining the sputtering target blank to a backing plate. (Paragraph 0009, 0010, 0027, 0031-0034, 0037, 0043-0047, 0053-0054 – Sulfur can be present in the copper target from at least 100 ppm and less than 10 wt% by weight)
The purity of the target is 99.999 wt % or greater. (Paragraph 0031)
The difference between Segal et al. and claim 1 is that wherein (A) a predetermined sulfur concentration value range, (B) a predetermined variance in the sulfur concentration values from a predetermined sulfur concentration value, or (C) a predetermined percentage difference for the sulfur concentration values is less than or equal to about a predetermined percent difference threshold for sulfur concentration values throughout the sputtering target blank.
Regarding wherein (A) a predetermined sulfur concentration value range, (B) a predetermined variance in the sulfur concentration values from a predetermined sulfur concentration value, or (C) a predetermined percentage difference for the sulfur concentration values is less than or equal to about a predetermined percent difference threshold for sulfur concentration values throughout the sputtering target blank. (Claim 1), Takahashi et al. teach a Cu-Ga sputtering target with a gallium concentration variation inside the target of 1 mol% or less. (See Abstract; Paragraph 0005) This meets the claim limitation of less than or equal to about a predetermined percent difference threshold for sulfur concentration values throughout the sputtering target blank except that Ga is being used instead of S. However, recognition from Segal of substitution of one known dopant for another known dopant (i.e. S and Ga) in a copper target where both are used for similar purposes would have been obvious. Furthermore, one of ordinary skill in the art at the time the invention was made would modify Segal et al. by alloying at least one of the dopant elements listed in Segal et al. which include Ga and S at a concentration variation inside the target of 1 mol% or less as suggested by Takahashi et al. because it allows for preventing cracking of the target.
Process limitations:
As discussed above the process limitations are given no weight because patentability is directed to the product not the process steps to achieve the product. The process steps will be addressed but are given no weight. See MPEP 2113 discussed above.
Providing raw material – Inherent to the formation of a billet. (Paragraph 0043-0045)
Raw materials comprising copper and sulfur- Selection of materials for the billet. (Paragraph 0043-0045)
Melting the raw materials – Inherent to the formation of a billet. (Paragraph 0043-0045)
Casting the raw materials to produce an ingot – Inherent to achieving the billet. The billet can be construed as an ingot. (Paragraph 0043-0045)
Applying thermochemical processing at a predetermined temperature to the ingot – (Paragraph 0047 – hot forging)
Joining the sputtering target blank to a backing plate – (Paragraph 0037)
The purity of the molten alloy and ingot is about 99.999wt% - (Paragraph 0045)
DEPENDENT CLAIM 2:
As discussed above the process limitations are given no weight because patentability is directed to the product not the process steps to achieve the product. The process steps will be addressed but are given no weight. See MPEP 2113 discussed above.
Process limitation:
Raw material is comprised of up to about 5 wt% sulfur – (Paragraph 0045)
DEPENDENT CLAIM 3:
The difference not yet discussed is wherein the predetermined percent difference threshold for sulfur concentration values is 30% or less throughout the sputtering target blank.
Regarding claim 3, Takahashi et al. teach a Cu-Ga sputtering target with a gallium concentration variation inside the target of 1 mol% or less. (See Abstract; Paragraph 0005) This meets the claim limitation of the predetermined percent difference threshold for sulfur concentration values is 30% or less throughout the sputtering target blank except that Ga is being used instead of S. However, recognition from Segal of substitution of one known dopant for another known dopant (i.e. S and Ga) in a copper target where both are used for similar purposes would have been obvious. Furthermore, one of ordinary skill in the art at the time the invention was made would modify Segal et al. by alloying at least one of the dopant elements listed in Segal et al. which include Ga and S at a concentration variation inside the target of 1 mol% or less as suggested by Takahashi et al. because it allows for preventing cracking of the target.
DEPENDENT CLAIM 4:
As discussed above the process limitations are given no weight because patentability is directed to the product not the process steps to achieve the product. The process steps will be addressed but are given no weight. See MPEP 2113 discussed above.
Process limitation:
Regarding claim 4, Segal et al. teach wherein the sputtering target blank is joined to the backing plate using at least one or more of solder bonding, brazing, mechanical methods, or diffusion bonding. (Paragraph 0037)
DEPENDENT CLAIM 5:
The difference not yet discussed is wherein a bond strength between the sputtering target blank and the backing plate of the sputtering target assembly is between about 25 ksi – 35 ksi.
Regarding claim 5, Segal et al. teach wherein a bond strength between the sputtering target blank and the backing plate of the sputtering target assembly is between about 25 ksi – 35 ksi. (Paragraph 0032, 0037)
DEPENDENT CLAIM 6:
The difference not yet discussed is wherein the predetermined sulfur concentration value range is between and includes about 0.35-0.65 wt% sulfur throughout the ingot, the predetermined variance in the sulfur concentration values is about 15% or less, and predetermined percent difference threshold for sulfur concentration values is 30% or less.
Regarding claim 6, Takahashi et al. teach a Cu-Ga sputtering target with a gallium concentration variation inside the target of 1 mol% or less. (See Abstract; Paragraph 0005) This meets the claim limitation of the predetermined percent difference threshold for sulfur concentration values is 30% or less throughout the sputtering target blank except that Ga is being used instead of S. However, recognition from Segal of substitution of one known dopant for another known dopant (i.e. S and Ga) in a copper target where both are used for similar purposes would have been obvious. Furthermore, one of ordinary skill in the art at the time the invention was made would modify Segal et al. by alloying at least one of the dopant elements listed in Segal et al. which include Ga and S at a concentration variation inside the target of 1 mol% or less as suggested by Takahashi et al. because it allows for preventing cracking of the target.
DEPENDENT CLAIM 7:
The difference not yet discussed is wherein the predetermined variance in the sulfur concentration values is about 10% or less, and predetermined percent difference threshold for sulfur concentration values is about 15% or less.
Regarding claim 7, Takahashi et al. teach controlling gallium concentration variation to 1 mol % or less throughout the sputtering target which is substantially below the claimed limitations. The only difference is that Ga is used instead of S. However, recognition from Segal of substitution of one known dopant for another known dopant (i.e. S and Ga) in a copper target where both are used for similar purposes would have been obvious. Furthermore, one of ordinary skill in the art at the time the invention was made would modify Segal et al. by alloying at least one of the dopant elements listed in Segal et al. which include Ga and S at a concentration variation inside the target of 1 mol% or less as suggested by Takahashi et al. because it allows for preventing cracking of the target.
DEPENDENT CLAIM 8:
The difference not yet discussed is the overall strain condition in the sputtering target blank is between 70-90%.
Regarding claim 8, Segal et al. teach imparting strain to the target via ECAE this is about 70-90% overall strain condition. (Paragraph 0054)
INDEPENDENT CLAIM 9:
Regarding claim 9, Segal et al. teach a sputtering target assembly, comprising a sputtering target blank (Paragraph 0034) and a backing plate (Paragraph 0037); the sputtering target blank is comprised of copper (Paragraph 0034), and the sputtering target blank is further comprised of sulfur and/or sulfur compounds (Paragraph 0034); the backing plate is comprised of at least one of copper, copper alloys, copper-chromium based alloys, and/or copper-nickel-silicon-chromium based alloys (Paragraph 0033); the sputtering target blank has an overall strain condition between about 70-90%. (Paragraph 0054)
The difference between claim 9 and Segal et al. is that the sputtering target blank has a predetermined sulfur concentration value range between and including about 0.35-0.65 wt% throughout the sputtering target blank is not discussed (Claim 9), wherein (A) a predetermined sulfur concentration value range, (B) a predetermined variance in the sulfur concentration values from a predetermined sulfur concentration value, or (C) a predetermined percentage difference for the sulfur concentration values is less than or equal to about a predetermined percent difference threshold for sulfur concentration values throughout the sputtering target blank is not discussed (Claim 9) and wherein the predetermined sulfur concentration value range is between and includes about 0.35-0.65 wt% sulfur throughout the sputtering target blank and the predetermined variance in the sulfur concentration values is about 15% or less throughout the sputtering target blank is not discussed.
DEPENDENT CLAIM 10:
The difference not yet discussed is wherein the sputtering target blank has a purity of about 99.999 wt% or higher.
Regarding claim 10, Segal et al. teach wherein the sputtering target blank has a purity of about 99.999 wt% or higher. (Paragraph 0031)
DEPENDENT CLAIM 11:
As discussed above the process limitations are given no weight because patentability is directed to the product not the process steps to achieve the product. The process steps will be addressed but are given no weight. See MPEP 2113 discussed above.
Process limitation:
Raw material is comprised of up to about 5 wt% sulfur – (Paragraph 0045)
DEPENDENT CLAIM 12:
As discussed above the process limitations are given no weight because patentability is directed to the product not the process steps to achieve the product. The process steps will be addressed but are given no weight. See MPEP 2113 discussed above.
Process limitation:
Regarding claim 12, Segal et al. teach wherein the sputtering target blank is joined to the backing plate using at least one or more of solder bonding, brazing, mechanical methods, or diffusion bonding. (Paragraph 0037)
DEPENDENT CLAIM 13:
The difference not yet discussed is wherein a bond strength between the sputtering target blank and the backing plate of the sputtering target assembly is between about 25 ksi – 35 ksi.
Regarding claim 13, Segal et al. teach wherein a bond strength between the sputtering target blank and the backing plate of the sputtering target assembly is between about 25 ksi – 35 ksi. (Paragraph 0032, 0037)
DEPENDENT CLAIM 14:
The difference not yet discussed is wherein the predetermined sulfur concentration value range is between and includes about 0.35-0.65 wt% sulfur throughout the ingot, the predetermined variance in the sulfur concentration values is about 15% or less, and predetermined percent difference threshold for sulfur concentration values is 30% or less.
Regarding claim 14, Takahashi et al. teach a Cu-Ga sputtering target with a gallium concentration variation inside the target of 1 mol% or less. (See Abstract; Paragraph 0005) This meets the claim limitation of the predetermined percent difference threshold for sulfur concentration values is 30% or less throughout the sputtering target blank except that Ga is being used instead of S. However, recognition from Segal of substitution of one known dopant for another known dopant (i.e. S and Ga) in a copper target where both are used for similar purposes would have been obvious. Furthermore, one of ordinary skill in the art at the time the invention was made would modify Segal et al. by alloying at least one of the dopant elements listed in Segal et al. which include Ga and S at a concentration variation inside the target of 1 mol% or less as suggested by Takahashi et al. because it allows for preventing cracking of the target.
DEPENDENT CLAIM 15:
The difference not yet discussed is wherein the predetermined variance in the sulfur concentration values is about 10% or less, and predetermined percent difference threshold for sulfur concentration values is about 15% or less.
Regarding claim 15, Takahashi et al. teach controlling gallium concentration variation to 1 mol % or less throughout the sputtering target which is substantially below the claimed limitations. The only difference is that Ga is used instead of S. However, recognition from Segal of substitution of one known dopant for another known dopant (i.e. S and Ga) in a copper target where both are used for similar purposes would have been obvious. Furthermore, one of ordinary skill in the art at the time the invention was made would modify Segal et al. by alloying at least one of the dopant elements listed in Segal et al. which include Ga and S at a concentration variation inside the target of 1 mol% or less as suggested by Takahashi et al. because it allows for preventing cracking of the target.
The motivation for utilizing the feature of Takahashi et al. is that it allows for preventing cracking of the target. (See Abstract)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Segal et al. by utilizing the features of Takahashi et al. because it allows for preventing cracking of the target.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY GLENN MCDONALD whose telephone number is (571)272-1340. The examiner can normally be reached Hoteling: M-Th every Fri off..
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/RODNEY G MCDONALD/Primary Examiner, Art Unit 1794
RM
January 23, 2026