Ex Parte HURWITT - Page 11




         Appeal No. 2001-2455                                                       
         Application 08/439,490                                                     



         been motivated to have employed Urbanek’s tension maintaining              
         support structure in the apparatuses of the primary references.            
         See Kotzab, 217 F.3d at 1371, 55 USPQ2d at 1317 (“[P]articular             
         findings must be made as to the reason the skilled artisan, with           
         no knowledge of the claimed invention, would have selected the[]           
         components for combination in the manner claimed.”).                       
                   The Federal Circuit requires that the Board set forth            
         its findings and the grounds thereof as supported by the agency            
         record, and explain its application of the law to the found                
         facts.  In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1433-34            
         (Fed. Cir. 2002).  In the present case, the record is simply               
         devoid of any findings by the examiner as to why one of ordinary           
         skill in the art would have been motivated to have utilized                
         Urbanek’s tension supporting structure in the apparatuses of the           
         primary references.                                                        
                                      Claim 14                                      
                   Claim 14 is directed to a “removable” sputtering target          
         assembly which comprises both a replaceable target unit and a              
         cooling jacket connected to the back of the target unit.  Landau           
         discloses a sputtering apparatus wherein the target is removable.          
         See, e.g., claim 1.  However, there is no indication that a                

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