Ex Parte Bellanger et al

Patent Trial and Appeal Board

Mar 1, 2019

14242250 (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/242,250 04/01/2014
72119 7590 03/05/2019
MARK D. SARALINO (SHARP)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19THFLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Mathieu Bellanger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SHRPP0201US 9154
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIEU BELLANGER, STEPHEN DAY,
MATTHIAS KAUER, and SAMIR RIHANI
Appeal2018-004026
Application 14/242,250
Technology Center 1700
Before DONNA M. PRAISS, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-004026
Application 14/242,250
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1-9, 11-13, 16, and 19-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a photovoltaic energy harvesting device.
Claims 1 and 22, reproduced below, are illustrative of the claimed subject
matter:
1. A photovoltaic energy harvesting device comprising a
single-junction photovoltaic cell, wherein the photovoltaic cell
comprises:
a light converting element made of a high band-gap III-V
active material, and said active material has a direct band-gap in
a range of 1.12 eV to 2.0 eV and is spectrally matched to an
artificial ambient light source;
a light receiving side that is free from front metal contact
gridlines; and at least one discrete metal contact element placed
on the light receiving side that realizes power extraction from
the light converting element.
22. A photovoltaic energy harvesting device comprising a
single-junction photovoltaic cell, wherein the photovoltaic cell
comprises:
a light converting element made of (Al)GalnP III-V
active material spectrally matched to an artificial ambient light
source, and said active material has a direct band-gap in a range
of 1.12 eV to 2.0 eV, and
1 The real party in interest is identified as "Sharp Kabushiki Kaisha."
Appeal Brief of August 29, 2017 ("Br."), 2.
2 Final Office Action of May 3, 2017 ("Final Act."). In this opinion, we also
refer to the Examiner's Answer of January 9, 2018 ("Ans.") and the Reply
Brief of March 5, 2018 ("Reply Br.").
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Application 14/242,250
an area-normalised shunt resistance of said photovoltaic
cell is not less than 500 k0cm2.
Claims Appendix.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Woolf
Barnham
Seel
Gray
us 4,773,945
US 2008/0230112 Al
US 2010/0083998 Al
US 2010/0089440 Al
Sept. 27, 1988
Sept. 25, 2008
Apr. 8, 2010
Apr. 15, 2010
"PV Education (PVEducation.org Section 4.3 Resistive Effects, the Effect
of Parasitic Resistances," available at
http://www.pveducation.org/pvcdrom/ solar-cell-operation/effect-of-
parasitic-resistances and http://www.pveducation.org/pvcdrom/ solar-cell-
operation/ shunt-resistance (both last accessed 11/14/2015 as indicated in
the Final Rejection) ("PV Education").
REJECTI0NS 3
Claims 1-3, 6-9, 11, and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Seel in view of Woolf and, alternatively, over Seel
in view of Woolf and Barnham. Final Act. 6, 21.
Claims 12, 21, and 22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Seel in view of Woolf and, alternatively, in further view
3 Claims 4, 5, 13, 16, 20, 24, and 25 are rejected under 35 U.S.C. § 103 as
being unpatentable over Seel in view of Woolf and in further view of
respective additional references as well as Seel in view of Woolf and
Barnham and in further view of respective additional references. Final Act.
11, 14, 15, 17, 18, 20, 26, 29, 30, 32, 33, 34, 35. These claims are not
argued separately and they stand or fall with their respective independent
claims. See Br. 19-20; see also 37 C.F.R. § 41.37(c)(1)(iv)(20I3).
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of PV Education, and alternatively, over Seel in view of Woolf, Barnham,
and PV Education. Final Act. 12, 27.
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over
Seel in view of Woolf and, alternatively, over PV Education and in view of
Gray, and, alternatively, over Seel, Woolf, and Barnham. Final Act. 17, 33.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's § 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection of Claim 1 4
Appellants argue that the Examiner reversibly erred in rejecting claim
1 because the prior art does not teach or suggest a material that "is spectrally
matched to an artificial ambient light source." Br. 5 ( emphasis omitted).
4 Appellants do not present separate arguments claims 2, 3, 6-9, 11, and 19
and they stand or fall with claim 1 for the rejection over Seel and Woolf as
well as the rejection over Seel, Woolf, and Barnham. Br. 5-19 (arguing that
the additional references do not teach the purported "deficiencies" asserted);
see also 37 C.F.R. § 4I.37(c)(1)(iv)(2013).
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Appellants, however, do not address the Examiner's finding with regard to
Bamham in support of the obviousness rejection. Compare id. at 5-8, with
Final Act. 23 ( citing Bamham ,r 71 and finding that Bamham teaches the
limitation at issue).
An argument raised for the first time in a Reply Brief can be
considered waived if Appellants do not explain why it could not have been
raised previously. Ex parte Nakashima, 93 USPQ 2d. 1834 (BPAI 2010)
(informative) ( explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ 2d. 1473,
14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.").
In this case, Appellants do not explain why their argument with regard
to Bamham could not have been raised in the Principal Brief (see Reply Br.
2) - particularly in light of the fact that the Final Rejection specifically
discusses the teachings of Bamham in support of the rejection. Final Act.
21, 23 ( citing Bamham ,r 71 and finding that Bamham teaches a material
that is spectrally matched to an artificial ambient light source). "The reply
brief is not an opportunity to make arguments that could have been made
during prosecution, but were not. Nor is the reply brief an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not." Ex parte Borden, 93
USPQ 2d. at1477. The Examiner has not been afforded an opportunity to
respond to the new argument Appellants raised in the Reply Brief regarding
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Bamham. We accordingly are not persuaded that reversible error has been
identified in the Examiner's rejection based on Seel, Woolf, and Bamham.
See Ex Parte Hindersinn, 177 USPQ 78, 80 (Bd. App. 1971); see also 37
C.F.R. § 4I.37(c)(l)(iv) (requiring that Appellant submits arguments in the
Brief(s) specifying all of the errors made by the Examiner in the rejection). 5
Appellants next argue that the Examiner reversibly erred in finding
that Seel teaches "a light receiving side that is free from front metal contact
gridlines" as recited. Br. 8 ( emphasis omitted). Although Appellants
recognize that the figure in Seel indeed shows such a component "free from
front metal contact guidelines," Appellants assert that such feature "is
merely an artefact of supplying simplified drawings, and not a positive
teaching of Seel upon which one of ordinary skill in the art would rely as an
enabling disclosure." Id. at 8-9, 11 (arguing that "work related to the Seel
reference supports Applicant's position that the simplification of the Seel
figure is not a positive teaching and does not enable one of ordinary skill in
the art to eliminate the gridlines"), 13 ( arguing that a skilled artisan would
not rely on Seel "as an enabling disclosure").
Whether Appellants have shown that Seel is not enabled, a reference
need not be enabled to qualify as prior art for§ 103 purposes. "Under§ 103,
however a reference need not be enabled; it qualifies as prior art, regardless,
5 Based on our affirmance of the rejection based on Seel, Woolf, and
Bamham, we decline to reach Appellants' argument as moot - particularly
the argument directed to whether "the Examiner has afforded this limitation
[at issue] little or limited patentable weight, alleging that this feature is not
structural and merely is an intended use as to the type of light to which the
claimed devices are exposed." Br. 5; see also Final Act. 21-23 ( concluding
that "should it not be taken" that the limitation at issue is an intended use,
claim 1 is rejected based on Seel, Woolf, and Bamham).
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for whatever is disclosed therein." Amgen, Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003). Appellants' arguments therefore
do not identify reversible error in the Examiner's findings with regard to
Seel. We sustain the rejection of claim 1 based on Seel, Woolf, and
Bamham.
Rejection of Claim 22 6
Appellants argue that the Examiner reversibly erred in rejecting claim
22 because the recited photovoltaic cell having "an area-normalised shunt
resistance of said photovoltaic cell is not less than 500k0cm2" exhibits "an
unexpected and enhanced result of permitting high performance across the
range of ultra-low to ultra-high light levels." Br. 13, 14; Declaration of
Mathieu Bellanger of February 8, 2016 ("First Deel.") ,r 14; Declaration of
Mathieu Bellanger of December 15, 2016 ("Second Deel.") ,r 13.
Appellants, asserting unexpected results as evidence of
nonobviousness, have the burden of proving that the results are unexpected.
In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden
requires Appellants to proffer factual evidence that actually shows
unexpected results relative to the closest prior art, see In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably
commensurate in scope with the protection sought by claim 22 on appeal.
In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972).
"[I]t is not enough to show that results are obtained which differ from those
6 Appellants do not present separate arguments for claims 12 and 21,
therefore, claims 12 and 21 stand or fall with claim 22 for this rejection. Br.
13-18; see also 37 C.F.R. § 4I.37(c)(1)(iv)(2013).
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obtained in the prior art: that difference must be shown to be an unexpected
difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of
the showing relied upon by Appellants also must reasonably support the
entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005).
Here, in support of the purported unexpected results, Appellants
proffer Figure A showing certain "simulation results derived from Eqs. 12,
13, and 14 of the current application." Br. 14; First Deel. ,r 17. Neither
Appellants nor Mr. Bellanger, however, explains why these results based on
certain equations show unexpected high performance as compared to the
closest prior art. Mr. Bellanger's statement that these equations provide that
the area-normalized shunt parameter of a high band-gap III-V material such
as (Al)GainP "becomes a critical parameter" (First Deel. ,r 16) does not
explain why it supports the purported "unexpected and enhanced result of
permitting high performance across the range of ultra-low to ultra-high light
levels." Br. 13; First Deel. ,r 14; Second Deel. ,r 13. Mr. Bellanger's
statement that Figure A shows "the claimed value of area-normalized shunt
resistance is outside of the range typically encountered in convention
devices" (First Deel. ,r 18) does not support the purported "unexpected and
enhanced result of permitting high performance across the range of ultra-low
to ultra-high light levels." Br. 13; First Deel. ,r 14; Second Deel. ,r 13.
To the extent that Mr. Bellanger' s statement that "the claimed value of
area-normalized shunt resistance is outside of the range typically
encountered in convention devices" (First Deel. ,r 18) attempts to show that
the recited shunt resistance is not taught in the prior art, "the discovery of a
previously unappreciated property of a prior art composition, or of a
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scientific explanation for the prior art's functioning, does not render the old
composition patentably new to the discoverer." Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Mr. Bellanger's statements
regarding epitaxial growth and device processing do not structurally
distinguish the apparatus claim. See First Deel. ,r 18.
To the extent that Figure A is proffered to support the argument that
the prior art reference "does not provide an enabling disclosure" (Br. 17;
Second Deel. ,r 16 ("The statement in PVEducation.org., therefore, does not
provide an enabling disclosure as to how one of ordinary skill in the art
could achieve the claimed range of normalized shunt resistance in
combination with an III-V semiconductor material.")), a reference need not
be enabled to qualify as prior art for§ 103 purposes. Amgen, Inc., 314 F.3d
at 1357.
Mr. Bellanger also proffers Figure B and argues that unexpected
results are shown in the "unexpected high impact of the design rules [] on
the yield and performance of PVEH devices in low light level applications.
First Deel. ,r 19. Mr. Bellanger provides that Figure B shows "dramatic"
gains in performance "when using the design without gridlines and the shunt
resistance" compared to what was deemed as "standard design." Id. ,r 20;
Br. 16.
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
"[B]y definition, any superior property must be unexpected to be considered
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evidence of non-obviousness. Thus, in order to properly evaluate whether a
superior property was unexpected, the [fact-finder] should have considered
what properties were expected." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007). "If an applicant demonstrates that an embodiment
has an unexpected result and provides an adequate basis to support the
conclusion that other embodiments falling within the claim will behave in
the same manner, this will generally establish that the evidence is
commensurate with [the] scope of the claims." In re Kao, 639 F.3d 1057,
1068 (Fed. Cir. 2011).
In this case, neither Appellants nor Mr. Bellanger explains why such
unspecified "standard design" is the closest prior art and what would have
been expected from the closest prior art. Pfizer, 480 F.3d at 1371 ("Here,
Pfizer's evidence must fail because the record is devoid of any evidence of
what the skilled artisan would have expected."). Neither Appellants nor Mr.
Bellanger explains why the results in Figure B, based on 200 lux LED
illumination, is commensurate in scope with claim 22 which is not limited to
this particular condition. Neither Appellants nor Mr. Bellanger explains
why the results in Figure B, comparing (Al)GainP solar cells, is
commensurate in scope with the "(Al)GainP III-V" material recited in claim
22. Based on the foregoing, we are unpersuaded that the Examiner
reversibly erred in evaluating the evidence in support of the unexpected
results argument.
Appellants also argue that the prior art solar cell is silicon-based, and
the shunt resistance "is not simply interchangeable in the two types of
devices to maintain comparable performance, and so one of ordinary skill in
the art would not modify a material (III-V) low-level light harvesting device
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solely based on teachings pertaining to a silicon-based solar cell." Br. 17;
Second Deel. ,r 17. Claim 22, however, does not require the recited cell to
have a particular performance parameter. Furthermore, as the Examiner
points out, the obviousness rejection is not solely based on PV Education but
rather the combined teachings including those of Seel and Woolf. Ans. 12;
see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole."). We sustain the
rejection of claim 22.
Rejection of Claim 23
Under the heading "General Lack of Basis to Combine Secondary
References," Appellants refer to the "rejection of claim 2" and argue that the
Examiner reversibly erred in combining Gray with the other cited references.
Br. 18. The record before us, however, shows that claim 2 is rejected based
on Seel and Woolf (Final Act. 6, 8) and Seel, Woolf, and Bamham. Final
Act. 21, 23.
To the extent that Appellants attempt to argue that the Examiner
reversibly erred in combining Gray with the other references in rejecting
claim 23 (Final Act. 17 (rejecting claim 23 based on Seel, Woolf, and Gray),
33 (rejecting claim 23 based on Seel, Woolf, Bamham, and Gray)), we are
unpersuaded by Appellants' argument. Appellants' argument that "Gray
fails to teach that the sheet resistance of the InGaP emitter layer is an
important or critical design parameter for a photovoltaic energy harvesting
device as disclosed by applicants, or the preferred range of sheet resistance
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for such a device" (Br. 18) does not structurally distinguish the apparatus
cited in claim 23 (reciting "wherein said active material comprises at least an
emitter made of (Al)GalnP and a base material made of (Al)GalnP, a sheet
resistance of said emitter being not more than 1000 0/D [sic.]").
As to the remaining argument directed to the general assertion that
"[i]t is a very difficult task to identify and choose the best possible layer
characteristics for a particular solar cell application from the huge number of
possible combinations," Appellants generally refer to the prior art references
cited the by Examiner but do not address the Examiner's specific rationale
for each of the obviousness rejections. Compare Br. 19 (mentioning
references Vinod, Anderson, and Iwazaki), with Final Act. 11, 14, 15, 18,
20, 26, 29, 30, 33, 34, 35 (providing obviousness analyses including
respective rationales to combine the references). We note that "familiar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007). In this case, Appellants do not address the
Examiner's specific "articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness," Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), and no reversible error has been
identified in these aspects of the obviousness analyses.
DECISION
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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