Ex Parte Day et al

Patent Trial and Appeal Board

Aug 15, 2017

13406087 (P.T.A.B. Aug. 15, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/406,087 02/27/2012 Stephen DAY SHRPP0177US 1966
72119 7590 08/17/2017
MARK D. SARALINO ( SHARP )
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
BOURKE, ALLISON
ART UNIT PAPER NUMBER
1757
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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 STEPHEN DAY, JAMES ANDREW ROBERT DIMMOCK, and
MATTHIAS KAUER
Appeal 2015-008119
Application 13/406,0871
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection
under 35 U.S.C. § 103(a) of claims 1-5, 7-10, 13, 14, and 16-19 over Chin.2
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify Sharp Kabushiki Kaisha as the real party in interest.
Appeal Br. 2.
2 Chin et al., US 2009/0194160 Al, published August 6, 2009.
Appeal 2015-008119
Application 13/406,087
THE INVENTION
The subject matter of the claims on appeal relates to a non-close
packed vertical junction photovoltaic device. Specification filed February
27, 2012 (“Spec.”), Abstract.
Claim 1—the sole independent claim—is representative.
1. A photovoltaic device, comprising:
a substrate;
a two-dimensional array of elongate nanostructures
extending substantially perpendicularly from a surface of the
substrate; and
a thin film solar cell disposed over the nanostructures
such that the thin film solar cell substantially conforms to the
topography of the nanostructures;
wherein the thin film solar cell has a non-close packed
configuration in which an average separation of nearest
neighbor solar cell coated nanostructures is greater than zero
and less than a vacuum wavelength of light corresponding to a
band gap of absorption of the thin film solar cell; and
each solar cell coated nanostructure comprises the
combined elongate nanostructure and a thin film solar cell
portion that conforms to the nanostructure.
Appeal Brief filed March 26, 2015 (“Appeal Br.”), Claims App’x 1.
DISCUSSION3
We have reviewed the grounds of rejection set forth by the Examiner,
Appellants’ arguments, and the Examiner’s response. On this record, we are
unpersuaded that the Examiner erred reversibly and we determine that a
3 In this discussion, we refer to the Specification, the Final Office Action
dated October 28, 2014 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer issued July 23, 2015 (“Ans.”), and the Reply Brief filed September
11,2015 (“Reply Br.”).
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Application 13/406,087
preponderance of the evidence supports the Examiner’s conclusion of
obviousness for the reasons expressed by the Examiner in the Final Office
Action and the Examiner’s Answer. We add the following primarily for
emphasis.
The Examiner relies on Chin’s disclosure of: (1) a photovoltaic
device comprising a substrate (104) having a two-dimensional array of
elongate nanostructures (106) with a thin film solar cell (108, 116, 114)
conformally disposed over the nanostructures (Final Act. 2-3 (citing Chin
Fig. 1)), (2) the use of amorphous silicon to form the thin film solar cell
(Final Act. 3^4 (citing Chin 1 64)), and (3) the dimensional ranges in the
size of nanostructures, their spacing from one another, and the thicknesses
for the layers forming the thin film solar cell (Final Act. 2-3 (citing Chin
11 63-64, 66)).
The Examiner further finds that values disclosed in Chin for the size
of the nanostructures, their spacing, and the thicknesses for the layers
forming a thin solar cell using amorphous silicon encompass those disclosed
in the Specification as meeting the limitations of the claim with respect to
the recited average separation in claim 1. Final Act. 2-3, 5 (citing Chin
11 63-64, 66; Spec. H 197-198, Figs. 7-8). On the basis of these
overlapping ranges, the Examiner determines claim 1 is prima facie obvious
over Chin. Final Act. 3.
Appellants proffer four general arguments contending that the
Examiner has erred.
First, Appellants contend that the Examiner has failed to properly
apply the definition of “solar cell coated nanostructures” because Chin’s
paragraph 66 describes distances between nanostructures prior to coating
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Application 13/406,087
with the thin film solar cell, and paragraphs 63 and 64 only relate to the
thicknesses of conformal layers and not to the average separation as claimed.
Appeal Br. 4-5.
Appellants’ argument is not persuasive of reversible error, as the
rejection is grounded on the ranges of distances between nanostructures
prior to coating and the ranges of coating thicknesses encompass values that
would provide solar cell coated nanostructures separated from one another
as claimed. In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (A prior
art reference’s disclosure is not limited to its examples.); In re Boe, 355 F.2d
961, 965 (CCPA 1966) (All of the disclosures in a prior art reference “must
be evaluated for what they fairly teach one of ordinary skill in the art.”); see
also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). As discussed above, Chin’s disclosures as a whole suggest
solar cell coated nanostructures separated from one another.
Second, Appellants contend that the Examiner errs in limiting the
invention to the specific numerical range, i.e., a separation of 100-500 nm,
as described in the Specification for when amorphous silicon is used.
Appeal Br. 5-7. Appellants argue that the invention is not limited to such a
numerical range, and that it is improper to incorporate numerical limitations
comparable to those set forth in the dependent claims under the doctrine of
claim differentiation. Id. Appellants further argue that the claims are non-
obvious because the ranges of average separation value may vary for
substances other than amorphous silicon and because Chin does not teach
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Application 13/406,087
how to determine the average separation value for a given active region,
particularly in the manner disclosed in the Specification. Appeal Br. 6-7.
Appellants’ argument that the Examiner erred in improperly
incorporating a specific numerical range that is associated with a particular
substance is unpersuasive because a prima facie case of obviousness based
on encompassing ranges grounded on the narrower, specific numerical range
for when amorphous silicon is used suffices to render obvious subject matter
within the broader range, including that outside of and not limited to the
specific numerical range. Appellants’ further arguments as to possible
differences in values for use of materials other than amorphous silicon and
the lack of teaching as to separation values are unpersuasive of error in the
rejection grounded on use of amorphous silicon and on overlapping ranges
as to the separation distance for when amorphous silicon is used.
Third, Appellants argue that the range of potential separation
parameters is so broad that Chin’s disclosure would not lead one skilled in
the art “to arrive at the claimed invention without vast trial and error” and
that, accordingly, there is no prima facie case of obviousness. Appeal Br. 6-
7. Appellants contend that “[a]n overlapping range is non-obvious when the
range suggested in the prior art is so broad as to encompass a very large
number of possible compositions.” Appeal Br. 8 (citing M.P.E.P.
§ 2144.05(1)); see also Reply Br. 5. Appellants further argue that “[t]he
criticality of the claimed invention is evident in Fig. 8 . . . which shows how
the average separation value . . . corresponds to the optimal efficiency” and
that there are unexpected results demonstrated in Figure 8 over what is
disclosed or suggested in Chin. Appeal Br. 8-9.
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Appellants’ argument that there is no prima facie case of obviousness
because of the breadth of ranges is unpersuasive of error because the cited
portion of the M.P.E.P. relates to differing compositions rather than
structures with differing dimensions, and Appellants proffer no authority or
persuasive argument for extending the cited principle in this manner.
Further, on this record, in the absence of persuasive evidence as to the level
of experimentation required, we are unpersuaded that more than routine
experimentation would be required of the artisan of ordinary skill in the art.
As to Appellants’ contentions of criticality and unexpected results,
“[w]hen the PTO shows prima facie obviousness, the burden then shifts to
the applicants] to rebut.” In reMayne, 104 F.3d 1339, 1342 (Fed. Cir.
1997). In satisfying this burden, it is not enough for Appellants to show
merely that the invention recited in the claims and the prior art differ. The
difference must be shown to have been truly unexpected from the
perspective of a person of ordinary skill in the art. In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“The 32^43% increase in stress-rupture life . . .
does not represent a ‘difference in kind’ that is required to show unexpected
results.”) (quoting In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)).
Turning to the proffered result of increased efficiency, on this record,
we find the increase from 8.4 % to 9.6 % (see Spec. Fig. 8) similarly
insufficient to represent a difference in kind, particularly where a greater
increase was insufficient in Harris. Further, as highlighted by the Examiner
(Ans. 3), Appellants do not direct us to persuasive evidence that a person of
ordinary skill in the art would have considered the results to be unexpected.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument. . . cannot take the place of evidence.”). We, likewise, are
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Application 13/406,087
directed to no statement in the Specification that the result was unexpected
or surprising. See generally Appeal Br.; Reply Br. Appellants’ arguments
that Chin fails to disclose or suggest the relied on results are also inapposite
to whether the result would have been unexpected at the time of the
invention because the knowledge of one of ordinary skill was not limited to
Chin’s disclosure at a date which was prior to the filing date of the instant
application.
Appellants’ further arguments in the Reply Brief that the Examiner
improperly read Figure 8 in isolation, and that the progression of Figure 7 to
Figure 8 demonstrates an unexpected result are similarly deficient to those
raised in the Appeal Brief because there is no persuasive evidence that the
results were in fact unexpected at the time of the invention.
Fourth, Appellants argue that the commonality of materials used, i.e.,
amorphous silicon, is insufficient to lead one of ordinary skill in the art to
the claimed invention because the claimed average separation is an
independent feature, and there is no teaching in Chin to provide the claimed
average separation based on the material’s band gap. Appeal Br. 9-10.
Appellants further argue that the Examiner’s reasoning “ignores the matter
of determination of the ‘average separation value’, which is not a property of
the materials but rather a parameter of the configuration of the solar cell
coated nanostructures.” Reply Br. 5.
Appellants’ arguments are unpersuasive of reversible error because
the rejection is grounded on the use of the same materials and on the prima
facie obviousness of those materials in structures of dimensions
encompassed by the ranges disclosed in Chin. It is, accordingly, immaterial
that the average separation is not a property of the materials. Further, the
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Application 13/406,087
manner in which the average separation value is determined is not limiting,
and there is no persuasive argument that the claimed invention is not prima
facie obvious on the basis of encompassing ranges that lead to devices using
amorphous silicon to form the thin film solar cell with an average separation
meeting the recited limitation as expressed in claim 1.
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness of the claims.
DECISION
The Examiner’s decision rejecting claims 1-5, 7-10, 13, 14, and lb-
19 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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