Ex Parte Day et alDownload PDFPatent Trial and Appeal BoardAug 15, 201713406087 (P.T.A.B. Aug. 15, 2017) Copy Citation 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.”). 2 Appeal 2015-008119 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 3 Appeal 2015-008119 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 4 Appeal 2015-008119 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. 5 Appeal 2015-008119 Application 13/406,087 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 6 Appeal 2015-008119 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 7 Appeal 2015-008119 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 8 Copy with citationCopy as parenthetical citation