Ex Parte Lianos et al

Patent Trials and Appeals Board

Mar 22, 2019

12986181 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/986,181
67690 7590
Curran Patent Law
POBox4604
Wayne, NJ 07474
FILING DATE FIRST NAMED INVENTOR
01/07/2011 Panagiotis Lianos
03/26/2019
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.
10012-0003 5826
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
kevin@curranpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PANAGIOTIS LIANOS and ELIAS STATHATOS 1
Appeal 2018-003316
Application 12/986, 181
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS,
JAMES C. HOUSEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as Brite Hellas AE. App. Br.
2.
Appeal 2018-003316
Application 12/986, 181
Appellant requests our review under 35 U.S.C. § I34(a) of the Examiner's
decision rejecting claims 1-14 and 3 7-57. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth
below:
1. A method of forming a photoelectrochemical solar cell, the method
compnsmg:
forming a titanium dioxide layer by inkjet printing on a first
electrode, the titanium dioxide layer comprising at least one thin
transparent film of controlled thickness of about 0.2µm, wherein
forming the titanium dioxide layer comprises inkjet printing a colloidal
solution formed under ambient conditions and comprising titanium
isopropoxide undergoing solvolysis and polymerization, wherein the
inkjet printing occurs prior to completion of polymerization of the
titanium isopropoxide;
adding a dye to the titanium dioxide layer;
forming a solid gel above the titanium dioxide layer, the solid gel
comprising an electrolyte layer; and
disposing a second electrode above the solid gel.
App. Br. (Claims Appendix, Al).
The Examiner relies on the following prior art references as evidence of
unpatentability:
Yamanaka et al.
Usui et al.
Thong et al.
Lianos et al.
US 2008/0202585 Al
US 2009/0293953 Al
US 2010/0101644 Al
WO 2004/095481 Al
2
Aug.28,2008
Dec. 3, 2009
Apr. 29, 2010
Nov.4.2004
Appeal 2018-003316
Application 12/986, 181
THE REJECTIONS
1. Claims 1-14 and 37-57 are rejected under 35 U.S.C. §112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
2. Claims 1-8, 11-13, and 37-57 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Lianos in view of U sui.
3. Claim 9 and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos in view of Usui as applied to claims 1-8, 11-13,
and 37-57 above, and in further view of Yamanaka.
4. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Lianos in view ofUsui, as applied to claims 1-8, 11-13, and 37-57
above, and in further view of Thong.
ANALYSIS
As properly pointed out by Appellant, for example, on pages 10 and 11 of the
Appeal Brief, the Examiner does not meaningfully address submitted evidence
(specifically, the Stathatos Declaration Under 37 C.F.R. § 1.132, filed June 3, 2016),
which constitutes harmful error. Cf In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir.
2007). For example, with regard to Rejection 1, the Declarant, Elias Stathatos,
states at length in paragraphs 29-30 (on pages 12-13 of the Declaration), how
certain mixtures of ingredients support corresponding ratios, indicating sufficient
written descriptive support. The Examiner does not address this point made in the
Declaration. We thus reverse each rejection based upon this harmful error, and
return this application to the jurisdiction of the Examiner to properly address the
Declaration in its entirety as submitted by Appellant. We need not reach the other
issues raised in the record at this time in making our determinations herein.
3
Appeal 2018-003316
Application 12/986, 181
Each rejection is reversed.
DECISION
ORDER
REVERSED
4