GIGA SOLAR MATERIALS CORP.

Patent Trials and Appeals Board

Feb 12, 2021

2020002054 (P.T.A.B. Feb. 12, 2021)

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.
14/920,117 10/22/2015 CHIH-HSIEN YEH TSA1-PAU07US 3175
97066 7590 02/12/2021
Innovation Capital Law Group, LLP
19800 MacArthur Blvd.
Suite 280
Irvine, CA 92612
EXAMINER
CHERN, CHRISTINA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
02/12/2021 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):
eofficeaction@appcoll.com
processing@icaplaw.com
vlin@icaplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIH-HSIEN YEH, PO-YANG SHIH, and
PI-YU HSIN

____________

Appeal 2020-002054
Application 14/920,117
Technology Center 1700
____________

Before CHRISTOPHER C. KENNEDY, JEFFREY R. SNAY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Giga Solar Materials Corp. as the real
party in interest. Appeal Brief filed October 22, 2019 (“Appeal Br.”) at 4.
2 Non-Final Office Action entered May 6, 2019 (“Office Act.”) at 1.
Appeal 2020-002054
Application 14/920,117

2
CLAIMED SUBJECT MATTER
Appellant claims a conductive paste. Appeal Br. 8. Claim 1
illustrates the subject matter on appeal, and reads as follows:
1. A conductive paste comprising:
(a) about 85% to about 99.5% by weight of a
conductive metal or a derivative thereof, based on a weight of
solids;
(b) about 0.5% to about 15% by weight of a lead-free
glass frit containing tellurium-zinc-lithium-selenium-oxide,
based on the weight of solids; and
(c) an organic vehicle;
wherein the weight of solids is a total weight of the
conductive metal (a) and the lead-free glass frit (b).

Appeal Br. 19 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 21, 2019 (“Ans.”):
I. Claims 1–8 and 12–18 under 35 U.S.C. § 103 as unpatentable
over Park3 in view of Schulz;4 and
II. Claims 9–11, 19, and 20 under 35 U.S.C. § 103 as unpatentable
over Park in view of Schulz and Carroll.5

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–20 under 35 U.S.C. § 103 for reasons set forth in the Office Action,

3 Park et al., US 2016/0013331 A1, published January 14, 2016.
4 Schulz et al., US 2014/0048116 A1, published February 20, 2014.
5 Carroll et al., US 2011/0308597 A1, published December 22, 2011.
Appeal 2020-002054
Application 14/920,117

3
the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We first address the Examiner’s rejection of claims 1–8 and 12–18
under 35 U.S.C. § 103 as unpatentable over Park in view of Schulz.
Appellant presents arguments directed to independent claims 1 and 12,
which Appellant argues together. Appeal Br. 12–17. We, therefore, select
claim 1 as representative, and decide the appeal as to claims 1–8 and 12–18
based on claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites, in part, a conductive paste comprising a conductive
metal, a lead-free glass frit containing tellurium-zinc-lithium-selenium-
oxide, and an organic vehicle.
Park discloses a paste for fabricating solar cell electrodes that includes
a conductive metal powder, an organic vehicle, and a lead-free glass frit
comprising bismuth oxide, tellurium oxide, zinc oxide, lithium oxide. Park
¶¶ 7, 17, 23, 36, 40. Park discloses that the glass frit may include at least
one additional metal oxide selected from tungsten oxide, phosphorous oxide,
silicon oxide, magnesium oxide, cerium oxide, strontium oxide,
molybdenum oxide, titanium oxide, tin oxide, indium oxide, vanadium
Appeal 2020-002054
Application 14/920,117

4
oxide, barium oxide, nickel oxide, copper oxide, sodium oxide, potassium
oxide, antimony oxide, germanium oxide, gallium oxide, calcium oxide,
arsenic oxide, cobalt oxide, zirconium oxide, manganese oxide, aluminum
oxide, and boron oxide. Park ¶¶ 34, 35.
The Examiner finds that Park does not disclose that the glass frit
includes selenium oxide, and the Examiner relies on Schulz for suggesting
inclusion of selenium oxide in Park’s glass frit. Office Act. 4–5.
Schulz discloses an electro-conductive paste for producing solar cell
electrodes that includes metal (conductive) particles, a glass frit, and an
organic vehicle. Schulz ¶¶ 9–12, 25–28, 30, 53. Schulz discloses that
preferred metal oxides for inclusion in the glass frit include, among others,
lithium oxide, zinc oxide, and “tellurium oxides, such as TeO2 or TeO3,
selenium oxides, such as SeO2, or combinations thereof.” Schulz ¶ 82.
Schulz discloses that mixtures of “at least two” of such oxides “are also
preferred.” Id.
In view of this disclosure in Schulz that tellurium oxides and selenium
oxides are known to be included in combination in glass frits containing
additional metal oxides used to form a conductive paste for solar cell
electrodes, and in view of Park’s disclosure of including additional metal
oxides in Park’s glass frit that contains tellurium oxide and is used to form a
conductive paste for solar cell electrodes, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify Park’s
glass frit to include selenium oxide as “selection of a known element for its
intended use in a known environment with a predictable result.” Ans. 7; see
also Final Act. 5.
Appellant argues that “the glass frit composition art is certainly not a
Appeal 2020-002054
Application 14/920,117

5
predictable art with a reasonable expectation of success through the addition
of ‘any suitable metal oxide’ into a glass frit.” Appeal Br. 12. Appellant
argues that this unpredictability in the art is shown by Tables 3 and 4 of
Appellant’s Specification, which illustrate how changing the metal oxide
composition of a glass frit “can vary the series resistance (Rs) within about a
fifty percent change,” and “can vary the conversion efficiency (Ncell(%))
within about a 6.6% change,” which “values are extremely significant in the
solar arts.” Appeal Br. 12–13.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
We point out initially that the Examiner’s rejection is not based on
adding “any suitable metal oxide” to a glass frit as Appellant appears to
argue. Office Act. 3–5. Rather, as discussed above, the Examiner proposes
incorporating selenium oxide into Park’s glass frit comprising bismuth
oxide, tellurium oxide, zinc oxide, lithium oxide, which is used to form a
conductive paste for solar cell electrodes, in view of Park’s disclosure that
the glass frit may include additional metal oxides, and Schulz’s disclosure
that tellurium oxides and selenium oxides are preferably included in
combination in glass frits that contain additional metal oxides, such as
lithium oxide and zinc oxide, for forming a conductive paste for solar cell
electrodes. Office Act. 5. One of ordinary skill in the art reasonably would
have expected that modifying Park’s glass frit to include selenium oxide
would yield a glass frit that could be used successfully to form a conductive
paste for producing a satisfactory solar cell electrode. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements
Appeal 2020-002054
Application 14/920,117

6
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.”).
Appellant does not provide persuasive objective evidence to support
Appellant’s assertion that the glass frit art is unpredictable. Although
Appellant argues that Tables 3 and 4 of Appellant’s Specification illustrate
how changing the metal oxide composition of a glass frit can significantly
vary its series resistance (Rs) and conversion efficiency, one of ordinary
skill in the art reasonably would have expected that changing the
composition of a glass frit would affect its properties. Appellant does not
explain how or why the results presented in Appellant’s Tables 3 and 4—
even if the results do show that glass frits having different compositions
have different properties—demonstrate that Park’s glass frit could not be
successfully modified as proposed in view of the relied-upon disclosures of
Schulz. And even if variations in the composition of a glass frit result in
substantial changes in the frit’s properties as Appellant argues, we find no
evidence on the record before us demonstrating that inclusion of selenium
oxide as disclosed in Schulz in Park’s glass frit would adversely affect the
properties of Park’s glass frit to such an extent that it would no longer be
suitable for use in a conductive paste for fabricating a solar cell.
Furthermore, to the extent that modifying Park’s glass frit to include
selenium oxide as disclosed in Schulz would have involved some degree of
unpredictability, it is well-settled that, even in unpredictable arts,
“[o]bviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.” In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (quoting In re O’Farrell,
Appeal 2020-002054
Application 14/920,117

7
853 F.2d 894, 903‒04 (Fed. Cir. 1988)).
Appellant’s arguments, in fact, are undermined by Park’s explicit
disclosure that the amounts of bismuth oxide, tellurium oxide, zinc oxide,
and lithium oxide suitable for use in Park’s glass frit can vary widely, and
Park’s disclosure that at least one of 26 additional oxides can be included in
Park’s glass frit. Park ¶¶ 33–35. One of ordinary skill in the art would have
understood such disclosures in Park to implicitly indicate that wide
compositional variations in Park’s glass frit would not render the glass frit
unsuitable for use in fabricating a solar cell electrode, contrary to
Appellant’s arguments. KSR, 550 U.S.at 418 ([A]n obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for [an examiner] can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”);
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.”).
Appellant argues that “the laundry list of oxides that could be in the
glass frit of Park conspicuously excludes selenium oxide,” and, therefore,
“there is no motivation to select selenium oxide as one component of a glass
frit compound and use it in a glass frit in Park.” Appeal Br. 13.
Appellant’s arguments, however, are improperly based on Park alone,
and do not take into consideration Schulz’s disclosures. See 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”); In re Keller, 642 F.2d
Appeal 2020-002054
Application 14/920,117

8
413, 425 (CCPA 1981) (citation omitted) (The test for obviousness “is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.”); cf. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of the[] [disclosed] alternatives . . . .”).
In view of the fact that Park’s and Schulz’s glass frit are both used for
forming a conductive paste for solar cell electrodes, one of ordinary skill in
the art reasonably would have been led to modify Park’s glass frit to include
selenium oxide, in view of Park’s disclosure that the glass frit comprises
bismuth oxide, tellurium oxide, zinc oxide, lithium oxide, and can include
additional metal oxides, and Schulz’s disclosure that tellurium oxides and
selenium oxides are preferably used in combination in glass frits containing
“at least two” metal oxides.
Appellant argues that “[Schulz] does not describe that selenium oxide
would be useful in any glass frit but provides a teaching of billions of
different possible glass frit compounds as identified by the long list of
possible compounds that could be used in a glass frit.” Appeal Br. 14–15.
Appellant argues that “[Schulz] discloses combining a nearly unlimited
number of oxides in a glass frit,” and “[t]here is no direction provided in
[Schulz] that selenium oxide may be particularly useful, especially in a glass
frit similar to that of Park.” Appeal Br. 15.
Appellant’s arguments again do not identify reversible error in the
Examiner’s rejection. Schulz’s disclosure of numerous suitable metal oxides
included in glass frits for use in a conductive paste for forming solar cell
electrodes does not render any particular metal oxide, or combination of
metal oxides, any less obvious. Rather, Schulz would have suggested the
Appeal 2020-002054
Application 14/920,117

9
suitability of using any of the disclosed metal oxides and combinations
thereof in a glass frit incorporated into a conductive paste for forming solar
cell electrodes, including a combination of selenium oxide and tellurium
oxide. This is particularly the case because Schulz explicitly discloses that
selenium oxides are preferred group VI oxides that may be used together
with tellurium oxides in glass frits. Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.”); In re Susi, 440 F.2d 442,
445 (CCPA 1971) (obviousness rejection affirmed where the genus of the
prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
Appellant argues that the “improved electrical properties of Schulz
result from the addition of particular salts [to Schulz’s conductive paste],
which is the key technical means of Schulz,” but, “[i]n contrast, Park
discloses the use of glass frits comprising specific oxides in specific
proportions to achieve the desired electrical properties.” Appeal Br. 16.
Appellant argues that, therefore, the “technical means is totally different
between Schulz and Park,” and, consequently, one of ordinary skill in the art
would not have been “motivated to combine the references together.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection because the arguments do not address the rejection as
actually presented by the Examiner. As the Examiner explains in the
Answer, “Schulz was relied upon merely to teach the use of metal oxides
Appeal 2020-002054
Application 14/920,117

10
such as selenium oxide and tellurium oxide in combination together in the
glass frit used as an electro-conductive paste.” Ans. 14. Furthermore,
regardless of whether the “technical means is totally different between
Schulz and Park,” one of ordinary skill in the art nonetheless reasonably
would have been led by the relied-upon disclosures of Park and Schulz (as
discussed above) to modify Park’s glass frit to include selenium oxide, with
a reasonable expectation of using the modified glass frit to successfully form
a conductive paste for a solar cell. Appeal Br. 16.
We, accordingly, sustain the Examiner’s rejection of claims 1–8 and
12–18 under 35 U.S.C. § 103.
Rejection II
We turn now to the Examiner’s rejection of claims 9–11, 19, and 20
under 35 U.S.C. § 103 as unpatentable over Park in view of Schulz and
Carroll. To address this rejection, Appellant relies on the arguments
Appellant presents for claim 1 (discussed above), and argues that Carroll
does not cure the deficiencies of Park and Schulz. Appeal Br. 16. Because
Appellant’s arguments do not identify reversible error in the Examiner’s
rejection of claim 1 for the reasons discussed above, Appellant’s arguments
also do not identify reversible error in the Examiner’s rejection of claims 9–
11, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Park in view of
Schulz and Carroll, which we accordingly sustain.
Appeal 2020-002054
Application 14/920,117

11
CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–8, 12–18 103 Park, Schulz 1–8, 12–18
9–11, 19, 20 103 Park, Schulz,
Carroll
9–11, 19,
20

Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED