Hyung-Jun Song et al.

Patent Trials and Appeals Board

Dec 11, 2019

14891024 - (D) (P.T.A.B. Dec. 11, 2019)

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.
14/891,024 11/13/2015 Hyung-Jun SONG 5107.11US01 9985
62274 7590 12/11/2019
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
33 South Sixth Street
Suite 4540
Minneapolis, MN 55402
EXAMINER
KANG, TAE-SIK
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/11/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HYUNG-JUN SONG,
KINAM JUNG, GUNHEE LEE, YOUNGJUN KO,
JONG-KWON LEE, CHANGHEE LEE, and MAN SOO CHOI

Appeal 2019-001822
Application 14/891,024
Technology Center 1700
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
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The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, 4–11, and 13–16.2, 3 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
I. BACKGROUND
The subject matter on appeal relates to an improved organic
photovoltaic cell including a nano-bump structure that enhances plasmonic
effects and light absorption efficiency (Specification filed November 13,
2015 (“Spec.”) at 1, ll. 7–11). Annotated Figure 1 (Drawings filed
November 13, 2015) illustrates the claimed subject matter, as follows:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42—namely, Global Frontier Center for Multiscale Energy
Systems and Seoul National University R&DB Foundation (Application
Data Sheet filed November 13, 2015 at 6–7), which are also identified as the
real parties in interest (Appeal Brief filed August 21, 2018 (“Appeal Br.”) at
3).
2 See Appeal Br. 5–17; Reply Brief filed December 28, 2018 (“Reply Br.”)
at 3–6; Final Office Action entered March 8, 2018 (“Final Act.”) at 3–11;
Examiner’s Answer entered October 29, 2018 (“Ans.”) at 4–12.
3 Non-elected, withdrawn claims 17, 19, and 20 are incorrectly included in
the Claims Appendix (Appeal Br. 20–21). See 37 C.F.R. § 41.37(c)(1)(v).
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Figure 1 above depicts an organic photovoltaic cell in which metal
nanoparticles 16 are bound to a first electrode layer 11, which is disposed on
a substrate 10, to form nano-bumps, which allow hole transport layer 12 to
form a nano-bump structure (Spec. 5, ll. 23–30). As explained in the
Specification, a photoactive layer 13 is formed on the hole transport layer 12
to provide a fine uneven structure and then a second electrode layer 14 is
formed on the photoactive layer 13 to complete the cell’s fabrication (id. at
5, l. 30–6, l. 2).
Claim 1, the sole independent claim on appeal, is reproduced from the
Claims Appendix to the Appeal Brief, as follows:
1. An organic photovoltaic cell comprising
a first electrode layer [11] formed on a substrate [10],
metal nanoparticles [16] bound to a surface of the first
electrode layer [11] to form nano-bumps and an exposed portion
of the surface around the nano-bumps,
a hole transport layer [12] formed on the nano-bumps
and the exposed portion of the surface of the first electrode
layer [11] to form a nano-bump structure with the nano-bumps
and the exposed portion of the surface of the first electrode layer
[11] between the nano-bumps fully covered by the hole transport
layer [12] wherein the hole transport layer [12] has a thickness
and comprises at least one metal oxide film selected from
tungsten, molybdenum, vanadium, ruthenium, nickel, and
chromium oxide films,
a photoactive layer [13] formed on the hole transport layer
[12] wherein the photoactive layer [13] has an uneven structure
along the hole transport layer [12] and wherein the nanobump
structure has a height from about 5 nm to about 100 nm
resulting in the uneven structure, and
a second electrode layer [14] formed on the photoactive
layer [13].
(Appeal Br. 18 (bracketed reference numerals and emphases added)).
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II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103, as
follows:
A. Claims 1, 2, 4–7, 9–11, and 13–16 as unpatentable over Wu et
al.4 (“Wu”) and Choy et al.5 (“Choy”); and
B. Claim 8 as unpatentable over Wu, Choy, and Huang et al.6
(“Huang”).
(Ans. 4–12; Final Act. 3–11).
III. DISCUSSION
1. The Examiner’s Position
The Examiner finds that Wu describes an organic photovoltaic cell
including most of the limitations recited in claim 1 but acknowledges that
the layer in Wu corresponding to the Appellant’s “hole transport layer” is
not “at least one metal oxide film selected from tungsten, molybdenum,
vanadium, ruthenium, nickel, and chromium oxide films” (Ans. 4–6).
Specifically, the Examiner finds that Wu teaches a poly(3,4-ethylene-
dioxythiophene):poly(styrene sulfonate) (PEDOT:PSS) layer, which is a
hole transport layer, but is not a metal oxide film as specified in clam 1 (id.
at 5–6). To resolve this difference, the Examiner relies on Choy, which was

4 J. Wu et al., Surface Plasmonic Effects of Metallic Nanoparticles on the
Performance of Polymer Bulk Heterojunction Solar Cells, 5 ACS Nano 959–
67 (2011).
5 US 2014/0061550 A1, pub. Mar. 6, 2014.
6 Y. Huang et al., Mitigation of Metal-Mediated Losses by Coating Au
Nanoparticles with Dielectric Layer in Plasmonic Solar Cells, 3 RSC Adv.
16080–88 (2013).
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found to teach that PEDOT:PSS, along with molybdenum oxide, vanadium
oxide, and tungsten oxide, are hole transport layer materials in an organic
solar cell (id. at 6). Based on these findings, the Examiner concludes (id.):
It would have been obvious to one of ordinary skill in the
art . . . to employ the molybdenum oxide, vanadium oxide, or
tungsten oxide as the hole transport layer in WU as taught by
CHOY, because the selection of a known material based on its
suitability for its intended use supported a prima facie
obviousness determination (MPEP 2144).
3. The Appellant’s Contentions
The Appellant contends that the applied prior art references would not
have rendered claim 1’s subject matter obvious because, contrary to the
Examiner’s finding, Wu does not teach “metal nanoparticles bound to a
surface of the first electrode layer,” as recited in the claim (Appeal Br. 10–
12). According to the Appellant, “[a]t no time does Wu teach or suggest that
the nanoparticles themselves are bound to an electrode—rather the Au NP
[nanoparticles] solution is embedded in PEDOT:PSS and then spin-coated
onto the ITO [indium tin oxide]-coated glass substrate” and that “[n]one of
this indirect association with the electrode constitutes binding the
nanoparticles to an electrode or being ‘bound’ to an electrode as the term
would be construed in light of the present application” (id. at 11).
The Appellant also argues that, contrary to the Examiner’s finding,
Wu does not teach a hole transport layer formed on nano-bumps created by
the nanoparticles to form an uneven nano-bump structure, as required by
claim 1 (id. at 12). The Appellant urges that, instead, Wu teaches away from
such a structure because “Wu strives to make the purported hole transfer
layer flat or smooth—specifically ‘to reduce the surface roughness of the
composite buffer layer’” (id.). That is, the Appellant argues that Wu teaches
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away from uneven surfaces because Wu teaches adding more material to the
PEDOT:PSS layer that was previously spin-coated on the substrate (id. at
13). The Appellant argues that because Wu does not teach a nano-bump
structure with an uneven surface, it follows that Wu does not teach a nano-
bump structure having a height of about 5 nm to about 100 nm (id.).
4. Opinion
We disagree with the Appellant concerning the “bound” limitation
(i.e., “metal nanoparticles bound to a surface of the first electrode layer to
form nano-bumps bound” as recited in claim 1) but agree as to the “nano-
bump structure” having an “uneven structure” limitations as required by the
claim. Our reasons follow.
Wu’s Figure 2(a) is reproduced, as follows:

(Wu 960). Wu’s Figure 2(a) above depicts an organic photovoltaic device
comprising: a glass substrate; ITO coated on the glass substrate; a
composite buffer layer on the ITO obtained by blending a gold nanoparticles
(Au NPs) solution with a PEDOT:PSS solution, spin coating the blend
solution, annealing, and then spin-coating an additional thinner layer of
PEDOT:PSS as a capping layer “to reduce the surface roughness of the
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composite layer”; a blended poly(3-hexylthiophene) (P3HT):[6,6]-phenyl-
C61-butyric acid methyl ester (PCBM) layer; and cathode (30 nm Ca and 100
nm Al) (id. at 959 (Abstract), 960, 965–56 (“METHODS”)).
As discussed above, the Examiner finds that Wu’s PEDOT:PSS in the
composite buffer layer is a hole transport layer (Ans. 4). Although the
Appellant is correct that Wu’s PEDOT:PSS exists as part of a composite
buffer layer together with the Au NPs, Wu teaches that “the distribution of
the AU NPs (white dots) in the modified PEDOT:PSS layer was uniform”
(Wu 960, right column). Because the Au NPs are uniformly distributed in
the composite buffer layer, it would reasonably appear that at least some Au
NPs would be in contact with and “bound” to the ITO layer, which the
current Specification discloses as a suitable “first electrode layer” material
(Spec. 6, ll. 23–26), after annealing and capping with additional
PEDOT:PSS. The Appellant does not direct us to contrary evidence, and,
indeed, Wu’s Figure 2(a) shows Au NPs in contact with the ITO layer in a
“bound” fashion upon complete fabrication.7 In re Best, 562 F.2d 1252,
1255 (CCPA 1997) (“Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”) (internal footnote omitted).
The Appellant refers to a description in the Specification where the
nanoparticles are disclosed as being “electrically charged and bound in the
form of dry aerosols to the surface of the electrode layer” (Appeal Br. 11–12

7 See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (explaining that
drawings may be used as disclosure).
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(quoting Spec. 7, ll. 3–5)). But that description is merely exemplary (id. at
7, l. 3 (“[f]or example”)) and, therefore, does not serve as a specific
definition for the disputed term “bound.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e look to the specification to see
if it provides a definition for claim terms, but otherwise apply a broad
interpretation. As this court has discussed, this methodology produces
claims with only justifiable breadth.”).
For these reasons, we are in complete agreement with the Examiner as
to the “bound” issue.
We reach a different conclusion as to the issue concerning a “nano-
bump structure” having an “uneven structure” as recited in claim 1. The
Examiner is correct that the phrase “[t]o reduce the surface roughness of the
composite buffer layer” (Wu 966) would, when read in isolation, indicate
that some surface roughness might be present after reduction. But in
calculating Wu’s PEDOT:PSS/Au nanoparticles composite structure’s
height after spin coating the capping layer, the Examiner finds that the total
height would be ca. 50 nm plus ca. 50 nm, which would equal ca. 100 nm
(Ans. 11). This finding appears to be based on Wu’s teaching that each
buffer layer’s thickness was ca. 50 nm, with the nanoparticles having an
average particle size of ca. 45 ± 5 nm (id. at 960). Given these findings, it is
not likely—i.e., the preponderance of the evidence does not support—that
upon spin coating the capping layer having such a thickness relative to the
initial uneven layer’s thickness, the resulting composite buffer layer would
also have an “uneven structure” as required by claim 1. Indeed, consistent
with the Appellant’s position (Appeal Br. 12), Wu’s Figure 2(a) does not
depict an uneven structure” but, instead, a flat and smooth surface.
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Moreover, Wu does not positively state that a composite buffer
layer/capping layer structure having even a slightly uneven surface would be
suitable for any purpose. Therefore, we conclude that the Examiner’s
findings to the contrary constitute reversible error.
For these reasons, we do not sustain the Examiner’s rejection of claim
1. Because the remaining claims on appeal depend from claim 1, we also
reverse the rejection of each of those claims.
IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1, 2, 4–7, 9–11,
13–16 103 Wu, Choy
1, 2, 4–7, 9–11,
13–16
8 103 Wu, Choy, Huang 8
Overall
Outcome 1, 2, 4–11, 13–16
REVERSED