NANOHMICS, INC.Download PDFPatent Trials and Appeals BoardNov 9, 20202019002940 (P.T.A.B. Nov. 9, 2020) 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. 14/266,361 04/30/2014 Byron Zollars MNANO.001US 4061 93838 7590 11/09/2020 GEORGE L MURPHY MURPHY STRATEGIC IP 5294 Beach Dr SE Unit C St. Petersburg, FL 33705-4887 EXAMINER ALLEN, STEPHONE B ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 11/09/2020 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): george@murphystrategicip.com georgelmurphy@icloud.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BYRON ZOLLARS, STEVE SAVOY, and QIZHEN XUE ____________ Appeal 2019-002940 Application 14/266,361 Technology Center 2800 ____________ Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–10, 18, and 19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Nanohmics, Inc. as the real party in interest. Appeal Br. 1. Appeal 2019-002940 Application 14/266,361 2 The invention relates to antireflective structures for reducing the reflection of radiation from an optic. Spec. ¶ 3. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. An optic having an antireflective surface comprising: a substrate, a buffer layer deposited on at least one side of the substrate, and a plurality of surface structures, wherein the plurality of surface structures are configured to reduce reflection of all wavelengths of electromagnetic radiation over a region of at least 2.0 octaves within the electromagnetic spectrum region of 350 nm to 18,000 nm, and wherein the plurality of surface structures are configured to reduce reflection of said wavelengths of electromagnetic radiation arriving from all incident angles from 0° to 70°. The Examiner maintains the following rejections from the Final Office Action dated February 13, 2018: I. Claims 1, 5, 6, 8, and 18 rejected under 35 U.S.C. § 103 as unpatentable over Yeo (US 2013/0078750 A1, published March 28, 2013). II. Claims 2, 7, and 19 rejected under 35 U.S.C. § 103 as unpatentable over Yeo and Biricik (US 5,173,443, issued December 22, 1992). III. Claims 3 and 4 rejected under 35 U.S.C. § 103 as unpatentable over Yeo and Egi (US 2008/0158682 A1, published July 3, 2008). IV. Claims 9 and 10 rejected under 35 U.S.C. § 103 as unpatentable over Yeo and Jeong (US 2013/0155522 A1, published June 20, 2013). Appellant presents specific substantive arguments only for the following claims: (a) claims 1, 5 (Rejection I) and (b) claim 2 (Rejection II). See generally Appeal Br. Appellant relies on these arguments to address the rejections of the remaining claims. Id. Accordingly, we select claim 1 as Appeal 2019-002940 Application 14/266,361 3 representative of the subject matter claimed and decide the appeal as to all grounds of rejections based on the arguments presented for claims 1, 2, and 5. OPINION After review of the respective positions the Appellant presents in the Appeal Brief2 and the Examiner presents in the Final Office Action and the Answer, we AFFIRM the Examiner’s rejection of claims 1–10, 18, and 19 under 35 U.S.C. § 103 for essentially the reasons the Examiner presents. Our reasoning follows. Rejection I Claim 1 We refer to the Examiner’s Final Office Action for a complete statement of the rejection of claim 1. Final Act. 3–6. Briefly, the Examiner determines that Yeo discloses an optic having an antireflective surface that is identical or substantially identical to claimed optic. Final Act. 4; Ans. 14. Appellant argues principally that Yeo’s Figure 14(a) does not teach reducing reflection of wavelengths of electromagnetic radiation for vertically incident light over a region of at least 2.0 octaves within the electromagnetic spectrum region of 350 nm to 18,000 nm as recited in claim 1 but instead shows light occurring over a 650 nm spectral region of light, which is 1.51 octave in Appellant’s claimed 350 nm to 18,000 nm spectral region. Appeal Br. 5. Appellant additionally contends that the Examiner’s assertion that Yeo’s Figure 14(a) would include the claimed at least 2 2 Appellant did not file a Reply Brief. Appeal 2019-002940 Application 14/266,361 4 octaves by extrapolating the illustrated trends to at least 1,400 nm is unsupported by Yeo’s Figure 37 embodiment. Id. at 5–6, 8; Yeo ¶¶ 186–192. According to Appellant, Yeo’s Figure 37 embodiment is a well-known Ge-based multi-junction solar cell that minimizes the reflection of incident light to elevate the efficiency of the solar cell. Appeal Br. 8. Appellant asserts that this embodiment uses three solar cell layers, each layer absorbing light in one of three wavelength bands of 650 nm (top layer), 900 nm (middle layer) and 1900 nm (bottom layer). Id. Appellant contends that Yeo’s triple junction solar cell would not necessarily benefit from Appellant’s structures3 because Yeo’s cell already generates excess current that is dissipated as heat and, thus, the bottom layer of Yeo’s cell is not critical to increase transmission of light of higher wavelengths (e.g., by reducing reflection of the higher wavelengths of light). Id. at 8–10. Appellant directs attention to the Victoria4 publication in support of these contentions. Id. In essence, the premise of Appellant’s arguments is that the three- layer solar cell of Yeo’s Figure 37 embodiment does not support the Examiner’s extrapolation of the data in Yeo’s Figure 14(a) to arrive at reflection reductions of the higher wavelengths of light because the bottom layer of Yeo’s Figure 37 solar cell is not critical to increase transmission of light of higher wavelengths. Thus, Appellant asserts one skilled in the art 3 Appellant acknowledges that “a nanostructure for antireflection . . . fabricated on the top cell layer suggests the surface structures of the optic in Appellant’s claim 1 and their configuration as per claim 1.” Appeal Br. 8. 4 Victoria et al., “Antireflective coatings for multijunction solar cells under wide-angle ray bundles,” Optics Express, Vol. 20(7):8136–8147, March 26, 2012. Appeal 2019-002940 Application 14/266,361 5 would not arrive at the claimed “at least 2.0 octaves within the electromagnetic spectrum region of 350 nm to 18,000 nm” for an optic from Yeo’s teachings. Appellant’s arguments do not persuade us of reversible error in the Examiner’s determination of obviousness. The Examiner finds that the antireflection nanostructure of Yeo’s Figure 37 embodiment is useful for elevating efficiency of solar cell layers that generate electricity from wavelengths of up to about 1900 nm. Final Act. 4; Yeo ¶¶ 186–193. Based on these disclosures, the Examiner determines that it would have been obvious to one of ordinary skill in the art that Yeo discloses an optic having an antireflective surface that is identical or substantially identical in structure and composition to the claimed optic. Final Act. 4–5; Ans. 15–16. Thus, the Examiner has provided a reasonable basis for one skilled in the art to reasonably expect that Yeo’s optic would possess the characteristics of the claimed invention. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). Relying on the Victoria publication, Appellant asserts that Yeo’s optic and the claimed optic are different. Appeal Br. 8–9. However, Appellant misapprehends the teachings of Victoria on page 8140 and Figure 1. Victoria’s disclosure at page 8140 merely points out that a three layer solar cell is not a preferred embodiment because the third layer only results in a minimal gain in transmittance and, thus, “adding the third layer may or may not be justified depending on the additional cost incurred.” Victoria 8140. It is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellant. See Appeal 2019-002940 Application 14/266,361 6 Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is not limited to its examples). Given that Yeo and Victoria teach that a third layer in a three-layer solar cell yields gains in transmittance, there is a reasonable basis for one skilled in the art to reasonably expect that Yeo’s optic would possess the characteristics of the claimed invention. Appellant has not explained adequately how the claimed optic differs structurally from Yeo’s optic. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) and In re Best, 562 F.2d 1252, 1254–56 (CCPA 1977) (explaining that when the Examiner establishes a reasonable basis for concluding that the claimed and prior art products appear to be the same, the burden is properly shifted to the applicant to show that they are not). Thus, Appellant has not explained adequately why the Examiner reversibly erred by relying on Yeo’s Figure 37 embodiment to establish that one skilled in the art would arrive at the claimed invention from Yeo’s teachings. While Appellant argues that the structures of Yeo and the claimed invention are different because they are made by different processes (dry etching v. wet etching) (Appeal Br. 10–11), Appellant does not direct us to any objective evidence that supports adequately the assertion that Yeo’s optic does not possess the characteristics of the claimed optic. Appellant’s attorney arguments cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). Appeal 2019-002940 Application 14/266,361 7 Appellant’s arguments that Yeo’s Figure 14(a) does not teach all incident angles from 0° to 70° recited in claim 1 because it is limited to a single angle of incident light at 0° is also unavailing for the reasons the Examiner presents. Appeal Br. 5; Ans. 7–9. Moreover, it is well established that a prima facie case of obviousness exists where the prior art and claimed ranges overlap. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); see also Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Here, Yeo’s incident light at 0° is the same as the lower endpoint of the claimed range of incident angles from 0° to 70°. Therefore, a prima facie case of obviousness exists for the reasons we express above. Claim 5 Claim 5 recites an optic having a ratio of the mean height of surface structures to mean base-base spacing of adjacent surface structures is from 4 to 12. The Examiner finds Yeo suggests the claimed ratio by teaching an aspect ratio of subwavelength nanostructure and that the desired aspect ratio is obtained to control antireflection. Final Act. 6–7; Yeo Fig. 13, ¶ 97. Appellant contends that one of skill in the art would understand that aspect ratio refers to height/width, which is different from the ratio claimed in claim 5. Appeal Br. 13. Appellant also asserts that the claimed ratio cannot be obtained from Yeo’s teachings. Id. at 14–15. Appellant’s arguments do not point to reversible error in the determination of obviousness because, as the Examiner explains, the Appeal 2019-002940 Application 14/266,361 8 Specification states that “the ‘aspect ratio’ of surface structures prepared by methods of the invention is substantially equivalent to the mean height of the surface structures present on an optic divided by the mean distance between the centers of the bases of adjacent surface structures.” Ans. 16–17; Spec. ¶ 38. Thus, Appellant does not distinguish Yeo’s aspect ratio from the claimed ratio persuasively. Accordingly, we AFFIRM the Examiner’s prior art rejection of claims 1, 5, 6, 8, and 18 under 35 U.S.C. § 103 for the reasons the Examiner presents and we give above. Rejection II Claim 2 Claim 2 recites an optic having surface structures configured to reduce reflection of all wavelengths of electromagnetic radiation over a region of at least 2.0 octaves within the electromagnetic spectrum region of 3,000 nm to 18,000 nm. The Examiner finds Biricik teaches surface structures configured to reduce reflection of all wavelengths of electromagnetic radiation over a region of at least 2.0 octaves within the electromagnetic spectrum region of 3,000 nm to 18,000 nm to achieve antireflection in the infrared spectrum. Final Act. 9; Biricik Figs. 2. The Examiner determines that it would have been obvious to one of ordinary skill to modify Yeo to incorporate Biricik’s teaching to achieve antireflection in the infrared spectrum. Final Act. 9. Appellant contends that Biricik’s Figure 2 does not describe reduced reflection of radiation due to a surface coating on a substrate but, instead, teaches transmission of radiation through a germanium substrate. Appeal Appeal 2019-002940 Application 14/266,361 9 Br. 17. According to Appellant, the only factual teaching at Biricik Figure 2 is that transmission of radiation through the germanium substrate is lower when the radiation arrives from an angle of 70° than when the radiation arrives from an angle of 0°. Id. These arguments do not persuade us of reversible error. As the Examiner explains in the Answer, Yeo is relied upon to teach the reflectance of the nanostructure while Biricik was cited to teach it was known to configure reflective surfaces to reduce reflection of all wavelengths of electromagnetic radiation as recited in claim 2. Ans. 18–19. Appellant’s arguments do not address adequately the Examiner’s stated rejection. It is well settled that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425–26 (CCPA 1981) (“[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Accordingly, we AFFIRM the Examiner’s prior art rejection of claims 2, 7, and 19 under 35 U.S.C. § 103 for the reasons the Examiner presents and we give above. Rejections III and IV Because Rejections III and IV involve claims that depend ultimately from claim 1, we also AFFIRM these prior art rejections for the reasons the Examiner presents and we give above. Arguments not specifically addressed are deemed not persuasive for the reasons the Examiner presents. Appeal 2019-002940 Application 14/266,361 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 6, 8, 18 103 Yeo 1, 5, 6, 8, 18 2, 7, 19 103 Yeo, Biricik 2, 7, 19 3, 4 103 Yeo, Egi 3, 4 9, 10 103 Yeo, Jeong 9, 10 Overall Outcome 1–10, 18, 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED Copy with citationCopy as parenthetical citation