Umesh Kumar et al.

Patent Trials and Appeals Board

Sep 4, 2019

12097823 - (D) (P.T.A.B. Sep. 4, 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.
12/097,823 07/08/2008 Umesh Kumar 136617.04000 3660
27557 7590 09/04/2019
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
WashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte M. CLARK THOMPSON, DIPEN N. SINHA,
DON M. COATES, JACOBO R. ARCHULETTA, and
MANUEL E. GONZALEZ
____________________
Appeal 2017-010927
Application 12/097,823
Technology Center 1700
____________________

Before BEVERLY A. FRANKLIN, JAMES A. WORTH, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4–6, 11, 12, 28–33, 36, and 41–45, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 In our Decision we refer to the Specification filed June 17, 2008, as
amended, (“Spec.”), the Final Office Action appealed from dated July 15,
2016 (“Final”), the Appeal Brief filed January 12, 2017 (“Appeal Br.”), and
the Examiner’s Answer dated June 15, 2017 (“Ans.”).
2 Appellants identify Heraeus Precious Metals North America
Conshohocken LLC as the real party in interest. Appeal Br. 2.
Appeal 2017-010927
Application 12/097,823

2
STATEMENT OF THE CASE
The subject matter on appeal “relates to a paste composition and
method of making contacts for solar cells as well as other related
components used in fabricating photovoltaic cells.” Spec. ¶ 1. In particular,
these pastes include nickel or nickel alloys and silver and are useful for solar
cell contacts. Id. Independent claim 1, the sole independent claim, is
reproduced below and is illustrative of the claimed subject matter:
l. A thick film paste for forming solar cell contacts, the thick
film paste comprising a glass portion and a conductive metal
portion, said conductive metal portion comprising:
a. from about 20 to about 80 wt% silver; and
b. from about l0 to about 80 wt% of a nickel alloy selected
from the group consisting of a nickel-aluminum alloy, a nickel-
aluminum-chromium alloy, and combinations thereof.
Appeal Br. 22 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1–2, 4, 6, 11–12, 33, 36, and 44 stand rejected
under 35 U.S.C §103(a), as unpatentable over Bechtloff3
in view of Santella.4 Final Act. 3.

B. Claims 1–2, 4–5, 11–12, 33, 36, and 44 stand rejected
under 35 U.S.C §103(a), as unpatentable over Bechtloff in
view of Grant.5 Id. at 8.

3 Bechtloff et al., US 2004/0155227 A1, published August 12, 2004
(“Bechtloff”).
4 Santella et al., US 5,413,876, issued May 9, 1995 (“Santella”).
5 Grant et al., US 3,015,558, issued January 2, 1962 (“Grant”).
Appeal 2017-010927
Application 12/097,823

3
C. Claims 28 and 30 stand rejected under 35 U.S.C §103(a),
as unpatentable over Bechtloff in view of Santella or
Grant, and further in view of Sridharan.6 Id. at 13.

D. Claim 29 stands rejected under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Santella or Grant,
and further in view of Murayama.7 Id. at 14.

E. Claim 31 stands rejected under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Santella or Grant,
and further in view of Abrams.8 Id. at 15.

F. Claims 1 and 32 stand rejected under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Dittrich.9 Id.

G. Claims 41–42 stand rejected under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Grant, and further
in view of Matsuki.10 Id. at 18.

H. Claim 43 stand rejected under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Grant, and further
in view of Capote.11 Id. at 19.

I. Claim 45 stand rejected under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Santella or Grant,
and further in view of Sridharan. Id. at 19–20.

6 Sridharan et al., US 2006/0102228 A1, published May 18, 2006
(“Sridharan”).
7 Ryuichi Murayama, JP 10237409 A, published September 8, 1998
(“Murayama”).
8 John C. Abrams, US 4,419,279, issued December 6, 1983 (“Abrams”).
9 Dittrich et al., US 3,322,515, issued May 30, 1967 (“Dittrich”).
10 Matsuki Kanenori, JP 2002060877 A, published February 28, 2002
(“Matsuki”).
11 Capote et al., US 6,518,677 B1, issued February 11, 2003 (“Capote”).
Appeal 2017-010927
Application 12/097,823

4
Appellants seek our review of Rejections A–H. See generally Appeal
Br. Appellants argue Rejections A, B, and F and address all claims together
as a group. Id. Appellants do not present argument for any claim separate
from those arguments advanced in opposition to Rejections A, B, and F. Id.
Because our basis for reversal is common to all claims and all Rejections—
i.e., that Bechtloff teaches away from a combination including aluminum in
the nickel alloy—we limit our discussion to claim 1 and Rejection A.
OPINION
Rejection A – Obviousness
(claims 1–2, 4, 6, 11–12, 33, 36, and 44)
The Examiner rejects claims 1–2, 4, 6, 11–12, 33, 36, and 44, under
35 U.S.C. § 103 as unpatentable over the combination of Bechtloff and
Santella. Final 3. With respect to claim 1, the Examiner finds that Bechtloff
teaches a paste that includes a glass portion (or frit) and a metal portion,
including 20–100 % silver and 0–80 % nickel alloy. Id. at 4. The Examiner
explains that because Bechtloff teaches overlapping ranges of silver and a
nickel-chromium alloy, a prima facie case of obviousness has been
established. Id. The Examiner further reasons that “one of ordinary skill in
the art at the time the invention was made would have optimized, by routine
experimentation, the contents of silver and nickel alloy in the conductive
paste of Bechtloff et al. to obtain the desired balance between the cost and
the efficient conductivity of the conductive paste.” Id. at 5. Bechtloff does
not disclose aluminum as part of the nickel alloy, but the Examiner finds that
Santella describes “a nickel aluminide alloy comprising 6–12 wt%
aluminum, 6–12 wt% chromium, up to about 3% molybdenum, and the
Appeal 2017-010927
Application 12/097,823

5
balance is nickel (see col. 2 lines 5–31, claims 1–10).” Final 5. The
Examiner reasons that a person of ordinary skill in the art would have
modified Bechtloff’s conductive paste using the Santella alloy “because
Bechtloff et al. explicitly suggests using nickel alloy and Santella et al.
teaches such nickel alloy would be highly resistant to solidification cracking,
yield strength and other desirable properties (see col. 2 lines 5–15).” Id. at
5–6.
Appellants’ arguments are three-fold—(1) that Santella is non-
analogous art (Appeal Br. 5), (2) there is no motivation to combine Bechtloff
and Santella (id. at 7), and Bechtloff teaches away from the claimed
invention (id. at 8). Because we agree with Appellants’ third argument, that
is, Bechtloff teaches away, we need not address Appellants’ remaining
arguments.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Various types of teachings may support a finding of
“teaching away,” including known disadvantages in old devices that would
naturally discourage the search for new inventions, teachings leaving the
impression that the product would not have the property sought by the
applicant, and reference combinations that would produce a seemingly
inoperative device. Id.
Here, the sole independent claim, claim 1, requires a “nickel alloy
selected from the group consisting of a nickel-aluminum alloy, a nickel-
aluminum-chromium alloy, and combinations thereof,” meaning that a
Appeal 2017-010927
Application 12/097,823

6
nickel-aluminum alloy is required by all claims. Appeal Br. 22 (Claims
App’x). Bechtloff describes a conductive paste that suggests all of the
limitations of claim 1 except that the nickel alloy of Bechtloff does not
include aluminum. The Examiner relies on Santella, describing a nickel-
aluminum alloy, in combination with Bechtloff in formulating Rejection A.
Non-Final 5.
However, Bechtloff purposefully excludes aluminum from its
conductive paste. See generally Bechtloff. Bechtloff explains that
“[p]roperty discontinuities, such as have been known from conductivity
pastes containing silver and aluminum, do not arise in the case of the
conductivity pastes according to the invention.” Id. ¶13. According to
Bechtloff, aluminum-containing conductive pastes require higher stoving
temperatures and “therefore does not enter into consideration for the
production of conductive coatings on glass.” Id. ¶ 4. Bechtloff identifies
another “disadvantage of these aluminium-containing conductivity pastes
consists in the fact that the conductive coatings obtained therewith
necessitate quite special soldering processes, for example ultrasonic
soldering using a very special solder tin” (id. ¶ 5) and explains “[a]
significant advantage of conductivity pastes of the invention consists of the
fact that said conductivity pastes can be soldered in a straight forward
manner by conventional means” (id. ¶ 13). Bechtloff emphasizes that
“[e]laborate devices for ultrasonic soldering, or soldering under protective-
gas atmosphere, are accordingly not necessary” for the conductivity pastes
of Bechtloff. Id. Based on the teachings of Bechtloff, we find that the
skilled artisan would have been discouraged from adding aluminum to the
nickel alloy of Bechtloff.
Appeal 2017-010927
Application 12/097,823

7
We, therefore, do not sustain the Examiner’s rejection of claims 1–2,
4, 6, 11–12, 33, 36, and 44 as obvious over the combination of Bechtloff 35
U.S.C. § 103. With respect to the Rejections B–F, we also cannot sustain the
remaining rejections for the same reasons.
DECISION
Appellants identified a reversible error in the Examiner’s rejection of
claims 1–2, 4, 6, 11–12, 33, 36, and 44, under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Santella.
Appellants identified a reversible error in the Examiner’s rejection of
claims 1–2, 4–5, 11–12, 33, 36, and 44, under 35 U.S.C §103(a), as
unpatentable over Bechtloff in view of Grant.
Appellants identified a reversible error in the Examiner’s rejection of
claims 28 and 30, under 35 U.S.C §103(a), as unpatentable over Bechtloff in
view of Santella or Grant, and further in view of Sridharan.
Appellants identified a reversible error in the Examiner’s rejection of
claim 29, under 35 U.S.C §103(a), as unpatentable over Bechtloff in view of
Santella or Grant, and further in view of Murayama.
Appellants identified a reversible error in the Examiner’s rejection of
claim 31, under 35 U.S.C §103(a), as unpatentable over Bechtloff in view of
Santella or Grant, and further in view of Abrams.
Appellants identified a reversible error in the Examiner’s rejection of
claims 1 and 32, under 35 U.S.C §103(a), as unpatentable over Bechtloff in
view of Dittrich.
Appeal 2017-010927
Application 12/097,823

8
Appellants identified a reversible error in the Examiner’s rejection of
claims 41–42, under 35 U.S.C §103(a), as unpatentable over Bechtloff in
view of Grant, and further in view of Matsuki.
Appellants identified a reversible error in the Examiner’s rejection of
claim 43, under 35 U.S.C §103(a), as unpatentable over Bechtloff in view of
Grant, and further in view of Capote.
Appellants identified a reversible error in the Examiner’s rejection of
claim 45, under 35 U.S.C §103(a), as unpatentable over Bechtloff in view of
Santella or Grant, and further in view of Sridharan.
ORDER
For the above reasons, the Examiner’s rejection of claims 1, 2, 3–6,
11, 12, 28–33, 36, and 41–45 is reversed.

REVERSED