Umesh Kumar et al.Download PDFPatent Trials and Appeals BoardSep 4, 201912097823 - (D) (P.T.A.B. Sep. 4, 2019) 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. 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 Copy with citationCopy as parenthetical citation