Xiuwen Tu et al.Download PDFPatent Trials and Appeals BoardDec 11, 201913725663 - (D) (P.T.A.B. Dec. 11, 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. 13/725,663 12/21/2012 Xiuwen TU 10031.010900 4586 74254 7590 12/11/2019 Okamoto & Benedicto LLP P.O. Box 641330 San Jose, CA 95164-1330 EXAMINER CARLSON, KOURTNEY SALZMAN ART UNIT PAPER NUMBER 1721 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 XIUWEN TU and ASNAT MASAD ____________________ Appeal 2018-000517 Application 13/725,663 Technology Center 1700 ____________________ Before MARK NAGUMO, MONTÉ T. SQUIRE, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 10–26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In our Decision we refer to the Specification filed December 21, 2012 (“Spec.”), the Final Office Action appealed from dated March 9, 2016 (“Final Act.”), the Appeal Brief filed July 7, 2016 (“Appeal Br.”), the Examiner’s Answer dated August 23, 2017 (“Ans.”) and the Reply Brief filed October 19, 2017 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as SunPower Corporation. Appeal Br. 1. Appeal 2018-000517 Application 13/725,663 2 I. STATEMENT OF THE CASE The subject matter on appeal relates to solar cells and solar cell manufacturing. Spec. ¶ 1. In particular, the subject matter relates to a stack of solar cell wafers that is arranged so that “a solar cell wafer with a front side that faces a front side of an adjacent solar cell wafer, and another solar cell wafer with a backside that directly contacts a backside of the solar cell wafer” and methods of manufacturing such stacks. Id. ¶ 4. The Specification explains that [f]or cost, logistics, and other reasons the solar cells may be fabricated in one location and assembled into solar cell modules in another location. In that case, the solar cells may be stacked one on top of another, with a piece of paper between the front side of a solar cell and a back side of an adjacent solar cell. Id. ¶ 3. The stacked cells are then wrapped, boxed, and shipped to the assembly site. Id. ¶ 4. According to the Specification, the claimed orientation of solar cells may result in “no protector [being] placed between the backsides of adjoining solar cell wafers” or “no front side protector [being] placed between front sides and between backsides of solar cell wafers.” Id. ¶ 22. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. An article of manufacture comprising: a stack of solar cell wafers that each comprises a solar cell, the stack of solar cell wafers comprising a first solar cell wafer having a front side that faces a front side of a second solar cell wafer that is adjacent to the first solar cell wafer, a third solar cell wafer having a backside that directly contacts a backside of the first solar cell wafer, and a fourth solar cell wafer having a backside that directly contacts a backside of the second solar cell wafer. Appeal Br. 12 (Claims App’x). Appeal 2018-000517 Application 13/725,663 3 II. REJECTIONS The Examiner maintains the following rejections3: A. Claims 10–20, 23, 25, and 26 stand rejected under 35 U.S.C. §103(a), as unpatentable over Matsuo4 in view of Köster.5 Final Act. 3. B. Claims 21, 22, and 24 stand rejected under 35 U.S.C. §103(a), as unpatentable over Matsuo, in view of Köster, and further in view of Stone.6 Id. at 8. Appellant seeks our review of Rejections A and B. Appeal Br. 2–6. Appellant presents argument for the patentability of claims 10 and 12 and does not present separate argument for the remaining claims subject to the Examiner’s rejections. See generally id. We therefore limit our discussion to claims 10 and 12. The remaining claims 11, 12, and 13–26 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(iv) (2013). III. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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) (“[I]t has long been the Board’s practice to require an applicant to identify 3 The Examiner withdraws the rejections, under 35 U.S.C §103(a), of claims 10–11, 21, and 23–24 based on the combination of Ralph and Buitron as well as claims 12–20, 22, and 25–25 over the combination of Ralph, Buitron, and Köster. Ans. 9. 4 Matsuo et al., US 5,823,351, published October 20, 1998 (“Matsuo”). 5 Köster et al., US 2010/0101635 A1, published April 29, 2010 (“Köster”). 6 Charles Norman Stone, US 2014/0000695 A1, published January 2, 2014 (“Stone”). Appeal 2018-000517 Application 13/725,663 4 the alleged error in the examiner’s rejections . . . .”)). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejection, we do so for the reasons expressed in the Final Office Action and the Answer. We add the following. A. Claim 10 The Examiner finds that Matsuo describes “a packaging for stacks of semiconductor wafers” though the Examiner acknowledges that Matsuo “fails to address the stacking of solar cells as opposed to semiconductor wafers used in the formation of solar cells.” Final Act. 3. But, the Examiner finds that Köster, relating to the packaging of semiconductor stacks, explains, “the stacking principle of directly stacking each solar cell or wafer on top of each other.” Id. at 3–4. According to the Examiner, it would have been obvious to utilize the packaging described by Köster as useful in solar cell stacks, because the “same considerations to allow for minimized damage to packed contents” exist for semiconductor wafers and brittle solar cells. Id. at 4. Though Matsuo and Köster are silent as to the orientation of each solar cell, the Examiner reasons that “[s]ince there are only a finite (two) number of combinations for assembly in the stack (front-front which would require back-back as well or front-back), it would have been obvious for a person of ordinary skill to pursue the known orientations of solar cells within his or her technical grasp.” Id. In response, Appellant first argues that neither the claimed orientation nor direct contact between adjacent solar cell wafers is suggested by either of Matsuo or Köster. Appeal Br. 3 (“the combination of Matsuo and Köster does not disclose a stack of solar cell wafers wherein front sides of adjacent Appeal 2018-000517 Application 13/725,663 5 solar cell wafers face one another and backsides of adjacent solar cell wafers directly contact”). Beginning with the direct contact limitation, Appellant contends that Köster places a separator element between adjacent wafers because when wafers are in direct contact, they “are difficult to separate and may be damaged during removal.” Id. Therefore, Appellant contends, Köster teaches away from direct contact because the skilled artisan would “heed Köster’s warning that wafers with directly contacting surfaces are difficult to separate and prone to breakage during removal” and when combined with Matsuo, the skilled artisan would have included a separator element. Id. at 4. The Examiner disagrees with Appellant’s contentions and additionally finds that Köster “clearly teaches the use of direct contact between solar cell wafers” and therefore “does not teach against direct contact between the solar cell wafers but instead teaches their direct contact to be applicable in packaging said wafers.” Ans. 11, citing Köster ¶¶ 83–84. Appellant does not dispute or identify any error in the Examiner’s additional findings. We adopt these findings as fact. Cf. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (a finding not shown by the Appellant to be erroneous may be accepted as fact). Furthermore, we determine the Examiner’s findings are supported by the preponderance of the evidence. In particular, we observe that Köster expressly states that “[p]ackaging according to [one] embodiment [is] characterized in that the wafers or solar cells are stacked directly one upon the other and said wafer stack is wrapped directly in film.” Köster ¶ 84 (emphasis added). Therefore, Appellant’s argument does not reveal reversible error in the Examiner’s rejection. Appeal 2018-000517 Application 13/725,663 6 With respect to the orientation limitation, Appellant argues that “there is no teaching in the combination of Matsuo and Köster to have [the] backsides of solar cell wafers in a stack directly [in] contact and the front sides of solar cell wafers fac[ing] one another.” Appeal Br. 4. Appellant argues that the Examiner’s position that there are a finite number of possible orientations is untrue and not limited to two. Reply Br. 3. According to Appellant, “[a] stack of solar cell wafers may have different orientations not just between adjacent solar cells, but also as to groups of solar cell wafers.” Id. Appellant also asserts that “the permutation of solar cell wafer orientation in a stack is at least 2n, and thus depends on the n number of wafers in the stack.” Appeal Br. 4. Appellant reasons that because “there is no guidance in the prior art that different wafer orientations would be beneficial,” there is no reason for a person of ordinary skill in the art to orient the solar cell wafers a claimed. Id. As the Examiner finds, the number of possible orientations is finite, predictable, and therefore obvious. Final Act. 4; Ans. 12–14. Our reviewing court guides that where “the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option,” a solution that is obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007); see also Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.”). Here, because there are only a finite set of options having predictable results—whether the number of permutations is 2 (as the Examiner finds) or, Appeal 2018-000517 Application 13/725,663 7 as Appellant urges, 24 = 16 in a 4 wafer arrangement as claimed—and the Examiner has identified each of the claimed elements in the cited references supported by an adequate rationale for combining those teachings, the claimed orientations, if any modification were required, would have been “obvious to try” at the time of Appellant’s invention. Moreover, Appellant has provided no evidence that modifying the teachings in the cited references would have been “outside the technical grasp” of the ordinary artisan, nor has Appellant presented evidence that the result would not have been predictable. KSR, 550 U.S. at 420. As a result, we are not persuaded the Examiner reversibly erred in concluding that the wafer orientation would have been obvious to an artisan possessing an ordinary skill at the time of invention. Furthermore, Appellant’s argument that wafers may have different orientations between groups of wafers does not identify harmful error because claim 10 requires no more than a single grouping of 4 solar cell wafers. Accordingly, because Appellant failed to identify a reversible error in the Examiner’s rejection of claim 10, we sustain the rejection. B. Claim 12 Claim 12 depends from claim 10 and additionally recites “a front side protector between the front side of the first solar cell wafer and the front side of the second solar cell wafer.” Appeal Br. 12 (Claims App’x). The Examiner finds that Köster “teaches the use of an optional, one separator or protectors as in the claim between the solar cells as needed, while using a minimal amount of packaging . . . .” Final Act. 5. The Examiner reasons that it would have been obvious to provide a separator to provide protection as needed in the stack and to minimize packaging. Id. Appeal 2018-000517 Application 13/725,663 8 Appellant argues that neither Matsuo nor Köster “disclose solar cell wafers where backsides directly contact but a protector is between the front sides.” Appeal Br. 6. According to Appellant, Köster describes, in paragraph 71 and Figures 10 and 11 (cited by the Examiner), “using the carrier element 60 (instead of the separating element 4) to separate all wafers.” Id. The Examiner finds that Köster “does not require all the wafers to be separated . . . [and instead] teaches direct contact between wafers.” Ans. 16. But, the Examiner further finds that Köster also discusses the optional use of separating elements as needed. Id. On this record, the weight of the evidence supports the Examiner’s analysis. Köster describes using separator elements as needed and does not require separator elements between each wafer. Köster ¶ 61 (“According to the invention, it is also possible for the stack 6 of individual products 2, optionally with the separating elements 4, to be wrapped in a film wraparound packaging 12”); see also id. ¶ 63 (same). For example, Köster explains that one or more separating elements are placed between the wafers or solar cells of the stack and the wafer stack with separating element or elements is wrapped directly in film. The one or more separating elements provide that the wafers do not cling directly to each other and, upon removal, can be carefully separated from each other without damage. Id. ¶ 11 (emphasis added). Therefore, depending on a particular need, a person of ordinary skill in the art would have understood Köster to suggest an orientation of solar cell wafers where backsides directly contact (id. ¶ 84) but a protector is between the front sides as needed (id. ¶ 11). Because Appeal 2018-000517 Application 13/725,663 9 Appellant’s arguments do not identify reversible error in the Examiner’s rejection, we sustain the rejection. IV. CONCLUSION Appellant failed to identify error in the Examiner’s rejection of claims 10–20, 23, 25, and 26, under 35 U.S.C §103(a), as unpatentable over Matsuo in view of Köster. Appellant failed to identify error in the Examiner’s rejection of claims 21, 22, and 24, under 35 U.S.C §103(a), as unpatentable over Matsuo, in view of Köster, and further in view of Stone. DECISION For the above reasons, the Examiner’s rejection of claims 10–26 is affirmed as summarized below: Claims Rejected Basis Affirmed Reversed 10–20, 23, 25, and 26 § 103 Matsuo and Köster 10–20, 23, 25, and 26 21, 22, and 24 § 103 Matsuo, Köster, and Stone 21, 22, and 24 Overall Outcome 10–26 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). AFFIRMED Copy with citationCopy as parenthetical citation