Xiuwen Tu et al.

Patent Trials and Appeals Board

Dec 11, 2019

13725663 - (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.
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.
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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).
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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”).
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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
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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.
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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,
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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.
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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
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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