Cornfeld, Arthur et al.

Patent Trials and Appeals Board

Jun 12, 2020

11860183 - (D) (P.T.A.B. Jun. 12, 2020)

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.
11/860,183 09/24/2007 Arthur Cornfeld 7002 6143
128940 7590 06/12/2020
SolAero Technologies Corp.
10420 Research Road SE
Albuquerque, NM 87123
EXAMINER
CHERN, CHRISTINA
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
06/12/2020 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 ARTHUR CORNFELD, MARK A. STAN,
TANSEN VARGHESE, and FRED NEWMAN
____________

Appeal 2019-004317
Application 11/860,183
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 15 and 25–29.3 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 In this Decision, we refer to the Specification filed Sept. 24, 2007
(“Spec.”); Non-Final Office Action dated June 21, 2018 (“Non-Final Act.”);
Appeal Brief filed Feb. 19, 2019 (“Appeal Br.”); Advisory Action dated
Mar. 6, 2019 (“Advisory Act.”); Examiner’s Answer dated Mar. 20, 2019
(“Ans.”); and Reply Brief filed May 14, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies SolAero Technologies Corp. as the
real party in interest. Appeal Br. 1.
3 Claims 1–14, 16–24, and 30 are cancelled. See List of Claims filed Dec.
19, 2018.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to the field of solar cell semiconductor devices,
and particularly to multijunction solar cells including metamorphic layers.
Spec. ¶ 5. Claim 15 illustrates the subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
15. A multijunction solar cell comprising:
a lower solar subcell having a first band gap,
wherein said lower solar subcell is composed of an InGaP
emitter region and a Ga(In)As base region;
a first threading dislocation inhibition layer over the
lower solar subcell;
a grading interlayer composed of InGaAlAs over
and directly adjacent the first threading dislocation
inhibition layer and having a second band gap of 1.5 eV
that is greater than said first band gap;
a second threading dislocation inhibition layer
having a thickness of about 1.0 micron and composed of
InGa(Al)P, the second threading dislocation inhibition
layer being over and directly adjacent to said grading
interlayer for reducing the propagation of threading
dislocations, said second threading dislocation inhibition
layer having a composition different from a composition
of the first threading dislocation inhibition layer;
a middle solar subcell over said threading
dislocation inhibition layer and having a third band gap
smaller than said second band gap and greater than said
first band gap, the middle solar subcell being lattice
mismatched with respect to said lower solar subcell, and
including an InGaP emitter region and a Ga(In)As base
region; and
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an upper solar subcell over said middle solar subcell
and having a fourth band gap greater than said third band
gap, wherein said upper solar subcell is composed of an
InGa(Al)P emitter region and an InGa(Al)P base region.
Appeal Br. 13 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
DePoy et al. (“DePoy”) US 6,043,426 Mar. 28, 2000
King et al. (“King ’788”) US 6,340,788 B1 Jan. 22, 2002
Patton et al. (“Patton”) US 6,660,928 B1 Dec. 9, 2003
Wanlass US 2006/0144435 A1 July 6, 2006
King et al. (“King ’411”) US 2005/0274411 A1 Dec. 15, 2005
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 15 and 27–29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wanlass in view of King ’788 and further in view of
King ’411 and further in view of Patton (“Rejection 1”). Non-Final
Act. 11–12.
2. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wanlass in view of King ’788 and further in view of
King ’411 and further in view of Patton, as applied to claim 15 above, and
further in view of DePoy (“Rejection 2”). Id. at 31.
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OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Non-Final Office Action, which we adopt as our own.
We add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 15 and 27–29 under 35 U.S.C. § 103(a)
as obvious over the combination of Wanlass, King ’788, King ’411, and
Patton. Non-Final Act. 11, 12, 22–30. In response to the Examiner’s
rejection, Appellant presents argument for the patentability of claims 15 and
27–29 as a group. Appeal Br. 2. We select claim 15 as representative and
claims 27–29 stand or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Wanlass,
King ’788, King ’411, and Patton suggests a multijunction solar cell
satisfying the limitations of claim 15 and concludes the combination would
have rendered the claim obvious. Non-Final Act. 22–30 (citing Wanlass,
Abstract, Figs. 1, 2, 3b, 3c, ¶¶ 9, 27, 29, 34, 38–43, 48, 59, 64; King ’788,
Abstract, Figs. 1b, 5b, 7:8–27, 7:28–33, 8:11–27, 8:35–40, 8:54–67, 9:8–15,
20:28–52; King ’411, Abstract, Fig. 3, ¶¶ 20, 42, 47; Patton, Abstract, Fig. 1,
3:65–4:1, 4:64–65).
Appellant argues the Examiner’s rejection of claim 15 should be
reversed because Wanlass fails to disclose “a grading interlayer composed of
InGaAlAs and having a band gap of 1.5 eV” and “threading dislocation
inhibition layers, at least one of which is composed of InGa(Al)P, adjacent
the grading interlayer.” Appeal Br. 5.
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Appellant further argues the Examiner’s rejection should be reversed
because it is based on improper hindsight. Appeal Br. 5. In particular,
Appellant contends
there would have been no rational basis to select the
particular claimed combination of the grading interlayer
and the threading dislocation inhibition layers other than
by using the claimed invention itself as a blueprint.
Id. at 5; see also id. at 5 (arguing the Examiner “improperly uses the claimed
invention as a guide to select individual features from the other references”).
Appellant also contends that because the potential number of possible
combinations of group II–V compound semiconductor materials for the
claimed layers is “nearly infinite,” without the guidance of the present
application, “there would have been no rational basis even to try the
particular combination of an InGaAlAs grading interlayer and an adjacent
buffer layer composed of InGa(Al)P,” as claimed. Id. at 5.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection in view of the fact-finding and reasons the
Examiner provides at pages 3–8 of the Answer and pages 22–30 of the
Non-Final Office Action, which a preponderance of the evidence supports.
Appellant’s argument that Wanlass fails to disclose “a grading
interlayer composed of InGaAlAs and having a band gap of 1.5 eV” and
“threading dislocation inhibition layers, at least one of which is composed of
InGa(Al)P” (Appeal Br. 5) is not persuasive because it is premised on what
Appellant contends the Wanlass reference teaches individually, and not the
combined teachings of the cited prior art references as a whole, and what the
combined teachings of the references would have suggested to one of
ordinary skill in the art. One cannot show non-obviousness by attacking
references individually where the rejection is based on a combination of
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references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner does not rely solely upon Wanlass for teaching the “grading
interlayer” and “threading inhibition layer” elements of the claim.
Rather, the Examiner relies upon the combined teachings of the cited
art for suggesting those claim elements. In particular, regarding the claimed
grading interlayer composed of InGaAlAs, as the Examiner finds (Ans. 5;
Non-Final Act. 22–23, 27), Wanlass teaches the second solar subcell
comprises GaAs and the third solar subcell comprises GaInAs and that the
two subcells are lattice mismatched with graded interlayer 22 in between.
Wanlass, Fig. 1, ¶¶ 27, 29, 39, 43, 64. As the Examiner further finds
(Ans. 5; Non-Final Act. 27–28), King ’411 teaches a multijunction solar cell
comprising a solar subcell comprising GaAs and an adjacent solar subcell
comprising GaInAs with a grading interlayer in between made of InGaAlAs.
King ’411, Fig. 3, ¶¶ 42, 47.
Thus, based on the combined teachings of the cited art, as the
Examiner determines (Ans. 5; Non-Final Act. 28–29), it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Wanlass’ multijunction solar cell by using a grading interlayer
composed of InGaAlAs as taught by King ’411 because King ’411 teaches
the grading interlayer minimizes internal stresses and strains caused by
lattice mismatch between the two solar subcells. King ’411, ¶ 20 (disclosing
“use of the graded buffer layer achieves the desired lattice matching and
epitaxial relationship through the thickness of the solar cell” and “[t]his
lattice matching and epitaxial relationship is needed to minimize internal
stresses and strains, and for good electron movement through the thickness
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of the solar cell”); see also id. ¶ 20 (“The result is improved performance of
the individual subcells, and improved performance of the solar cell.”).
Regarding the composition and location of the claimed threading
dislocation inhibition layers, as the Examiner finds (Ans. 5; Non-Final
Act. 24), Wanlass teaches the use of GaInP to transition between the two
subcells due to its lattice constant and bandgap. Wanlass, Fig. 1, ¶¶ 27, 29,
39, 64. As the Examiner further finds (Ans. 5; Non-Final Act. 24–26), King
’788 teaches the use of threading dislocation inhibition layers composed of
GaInP on both sides of a grading interlayer within a multijunction solar cell
and that the incorporation of the threading dislocation inhibition layers
would further minimize the effects of dislocations that may exist between
the middle and lower subcells due to the differences in their lattice constants.
King ’788, Figs. 1b, 5b, 7:8–22, 7:28–33, 8:56–61, 20:28–52.
Thus, based on the combined teachings of the cited art, as the
Examiner determines (Ans. 5–6; Non-Final Act. 26–27), it would have been
obvious to one of ordinary skill in the art at the time of the invention to
incorporate King ’788’s threading dislocation inhibition layers between the
grading interlayer and the lower solar subcell and between the middle solar
subcell and the grading interlayer of Wanlass to minimize the effects of
dislocations that may exist between the middle and lower subcells due to the
differences in their lattice constants. King ’788, 20:41–46, 20:46–52
(adding buffer layers “to accommodate the difference between the lattice
constant ds of the active substrate . . . and the lattice constant dUw of the
lowermost group of upper subcells”).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings and analysis in this regard.
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Appellant’s arguments that the Examiner’s rejection is based on
improper hindsight and the Examiner “improperly uses the claimed
invention as a guide to select individual features from the other references”
(Appeal Br. 5) are not persuasive because they are conclusory and
unsupported by persuasive evidence in the record. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). Moreover, we find the Examiner’s rejection
is based on explicit disclosures in each of the cited references, and what
those disclosures considered as a whole reasonably would have suggested to
one of ordinary skill in the art, rather than based on impermissible hindsight
reconstruction as Appellant argues. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971) (acknowledging that “[a]ny judgment on obviousness is
in a sense necessarily a reconstruction based upon hindsight reasoning” but
such reconstruction is proper “so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure”).
Appellant’s contentions that “there would have been no rational basis
to select the particular claimed combination of the grading interlayer and the
threading dislocation inhibition layers” and “there would have been no
rational basis even to try the particular combination” (Appeal Br. 5) are
equally unpersuasive because they too are conclusory and unsupported by
persuasive evidence in the record. De Blauwe, 736 F.2d at 705.
Contrary to what Appellant argues, as previously discussed above, the
Examiner does provide a reasonable basis, which a preponderance of the
evidence in the record supports, to evince why one of ordinary skill in the art
would have combined the teachings of the cited art to arrive at the claimed
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invention. See Ans. 5–6; Non-Final Act. 23, 26–30; see also KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed). Appellant’s disagreement as to the Examiner’s factual
findings and reasons for combining the references, without more, is
insufficient to establish reversible error. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Appellant argues that the Examiner’s rejection should be reversed
because a person of ordinary skill in the art would not have had reason to
modify Wanlass based on Patton’s disclosure. Appeal Br. 5 (“[A] person of
ordinary skill would not have considered modifying IMM solar cells such as
described by Wanlass based on Patton’s non-IMM solar cells.”). In
particular, Appellant contends that, in contrast to Wanlass, “Patton does not
describe IMM photovoltaic cells” and “Patton’s overall growth process is
the opposite of an IMM growth process.” Id. at 5–6. Appellant further
contends that “Patton’s buffer layer serves essentially the same function as
Wanlass’ ‘graded layer’ 22 (i.e., to provide a smooth transition from one
lattice constant to another lattice constant).” Id. at 6.
We do not find Appellant’s arguments in this regard persuasive of
reversible error in the Examiner’s rejection based on the fact-finding and for
the reasons the Examiner provides at pages 6–8 of the Answer and pages
29–30 of the Non-Final Office Action. As the Examiner finds (Ans. 6;
Non-Final Act. 29), both Wanlass and Patton are directed to multijunction
solar cells comprising lattice mismatched layers. See Wanlass, Abstract,
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¶¶ 3, 9; Patton, Abstract, 1:8–10. As the Examiner further finds (Ans. 7;
Non-Final Act. 29), Patton teaches threading dislocation inhibition layer 14
directly adjacent to lower solar subcell 20 for reducing the propagation of
threading dislocations and to alleviate the differences in lattice constants
between the substrate and the lower solar subcell, and the layer having a
thickness of about 1.0 micron. Patton, Fig. 1, 3:65–4:1, 4:64–65 (“Buffer
layer 14 has a thickness from about 1.0 to about 2.0 μm, and preferably
about 1.5 μm.”).
Thus, as the Examiner determines (Non-Final Act. 30), it would have
been obvious to one of ordinary skill in the art at the time of the invention to
have used a threading dislocation inhibition layer having a thickness of
about 1.0 micron for modified-Wanlass’ multijunction solar cell because
Patton teaches it is a suitable thickness for a monolithic threading dislocation
inhibition layer in order to inhibit threading dislocations from propagating
into the solar cell. Patton, 3:65–4:1, 4:64–65.
Appellant’s arguments at pages 5 and 6 of the Appeal Brief, without
more, are insufficient to establish reversible error in the Examiner’s factual
findings and analysis in this regard. Appellant’s contentions that “Patton
does not describe IMM photovoltaic cells” and “Patton’s overall growth
process is the opposite of an IMM growth process” (Appeal Br. 5–6) are not
persuasive because Patton’s teachings are not limited to the disclosures in its
preferred embodiments. See In re Susi, 440 F.2d 442, 445-46 (CCPA 1971)
(explaining that disclosure of particular preferred embodiments does not
teach away from a prior art reference’s broader disclosure); see also In re
Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference
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must be considered for everything that it teaches, not simply the described
invention or a preferred embodiment.”).
As the Examiner finds (Ans. 6), Patton teaches a threading dislocation
inhibition layer (buffer layer 14) within a multijunction solar cell comprising
lattice mismatched subcells and the threading dislocation inhibition layer
having a thickness of about 1.0 micron. Patton, 3:65–4:1 (“The substrate . . .
need not be lattice matched because a buffer layer is provided between the
substrate and the first subcell.”), 4:60–65 (disclosing the “buffer layer 14 is
grown on top of substrate 11” and “[t]he buffer layer can be monolithic or
graded, and . . . preferably lattice matched to the first subcell”). The fact
that Patton may describe an embodiment where the solar cell is not an IMM
cell or formed via an IMM growth process, without more, does not negate or
take away from Patton’s broad disclosure regarding a multijunction solar
cell comprising lattice mismatched subcells and use of a threading
dislocation inhibition layer having a thickness of about 1.0 microns. See In
re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a prior art
reference’s disclosure must be considered for all that it teaches, including
“the inferences which one skilled in the art would reasonably be expected to
draw therefrom”). In that regard, Appellant has not directed us to any
persuasive evidence showing that the thickness of the monolithic threading
dislocation inhibition layer disclosed in Patton would not have been
reasonably expected by one of ordinary skill to inhibit threading dislocations
from propagating in an IMM photovoltaic cell, as disclosed in Wanlass.
Appellant’s contention that “Patton’s buffer layer serves essentially
the same function as Wanlass’ ‘graded layer’ 22 (i.e., to provide a smooth
transition from one lattice constant to another lattice constant)” (Appeal
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Br. 6) is misplaced because the Examiner does not rely on Patton for
teaching incorporating the threading dislocation inhibition layer to transition
between subcells having different lattice constants. Keller, 642 F.2d at 425.
Rather, as discussed above, the Examiner relies principally on King ’788 for
teaching that element of the claim and relies on Patton for teaching the
claimed thickness of the threading dislocation inhibition layer. Moreover, as
the Examiner finds (Ans. 7–8), Patton teaches that its buffer layer can be
monolithic or graded (Patton 4:60–65) and thus is not limited to a graded
structure or functioning as a graded layer.
Lastly, Appellant argues the Examiner’s rejection should be reversed
based on objective evidence of nonobviousness. Appeal Br. 6–16; Reply
Br. 1–11. Appellant cites and relies upon declarations submitted under 37
C.F.R. § 1.132 as evidence of (1) commercial success, (2) unexpected
results, and (3) industry praise, and contends the evidence supports the
nonobviousness of the claimed subject matter. See Appeal Br. 6, 15
(Evidence Appendix).4
Any initial obviousness determination is reconsidered anew in view of
the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990). The ultimate determination of whether a claimed invention would

4 Appellant submits and relies upon the following declarations:
(a) Declaration of Paul Sharps dated Dec. 2, 2016 (“Sharps A”);
(b) Supplemental Declaration of Paul Sharps dated Apr. 11, 2018
(“Sharps B”); (c) Supplemental Declaration of Paul Sharps dated Dec. 17,
2018 (“Sharps C”); (d) Declaration of John Merrill dated Nov. 7, 2017
(“Merrill A”); (e) Supplemental Declaration of John Merrill dated May 2,
2018 (“Merrill B”); and (f) Declaration of Robert Little dated Apr. 24, 2018
(“Little”). Appeal Br. 15 (Evidence Appendix).
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have been obvious or nonobvious is a legal conclusion, which is made based
on considering and weighing all of the facts in evidence. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Having considered Appellant’s arguments and declaration evidence,
as well as the fact-finding and reasons the Examiner provides at pages 3–19
of the Answer, page 2 of the Advisory Action, and pages 2–30 of the
Non-Final Office Action, on the record before us, we agree with the
Examiner that Appellant’s proffered evidence of nonobviousness does not
outweigh the evidence in favor of obviousness. See Tokai Corp. v. Easton
Enters., Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011) (“A strong case of prima
facie obviousness . . . cannot be overcome by a far weaker showing of
objective indicia of nonobviousness.”). We address Appellant’s proffered
evidence of nonobviousness below.
1. Commercial Success
Appellant cites and relies upon the Sharps A, Merrill A, Merrill B,
and Little Declarations as evidence of commercial success. See Appeal
Br. 9–11; Reply Br. 6–10. Relying principally upon the Merrill B
Declaration, Appellant argues that because IMM solar cells are not available
for purchase commercially as off-the-shelf products and are not sold through
traditional sales channels, it would be inappropriate to assess commercial
success of the claimed solar cells based on the number of traditional
commercial sales or based on market share of IMM solar cells sold as off-
the-shelf products or sold commercially through traditional sales channels.
Appeal Br. 10 (citing Merrill B ¶¶ 7–9).
Rather, Appellant contends and relies upon research and development
contracts, for example, as evidence probative of the commercial success of
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the claimed subject matter. Id. at 10–11 (citing Merrill B ¶ 10; Merrill A ¶¶
2, 10, 14–19; Sharps A ¶¶ 5–9; Little ¶¶ 4–6). Appellant contends the
commercial success of the claimed subject matter is “evidenced by the
ongoing contracts with an agency of the US Government, as well as the
government’s own interest in securing its rights in the invention,” and the
“features of the solar cells that led to the subsequent contract(s) and the
associated expenditures of funds are commensurate with the subject matter
of claim 15.” Id. at 11 (citing Merrill A ¶¶ 9, 10, 15); see also Reply Br. 9
(“[T]he nexus between the commercial success and the claimed invention is
indicated by the fact that, as explained by Mr. Merrill, significant additional
contracts were awarded as a result of the exceptional results achieved by the
solar cells having the features of the solar cell of claim 15.”).
We accord Appellant’s evidence of commercial success little weight
because, as the Examiner finds and explains at pages 13–18 of the Answer,
the evidence does not adequately show that the alleged commercial success
is derived from the claimed invention. That is, Appellant has not
sufficiently demonstrated a nexus between the alleged commercial success
and the claimed invention. Merely stating that the “features of the solar cells
that led to the subsequent contract(s) and the associated expenditures of
funds are commensurate with the subject matter of claim 15” (Appeal
Br. 11), without more, is insufficient to establish the requisite nexus between
the claimed features and the alleged commercial success. See In re Mageli,
470 F.2d 1380, 176 USPQ 305 (CCPA 1973) (holding conclusory
statements that commercial success is due to the merits of the invention are
entitled to little weight).
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For example, as the Examiner finds and explains (Ans. 13–16),
although the Merrill B Declaration refers to “IMM solar cells,” it is unclear
from the evidence, and Appellant does not adequately explain, what specific
IMM solar cells are being referred to, how those IMM solar cells relate or
correspond to the claimed features, and how the claimed features are tied to
the IMM solar cells’ alleged commercial success. As the Examiner finds
(Ans. 15–16), it is also unclear from the evidence and Appellant has not
adequately established that the alleged funding and additional contracts were
awarded to Appellant specifically due to the claimed features, rather than for
other reasons not recited in the claim. See Joy Techs., Inc. v. Manbeck, 751
F. Supp. 225, 229 (D.D.C. 1990), aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992)
(determining that features responsible for commercial success were not
recited in claims at issue, and therefore the evidence of commercial success
was not commensurate in scope with the broad claims at issue).
2. Unexpected Results
Appellant cites and relies principally upon the Sharps B and Sharps C
Declarations as evidence of unexpected results. See Appeal Br. 8–9; Reply
Br. 3. In particular, based on the test results provided at paragraphs 15–16
of the Sharps B and Sharps C Declarations, Appellant argues the claimed
subject matter demonstrates unexpected results based on comparative
testing. Appeal Br. 8 (stating “the results of the comparative testing were
‘surprising,’ ‘unexpected,’ and ‘advantageous’”); see also id. at 9 (“The
foregoing significant improvements in solar cell efficiency that can be
achieved by incorporating a respective threading dislocation inhibition layer
on both sides of an InGaAlAs grading interlayer in a 3J IMM solar cell
structure were surprising, as well as advantageous.”).
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We accord Appellant’s evidence of unexpected results little weight
because, as the Examiner finds (Ans. 10–12), Appellant has not adequately
established that the alleged showing of unexpected results is commensurate
in scope with the claims. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) (explaining the burden rests with Appellant to establish, among other
things, that the supplied evidentiary showing is commensurate in scope with
the claimed subject matter); see also In re Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011) (“Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims.”). As the Examiner finds
(Ans. 10–11), besides the inclusion of an InGaAlAs grading interlayer and
InGaP barrier layer, the Sharps B and Sharps C Declarations do not provide
sufficient details regarding the 3J-IMM and IDJ solar cells tested or
adequately explain why the solar cells tested are representative of the overall
scope of the claims. For example, as the Examiner finds (Ans. 11), although
claim 15 requires two threading dislocation inhibition layers, including one
of the layers “having a thickness of about 1 micron and composed of
InGa(Al)P,” the Sharps declarations refer to 3J-IMM solar cell having an
InGaP barrier layer with a thickness of 0.5 microns and no second barrier
layer on the opposite side of the grading interlayer, as claimed. Thus, we are
not persuaded Appellant has provided data sufficient to show that the alleged
unexpected results occur over the entire breadth of the claim.
3. Industry Praise
Appellant cites and relies principally upon the Sharps A, Merrill A,
and Merrill B Declarations as evidence of industry praise. See Appeal
Br. 7–8 (citing Sharps A ¶¶ 4–5; Merrill A ¶¶ 1–2, 4–6, 9, 11–14; Merrill B
¶¶ 3, 5, 11–14). Appellant argues the “evidence is indicative of strong
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industry praise for the subject matter of claim 15.” Appeal Br. 8; see also
Reply Br. 1 (arguing “the evidence establishes the necessary nexus between
the industry praise and the claims of the present application”).
Although we acknowledge and accord Appellant’s evidence of
industry praise some weight, we agree with the Examiner (Ans. 8–9) that it
is largely unclear from the evidence to what extent the industry praise is
attributable to the features of Appellant’s claimed invention. As with
commercial success, evidence of industry praise is only relevant when it is
directed to the merits of the invention claimed. See Ormco Corp. v. Align
Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006).
In sum, having considered the totality of the evidence, including the
Appellant’s alleged objective evidence of nonobviousness, we determine a
preponderance of the evidence favors the Examiner’s conclusion of
obviousness as to claim 15.
Accordingly, we affirm the Examiner’s rejection of claims 15 and
27–29 under 35 U.S.C. § 103(a) as obvious over the combination of
Wanlass, King ’788, King ’411, and Patton.
Rejection 2
The Examiner rejects claims 25 and 26 under 35 U.S.C. § 103(a) as
obvious over the combination of Wanlass, King ’788, King ’411, Patton, and
DePoy. Non-Final Act. 31–32. In response to the Examiner’s rejection,
Appellant does not present any separate or additional substantive arguments
in the Appeal Brief or the Reply Brief. Rather, Appellant relies principally
on the same arguments previously discussed and presented above in
response to the Examiner’s Rejection 1 and findings regarding the
Appeal 2019-004317
Application 11/860,183

18
combination of Wanlass, King ’788, King ’411, and Patton. See generally
Appeal Br. 2–12.
Appellant’s assertion that “DePoy does not cure the deficiencies of the
other references” (Appeal Br. 6) is conclusory and, without more,
insufficient to establish reversible error in the Examiner’s rejection. De
Blauwe, 736 F.2d at 705.
Thus, based on the fact-finding and reasoning the Examiner provides,
and for principally the same reasons we discuss above for affirming the
Examiner’s Rejection 1, we affirm the Examiner’s rejection of claims 25 and
26 under 35 U.S.C. § 103(a) as obvious over the combination of Wanlass,
King ’788, King ’411, Patton, and DePoy (Rejection 2).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
15, 27–29 103(a) Wanlass, King ’788,
King ’411, Patton
15, 27–29
25, 26 103(a) Wanlass, King ’788,
King ’411, Patton,
DePoy
25, 26
Overall
Outcome
15, 25–29

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)(iv).
AFFIRMED