11734118 (P.T.A.B. Apr. 20, 2017)

Ex Parte Berke et al

Patent Trial and Appeal BoardApr 20, 2017

11734118 (P.T.A.B. Apr. 20, 2017)

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. 11/734,118 04/11/2007 Howard Berke 310470.3026-101 P05/278 9415 7590 BOWDITCH & DEWEY, LLP 311 MAIN STREET P.O. BOX 15156 WORCESTER, MA 01615-0156 EXAMINER DINH, BACH T ART UNIT PAPER NUMBER 1756 MAIL DATE DELIVERY MODE 04/20/2017 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 HOWARD BERKE, CHRISTOPH BRABEC, and RUSSELL GAUDIANA Appeal 2016-003739 Application 11/734,118 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 5—12, 14—41, and 43. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Upon consideration of the evidence of record and each of Appellants’ contentions as set forth in the Appeal Brief, we determine that Appellants have not demonstrated reversible error in any of the Examiner’s rejections in 1 The real party in interest is Merck Patent GmbH. Br. 5. Appeal 2016-003739 Application 11/734,118 the Final Office Action at pages 2—14 (mailed December 4, 2014). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. Appellants’ arguments focus on the transitional phrase “consisting of’ as recited twice in the method of claim 1 (Claims App.; Br. 25). Accordingly, all of the claims stand or fall with claim 1. Appellants’ argument that the Examiner’s proposed combination does not satisfy the closed-ended term “consisting of’ because Brabec discloses that the inorganic electron acceptors CdTe or CIS are required to exist in a mixture with an electron donor polymer (Br. 10—16), is not persuasive. Appellants have not adduced any persuasive reasoning or evidence of nonobviousness in response to the Examiner’s determination that the subject matter of claim 1 would have been obvious to the ordinary skilled artisan because Forrest teaches that acceptor materials, such as fullerene, are not required to function only in a mixture of donor/acceptor material (see Ans. 14—15 (citing Forrest 17:33—40); see also Forrest 17:20-25; 18:17—19). Brabec, furthermore, discloses that fullerenes, CdTe, or CIS have the equivalent function as electron acceptors. Brabec 123. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Therefore, we discern no reversible error in the Examiner’s reasoned determination that the ordinary skilled artisan would have gleaned from Forrest, in view of Brabec, that CdTe or CIS is capable of functioning by itself as an electron acceptor material outside the context of a donor/acceptor mixture. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the 2 Appeal 2016-003739 Application 11/734,118 challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Appellants’ assertion that [i]f the claim element of the first photoactive layer containing ONLY inorganic semiconductor material and the ONLY inorganic semiconductor material present can be amorphous silicon, crystalline silicon, cadmium telluride, gallium arsenide, copper indium selenide, or copper indium gallium selenide is not identified as a specific circumscribed group in the reference, that reference or a combination including that reference does not disclose or suggest all elements of the claimed invention (Br. 11—12 (italics added)), is likewise unpersuasive. Claim 1, which recites the term “or,” encompasses six alternative inorganic semiconductor materials. Therefore, the Examiner need only apply prior art that identifies at least one claimed species in order for that reference to disclose or suggest the claimed inorganic semiconductor material. In this instance, Appellants have not shown that the Examiner reversibly erred in finding that Brabec teaches or suggests the claimed inorganic semiconductor materials cadmium telluride or copper indium selenide (i.e., CdTe or CIS, respectively). Thus, we affirm the rejections of claims 1, 5—12, 14-41, and 43. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 3