Ex Parte Cornfeld

Patent Trial and Appeal Board

Sep 20, 2017

13921756 (P.T.A.B. Sep. 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.
13/921,756 06/19/2013 Arthur Cornfeld B005 5166
128940 7590 09/20/2017
SolAero Technologies Corp.
10420 Research Road SE
Albuquerque, NM 87123
EXAMINER
LUKE, DANIEL M
ART UNIT PAPER NUMBER
2813
MAIL DATE DELIVERY MODE
09/20/2017 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
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Ex parte ARTHUR CORNFELD1
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Appeal 2016-007119
Application 13/921,756
Technology Center 2800
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The Applicant is Emcore Solar Power, Inc. Appellant identifies SolAero
Technologies Corp. as the real party in interest (Br. 1).
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Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1–7 and 10–18. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.
Appellant’s invention is directed to semiconductor devices such as
multijunction solar cells based on III-V semiconductor compounds including
a metamorphic layer (i.e., metamorphic multijunction solar cells). (Spec.
¶ 34).
Claim 1 is illustrative:
1. A method of manufacturing a solar cell comprising:
providing a first substrate;
forming an upper first solar subcell having a first band gap
on said first substrate;
forming a second solar subcell adjacent to said first solar
subcell and having a second band gap smaller than said first band
gap;
forming a first graded interlayer adjacent to said second
solar subcell, said first graded interlayer having a third band gap
greater than said second band gap;
forming a third solar subcell adjacent to said first graded
interlayer, said third subcell having a fourth band gap smaller
than said second band gap such that said third subcell is lattice
mismatched with respect to said second subcell;
forming a second graded interlayer adjacent to said third
solar subcell, said second graded interlayer having a fifth band
gap greater than said fourth band gap;
forming a lower fourth solar subcell adjacent to said
second graded interlayer, said lower subcell having a sixth band
gap smaller than said fourth band gap such that said fourth
subcell is lattice mismatched with respect to said third subcell;
mounting a surrogate substrate on top of said fourth solar
subcell;
removing the first substrate;
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etching a first trough around the periphery of said solar
cell to the surrogate substrate so as to form a mesa structure on
said surrogate substrate;
passivating an exposed surface of the solar cell with a
passivating solution;
depositing an encapsulating layer over the passivated
surface surface2 by chemical vapor deposition immediately after
the passivating step; and
depositing an anti-reflection coating layer over the
encapsulating layer.

Appellant appeals the following rejections3:
1. Claims 1–7 and 10–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Newman (US 2010/0229926, pub. Sept. 16, 2010)
in view of Lai (Li-Wen Lai et al., Performance Improvement of
(NH4)2Sx-Treated III–V Compounds Multijunction Solar Cell Using
Surface Treatment, 155 J. Electrochem. Soc’y, B1270–73 (2008)).
2. Claims 1–7 and 10–18 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–14
and 16 of copending Application No. 13/954,610 in view of Newman.
3. Claims 1–7 and 10–18 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 6–
18, and 20 of copending Application No. 13/964,774 in view of
Newman and Junghänel (US 2012/0318347 A1, pub. Dec. 20, 2012).

2 The second occurrence of the word “surface” should be deleted in the event
of further prosecution.
3 The Examiner withdrew the 35 U.S.C. § 112, ¶ 1, rejection for lack of
written description of claims 1 and 20, and the 35 U.S.C. § 112, ¶ 2 rejection
of claim 20. The rejection of claim 20 was moot because the claim was
cancelled.
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Appellant does not argue the merits of the provisional double patenting
rejections other than to state that if the provisional obviousness-type double
patenting rejection are the only rejections left pending in this appeal after
Board review, the Examiner should pass this application to issue pursuant to
the Manual of Patent Examining Procedure § 822.01 (Br. 11–12). Because
we reverse the Examiner’s § 103 rejection, we decline to reach the merits of
the provisional double patenting rejections. Ex parte Moncla, 95 USPQ2d
1884, 1885 (BPAI 2010) (precedential); see also, Ex parte Jerg, No. 2011-
000044, 2012 WL 1375142, at *3 (BPAI 2012) (informative) (“Panels have
the flexibility to reach or not reach provisional obviousness-type double-
patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI
2010)”).

FINDINGS OF FACT & ANALYSIS
The Examiner finds that Newman teaches all the limitations of claim
1, except for passivating the exposed surface of the solar cell with a
passivating solution and forming an encapsulating layer over the passivated
surface by chemical vapor deposition (CVD) immediately after the
passivating step, where the antireflection coating (ARC) is deposited on the
encapsulating layer (Final Act. 7). With regard to the step of passivating the
exposed surface of the solar cell, the Examiner finds that Lai teaches etching
to expose a window layer in a solar cell, which the Examiner finds to be
similar to Newman’s Figure 12 (id.). The Examiner finds that Newman’s
Figure 12 shows that contact layer 104 has been etched in regions other than
where the ohmic contact 501 is formed to expose the window layer 105 (id.).
The Examiner finds that Lai teaches to dip the solar cell in an ammonium
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sulfide solution, followed immediately by the deposition of TiO2/SiO2 ARC
layer (Final Act. 7–8). The Examiner finds that the titanium dioxide may be
considered an encapsulating layer (Final Act. 8). The Examiner concludes
that it would have been obvious to passivate the window layer of Newman
according to the technique taught by Lai in order to reduce surface states,
which reduces the loss of photoinduced carriers, thereby improving
efficiency (id.).
Appellant argues that Lai is directed to tandem-type III-V compound
multijunction solar cells which differ from the materials used in the layers of
Newman’s inverted metamorphic multijunction (IMM) solar cell (Br. 7–9).
Appellant contends that the IMM solar cell includes graded interlayers and
InGaAlAs layers which are not used in Lai’s solar cell (Br. 9). Appellant
argues that the different compositions and complexity of structure would not
have suggested that passivating Newman’s IMM solar cell with Lai’s
passivating solution would have yielded a functional solar cell (id.).
Claim 1 recites in relevant part:
mounting a surrogate substrate on top of said fourth solar subcell;
removing the first substrate;
etching a first trough around the periphery of said solar cell to the
surrogate substrate so as to form a mesa structure on said surrogate
substrate;
passivating an exposed surface of the solar cell with a passivating
solution.
Claim 1 requires that after forming four solar cells and graded layers,
attaching a surrogate substrate to the fourth solar cell and removing the
substrate used as the initial substrate (i.e., first substrate) on which the four
solar cells and graded layers are formed. The etching of solar cell refers to
the etching of the now exposed four solar cells and graded layers that
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comprise the “solar cell” down to the surrogate substrate. As shown in
Appellant’s Figure 12A the etching step forms a channel 510 that exposes
layers of the solar cells and graded layer all the way down to the metal layer
130 formed on the surrogate substrate. The next step includes passivating
the exposed surface of the now etched solar cell with a passivating solution.
“[E]xposed surface of the solar cell” includes all the layers of the solar cells
and graded layers. Our construction is supported by Appellant’s Figure 12C
that shows that dipping in the passivating solution forms as passivated layer
602 along the exposed layers of the solar cell down to the metal layer 130
formed on the surrogate substrate.
With this claim construction in mind, the Examiner has not shown that
the combined teachings of Newman and Lai would have suggested
passivating the various layers that form the solar cell. The Examiner’s
rejection is based upon using Lai’s teaching to passivate the “window layer”;
that is, to passivate the exposed window layer 105 shown in Newman’s
Figure 12. (Final Act. 8). Although the Examiner finds that Newman
teaches etching a channel 510 that exposes the solar cell layers, the
Examiner does not explain how passivating the window layer as shown in
Newman’s Figure 12 would affect the layers of the solar cell. Appellant
contends that the layers in Newman’s IMM differ materially and structurally
from the layers in Lai’s solar cell. (Br. 9). The Examiner responds that the
composition of the internal layers are not important because the passivation
at the window layer taught by Lai would occur irrespective of the
composition of the internal layers (Ans. 3–4). Claim 1 requires passivating
the exposed surface of the solar cell, which we construe to include the
various layers composing each of the solar cells. The Examiner has not
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shown that it would have been obvious to passivate the exposed surface of
the solar cell as that phrase is properly construed in light of the
Specification. The Examiner has not shown there would have been a
reasonable expectation of success in passivating Newman’s exposed portion
of the solar cell using Lai’s passivating solution for a window layer.
On this record, we reverse the Examiner’s § 103 rejection over
Newman in view of Lai.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED