Ex Parte KING et al

Patent Trial and Appeal Board

Jun 13, 2018

13555725 (P.T.A.B. Jun. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/555,725 07/23/2012
124834 7590 06/15/2018
MH2 Technology Law Group (w/Boeing)
TIMOTHY M. HSIEH
1951 Kidwell Drive
Suite 310
Tysons Corner, VA 22182
FIRST NAMED INVENTOR
Richard R. KING
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03-1261-USNP/0192.0151DIV 3540
EXAMINER
GARDNER, SHANNON M
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
06/15/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
doreen@mh2law.com
docketing@rnh2law.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD R. KING, CHRISTOPHER M. FETZER, and
PETERC. COLTER
Appeal2017-006369
Application 13/555,725
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY W. ABRAHAM, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals the Examiner's final rejection of claims 1-10.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed July 23, 2012
("Spec."); Final Office Action posted June 30, 2016 ("Final Act."); Appeal
Brief filed December 2, 2016 ("Appeal Br."); Examiner's Answer posted
January 12, 2017 ("Ans."); and Reply Brief filed March 10, 2017 ("Reply
Br.").
2 Appellant is the Applicant, The Boeing Company, which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2017-006369
Application 13/555,725
The Claimed Invention
Appellant's disclosure relates to semiconductor materials and, more
specifically, to solar cells having a transparent composition-graded buffer
layer. Abstract; Spec. ,r,r 2, 16-17. Claim 1 is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief (key disputed claim language italicized and bolded):
1. A solar cell comprising:
a first layer having a first-layer lattice parameter;
a second layer having a second-layer lattice parameter
different from the first-layer lattice parameter, wherein the
second layer includes a photoactive second-layer
material;
a third layer having a third-layer lattice parameter
different from the second-layer lattice parameter, wherein the
third layer includes a photoactive third-layer material;
a graded first buffer layer extending between and
contacting the first layer and the second layer and having a
first-buffer-layer lattice parameter that increases with increasing
distance from the first layer toward the second layer; and
a transparent graded second buffer layer extending
between and contacting the second layer and the third layer and
having a second-buffer-layer lattice parameter that decreases
with increasing distance from the second layer toward the third
layer.
Appeal Br. 14.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
King et al.,
(hereinafter "King")
US 6,340,788 Bl
2
Jan.22,2002
Appeal2017-006369
Application 13/555,725
Lao et al., Modulator Driver and Photoreceiver for 20 Gb/s Optic-Fiber Links,
Journal ofLightwave Technology, Vol. 16, No. 8 (1998) 1491-1497
(hereinafter "Lao").
Dimroth et al., 25.5% Efficient Gao_35Jno.6sP!Gao.s3Jn.o.11As Tandem Solar
Cells Grown on GaAs Substrates, IEEE Electron Device Letters, Vol. 21,
No. 5 (2000) 209-211 (hereinafter "Dimroth").
The Rejection
On appeal, the Examiner maintains the following rejection: claims 1-
10 rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
King in view of Lao and Dimroth. Ans. 3; Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer,
and Final Office Action, which we adopt as our own. We highlight and
address specific findings and arguments below for emphasis.
Appellant argues claims 1-10 as a group. Appeal Br. 3--4. We select
claim 1 as representative and the remaining claims subject to this rejection
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of King, Lao, and
Dimroth suggests a solar cell satisfying all of the limitations of claim 1 and
thus, would have rendered claim 1 obvious. Ans. 3-5 ( citing King, Figs. 1 a,
5b, col. 7, 1. 64---col. 8, 1. 10, col. 21, 1. 35---col. 2, 1. 29; Lao, Abstract, 1491,
1493; Dimroth, 209 (Introduction), 210).
Appellant argues that the Examiner's rejection of claim 1 should be
reversed because King does not teach or suggest graded buff er layers, as
3
Appeal2017-006369
Application 13/555,725
required by the claims. Appeal Br. 4--5. In particular, Appellant argues that
the Examiner's rejection is erroneous because rather than teaching graded
buffer layers, King is directed to strain-compensated structures and teaches
that "graded buffer layers are extraneous or not to be used when a strain-
compensated structure is used." Appeal Br. 4. Appellant also argues that
the "Examiner provides no reason why a skilled artisan would add buffer
layers to King's strain-compensated structures where they are not needed."
Reply Br. 3.
Relying principally on the Ermer Declaration, 3 Appellant contends
that the Examiner's finding regarding the phrase "may be absent" of King
(King, col. 21, 11. 33-35) is incorrect and a person of ordinary skill in the art
reading King would not have understood the phrase as teaching or
suggesting the use of graded buffer layers. Appeal Br. 5---6 ( citing Ermer
Deel. ,r 4). Appellant argues that "objective evidence, such as the Ermer
Declaration, ... completely repudiates the Examiner's interpretation of
this phrase." Id. at 7.
Appellant further argues that the
Examiner's substitution of her own judgment for that of the
Ermer Declaration regarding what ... King actually teaches is
improper, and cannot serve as the basis for a legitimate
rejection under [35 U.S.C.] Section 103, particularly since the
Examiner has provided no contrary objective evidence of her
own.
Appeal Br. 7; see also Reply Br. 1-2.
3 See Declaration of James H. Ermer Pursuant to 37 C.F.R. § 1.132 dated
June 3, 2016 ( the "Ermer Declaration"), filed June 6, 2016.
4
Appeal2017-006369
Application 13/555,725
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination that the combination of King, Lao,
and Dimroth suggests all of the limitations of claim 1 and conclusion that the
combination would have rendered the subject matter of the claim obvious.
King, Figs. la, 5b, col. 7, 1. 64---col. 8, 1. 10, col. 21, 1. 35---col. 2, 1. 29; Lao,
Abstract, 1491, 1493; Dimroth, 209 (Introduction), 210.
Contrary to what Appellant argues, we concur with the Examiner's
finding that the King reference does teach or suggest the graded buffer
layers, as claimed. In particular, as the Examiner finds (Ans. 8), King
explicitly teaches that
If the layers in the subcell(s) that have a different lattice
constant than the substrate are thin enough compared to their
lattice mismatch with the substrate for them to be strained
layers free from dislocations, and yet are thick enough to have
ample photogenerated current density for current matching to
the other subcells in the multijunction cell 110, then the
transition layers 122, 142, 162, 182 may be absent (FIG. Sa).
King, col. 21, 11. 27-35 (emphasis added). King teaches that the "transition
layers," which the Examiner finds (Ans. 8-9) are functionally equivalent and
correspond to the claimed graded buffer layers, may be absent in strain-
compensated structures. King, col. 8, 11. 13-15 ( disclosing that transition
layers "may be composed of multiple sub layers, as in a strained-layer
superlattice or in a layer with step-graded composition, in order to transition
from one lattice constant to another"), col. 21, 11. 34--35.
Thus, we find that the King reference not only teaches that the use of
graded buffer layers in solar (photovoltaic) cells was known in the art, but as
5
Appeal2017-006369
Application 13/555,725
the Examiner finds (Ans. 8-10), the reference also teaches the optionality of
the graded buffer layers (transition layers), i.e., that the graded buffer layers
may be absent or present in a strain-compensated structure. King, Abstract
( disclosing that a "transition layer may be placed intermediate the upper side
and the upper subcell(s)"), col. 20, 11. 39-46, col. 21, 11. 34--35, Fig. 5a, Fig.
5b (disclosing embodiment with transition layers 122, 142, 162, 182).
The Lao reference further evidences that the use of graded buffer
layers in solar cells was known in the art. Lao, 1493 ( disclosing that a
"linearly graded buffer" layer is used to accommodate the lattice mismatch
between the structure's substrate and absorption layer).
We do not find persuasive Appellant's argument that King is directed
to strain-compensated structures (Appeal Br. 4) for the well-stated reasons
provided by the Examiner at pages 8-10 of the Answer and, particularly,
because a reference is good for all that it teaches to a person of ordinary skill
in the art, and not only for what it sets forth as preferred. See, e.g., Merck &
Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The fact
that King may be directed to strain-compensated structures, without more,
does not take away from the reference's broad disclosure regarding the use
of graded buffer layers ( transition layers) and that such layers may be absent
or present in a strain-compensated configuration (King, col. 21, 11. 27-35)
and all that it teaches, including the reasonable inferences that would be
drawn by the skilled artisan. See In re Preda, 401 F.2d 825, 826 (CCPA
1968).
As the Examiner explains (Ans. 10), Appellant's argument ignores the
King reference's use of the term "may" and the phrase "may be absent" and
what one of ordinary skill would have reasonably inferred from those terms,
6
Appeal2017-006369
Application 13/555,725
including the optional use of graded buffer layers. In particular, as the
Examiner finds (Ans. 10), because King teaches that the graded buffer layers
"may" be absent in a strain-compensated structure, the reference also
necessarily teaches and would have reasonably suggested to one of ordinary
skill in the art that the layers may be present in such a structure.
Appellant's assertion that "graded buffer layers are extraneous or
not to be used when a strain-compensated structure is used" (Appeal Br. 4)
is not well-taken because it is conclusory and unsupported by persuasive
evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). As the Examiner correctly points outs (Ans. 9-10), Appellant does
not provide a citation or direct us to any specific teaching or disclosure-
whether in King or elsewhere in the record-for the contention that graded
buffer layers are not to be used in a strain-compensated structure or that such
use would somehow render the device inoperable or diminish its efficacy.
Rather, as the Examiner finds (Ans. 8-10) and as previously discussed
above, the King reference actually teaches that the graded buffer layers may
be absent or present in a strain-compensated configuration.
Appellant's arguments regarding the Ermer Declaration (Appeal Br.
5-7; Reply Br. 1-2) are not persuasive of reversible error in the Examiner's
analysis and findings because they are themselves conclusory and
unsupported by persuasive evidence in the record. De Blauwe, 736 F.2d at
705 (Fed. Cir. 1984). The portion of the Ermer Declaration upon which
Appellant relies (see Ermer Deel. ,r 4) is argumentative, lacks adequate
factual support, and rests on Mr. Ermer' s uncorroborated opinion testimony
and conclusory statements as the bases for his disagreement with the
Examiner's factual findings. See, e.g., Ashland Oil, Inc. v. Delta Resins &
7
Appeal2017-006369
Application 13/555,725
Refractories, Inc., 776 F.2d 281,294 (Fed. Cir. 1985) ("Lack of factual
support for expert opinion going to factual determinations ... may render
the testimony of little probative value in a validity determination."); Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.") (citations omitted); cf also 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's contentions at pages 3--4 of the Reply Brief regarding
"submitting evidence to rebut any possible prima facie case of obviousness"
and that the "Examiner provides no reason why a skilled artisan would add
buffer layers to King's strain-compensated structures where they are not
needed" are equally unpersuasive because they are conclusory and based
principally on the uncorroborated opinions set forth in the Ermer Declaration
addressed above.
Moreover, as the Examiner finds (Ans. 8-10) and previously
discussed above, because the King reference teaches that the use of graded
buffer layers in solar cells was known in the art and that the graded buffer
layers may be absent or present in a strain-compensated structure, it would
have been obvious to one of ordinary skill in the art to have used a graded
buffer layer in King's strain-compensated structure. King, col. 20, 11. 39--46,
col. 21, 11. 27-35. See also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.").
8
Appeal2017-006369
Application 13/555,725
Appellant's contentions, without more, are insufficient to rebut the
Examiner's primafacie case of obviousness or otherwise establish reversible
error in the Examiner's analysis and conclusion in this regard.
Accordingly, we affirm the Examiner's rejection of claims 1-10 under
35 U.S.C. § 103 as obvious over the combination of King, Lao, and
Dimroth.
DECISION
The Examiner's rejection of claims 1-10 is affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9