Ex Parte Mima et al

Patent Trials and Appeals Board

Dec 28, 2018

13880459 - (D) (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/880,459 10/30/2013
23373 7590 01/02/2019
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Shoji Mirna
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.
Q203678 1765
EXAMINER
CHERN, CHRISTINA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOJI MIMA
and T AKAHIRO SEIKE
Appeal2018-000194
Application 13/880,459
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1 and 4 of Application 13/880,459
under 35 U.S.C. § 103(a) as obvious. Final Act. (Jan. 18, 2017). Pursuant
to 35 U.S.C. § 134(a), Appellants 1 seek reversal of this rejection. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Sumitomo Chemical Company, Ltd. is identified as the real party in
interest. Br. 2.
2 Claims 2, 3, 6, and 7 are withdrawn from consideration and, thus, are not
subject to the appealed rejection. Final Act. 1.
Appeal2018-000194
Application 13/880,459
BACKGROUND
The '459 Application describes a power generator in which a plurality
of organic photovoltaic cells are serially connected. Spec ,r,r 1, 2. Claim 1 is
representative of the '459 Application's claims and is reproduced below
from the Claims Appendix:
1. A power generator comprising:
a supporting substrate; and
a plurality of organic photovoltaic cells provided on the
supporting substrate along a prescribed alignment direction and
serially connected with each other, wherein
each of the organic photovoltaic cells comprises a pair of
electrodes and an active layer provided between the pair of
electrodes,
the active layer integrally extends along the prescribed
alignment direction across the plurality of organic photovoltaic
cells, in a planar view,
each of the pair of electrodes has a first extending portion
and a second extending portion that extends to protrude from
the active layer into a direction perpendicular to both a
thickness direction of the supporting substrate and the
prescribed alignment direction, in the planar view, and
one electrode of the pair of electrodes further has
connecting portions that extend in the prescribed alignment
direction from the first extending portion and the second
extending portion to an opposite electrode of another organic
photovoltaic cell adjacent in the prescribed alignment direction
and the connecting portions are connected to the same opposite
electrode,
wherein the first extending portion extends to protrude
from the active layer into one width direction and the second
extending portion extends to protrude from the active layer into
another side of the width direction, in the planar view.
Br. 17 (Claims App.) ( emphasis added).
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Application 13/880,459
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1 and 4 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Hamakawa, 3 Kihara, 4 and
Farquhar. 5 Final Act. 3; Answer 2.
DISCUSSION
Appellants argue for the reversal of the obviousness rejection to all of
the appealed claims on the basis of limitations present in independent claim
I. See Br. 7-16. We select claim 1 as representative. Claim 4 will stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner found, inter alia, that Hamakawa's
photovoltaic device describes the claimed power generator comprising
supporting substrate (insulation layer 12) and the plurality of photovoltaic
cells (generating zones 13, 14, and 15). Final Act. 3 (citing Hamakawa Figs.
5A, 5C). The Examiner further found that each of Hamakawa's photovoltaic
cells comprises the claimed pair of electrodes ( first and second electrodes
17, 18, respectively) and an active layer (semiconductor layer 16) in the
requisite configuration. Final Act. 3 (citing Hamakawa Fig. 5A; 9:38--40).
According to the Examiner, Hamakawa teaches that each electrode 17, 18
includes extending portions 19, 20, respectively, each with connecting
3 US 4,612,409, issued Sept. 16, 1986.
4 JP 2011-018890 A, published Jan. 27, 2011. We rely upon a machine
translation that is of record in the '459 Application.
5 US 2007/0095384 Al, published May 3, 2007
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Appeal2018-000194
Application 13/880,459
portions. Final Act. 3--4 (citing Hamakawa Figs. 5A, 5B). As the Examiner
found, although
Hamakawa discloses the extending portion has a first extending
portion [(vertical portions 19, 20)], the first extending portion
extending to protrude from the active layer into one width
direction in a planar view, wherein the connecting portion
extends in the alignment direction from the first extending
portion ... , [Hamakawa] does not express[]ly disclose a
second extending portion extending to protrude from the active
layer into the other side of the width direction, wherein the
connecting portion extends in the alignment direction from the
second extending portion.
Final Act. 5-6 ( citing Hamakawa Figs. 5A, 5B); see also Final Act. 3--4.
The Examiner, however, determined that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to [include] a second
extending portion extending to protrude from the active layer
into the other side of the width direction, wherein the
connecting portion extends in the alignment direction from the
second extending portion.
Id. at 6. According to the Examiner, including such a second extending
portion would have been a "[m]ere duplication of parts." Id.
Appellants argue, inter alia, that modifying Hamakawa to include an
additional extending portion would not have been merely duplicating the
first extending portion because: (1) the claimed power generator "provides
advantageous effects that are both new and unexpected in view of the cited
references," Br. 9; (2) specifically, "the area for the power generation can be
made large [and] efficiency can be enhanced as well," id. (citing Spec. ,r,r
30, 72); and (3) the applied prior art does not teach that including two
extending portions provides "an increase of electric current" and
"remarkably enhanced" power generation efficiency. Br. 10.
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Appeal2018-000194
Application 13/880,459
Appellants' arguments are not persuasive.
The existence of unexpected results vel non is a question of fact. In re
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). A showing of unexpected
results must be based upon evidence rather than argument or speculation.
Id. at 1343--44.
We have considered the results presented in the '459 Application's
Specification. We do not consider these results sufficient to establish the
patentability of claim 1 by a preponderance of the evidence.
First, we agree with the Examiner that although the Specification
describes that the claimed configuration provides a reduction in power
consumption at the electrode along with an enhancement in power
generation efficiency (Spec. ,r 30; see also id. at ,r 72), such results are
neither new nor unexpected after "providing an additional connecting
portion and extending portion on both sides of the organic photovoltaic cells
in view of the prior art." Answer 3. We further agree with the Examiner
that the Specification is silent as to whether these results are unexpected. Id.
at 3.
Second, to establish the existence of unexpected results, Appellants
must establish, inter alia, that there actually is a difference between the
results obtained through the claimed invention and those of the closest prior
art. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citing In reKlosak,
455 F.2d 1077 (CCPA 1972); In re D'Ancicco, 439 F.2d 1244 (CCPA
1971)).
In this case, Appellants have not established that the claimed power
generator provides improved power generation and enhanced efficiency as
compared to results obtained through Hamakawa's photovoltaic device.
Thus, when we consider all of the evidence, including the evidence from the
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Appeal2018-000194
Application 13/880,459
Specification relied on by Appellants, we determine that the preponderance
of the evidence supports the Examiner's conclusion that including a second
extending portion would have been a mere duplication of Hamakawa's first
extending portion.
In the alternative, the Examiner concluded that the ordinary skilled
artisan would have incorporated a second extending portion in Hamakawa's
photovoltaic device in the requisite configuration because doing so would
have provided efficient current collection. Final Act. 6. As the Examiner
found, "Farquhar teaches that depending on the size of the solar cell, one or
more parallel pairs of conductive elements are used to provide adequate
conductivity to collect current efficiently." Id. (citing Farquhar ,r 20).
Appellants argue that the Examiner has not established a prima facie
case of obviousness because: (1) "Farquhar teaches a completely different
configuration than that ofHamakawa," Br. 11; (2) there is no "equivalence
between the conductive tabs 30 and 34 and the presently claimed connecting
portions and extending portions" as these tabs and portions "do not have the
same exact function," id. at 13; (3) Farquhar warns against modifying the
width to height ratio of conductive tabs 30, 34 "[without] consideration of
possible negative effects," id. at 13-14; and ( 4) addition of a second
electrically conductive element would have required increasing Farquhar's
size in a direction perpendicular to the extending direction of conductive
tabs 30, 34, which "would not suggest adding new extending portions 19 and
20 to the opposite site of [Hamakawa's] cells." Br. 14 (citing Farquhar Fig.
2; Hamakawa Fig. 5).
Appellants' arguments are unpersuasive because they are not directed
to the Examiner's rationale for modifying Hamakawa to incorporate
Farquhar's additional parallel pairs of conductive elements. Rather,
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Application 13/880,459
Appellants' arguments are directed to whether it was improper for the
Examiner to combine Farquhar with Hamakawa when each reference
discloses different conductive elements.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413,425 (CCPA 1981). As explained by the
Examiner, Farquhar was "not relied upon to teach modifying Hamakawa
based on the structure of Farquhar because Hamakawa already teaches the
structure of the connecting portion and the extending portion." Answer 6.
Furthermore, Farquhar's conductive tabs 30, 34, Hamakawa's connecting
portions and extending portions 19, 20, and the claimed connecting portions
and extending portions each collect current from adjacent photovoltaic cells.
Farquhar ,r 20; Hamakawa Figs. 5A-5C; Spec. ,r,r 30, 90.
Thus, Appellants' arguments ( 1 }-( 4) fail to identify reversible error in
the Examiner's determination that it would have been obvious to confer
efficient current collection for Hamakawa's photovoltaic device according to
the teachings of Farquhar, namely, by incorporating an additional connecting
portion and extending portion structure on the other side of Hamakawa's
width direction. See Final Act. 6; Answer 6.
In view of the foregoing, we affirm the Examiner's rejection of claims
1 and 4.
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Appeal2018-000194
Application 13/880,459
CONCLUSION
For the reasons set forth above, we affirm the§ I03(a) rejection of
claims 1 and 4 of the '459 Application.
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
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