Ex Parte RIM et al

Patent Trial and Appeal Board

Apr 12, 2017

13725580 (P.T.A.B. Apr. 12, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10031.010300 1278
EXAMINER
CARLSON, KOURTNEY SALZMAN
ART UNIT PAPER NUMBER
1756
MAIL DATE DELIVERY MODE
13/725,580 12/21/2012
74254 7590 04/12/2017
Okamoto & Benedicto LLP
P.O. Box 641330
San Jose, CA 95164-1330
Seung Bum RIM
04/12/2017 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 SEUNG BUM RIM and GABRIEL HARLEY
Appeal 2016-005493
Application 13/725,5 801
Technology Center 1700
Before JEFFREY T. SMITH, MONTE T. SQUIRE,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to finally reject claims 1—3 and 5—11. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The Real Party in Interest is identified as SunPower Corporation.
App. Br. 1.
Appeal 2016-005493
Application 13/725,580
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method of fabricating a solar cell, the method
comprising:
cleaving a silicon lamina from a silicon substrate, wherein
a backside of the silicon lamina includes P-type and N-type
doped regions;
positioning a metal foil between a secondary substrate and
the backside of the silicon lamina; and
forming contacts between the metal foil and the doped
regions by transmitting a pulsed laser through the secondary
substrate.
Appellants (App. Br. 2, 7) request review of the following rejections2
from the Examiner’s Final Office Action:
I. Claims 1—3 and 5—10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Carlson (US 2010/0243041 Al, published September 30,
2010), Funakoshi (US 2010/0200058 Al, published August 12, 2010),
Sivaram (US 2009/0194162 Al, published August 6, 2009), and Beeson (US
2008/0042153 Al, published February 21, 2008).
II. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable
over Carlson, Funakoshi, Sivaram, Beeson, and Swanson (US 2006/0196535
Al, published September 7, 2006).
2 The Final Action includes a rejection under 35 U.S.C. § 112, 2nd paragraph.
Final Act. 2. The Examiner indicated this rejection was overcome on page 2
of the Advisory Action dated June 17, 2015. Accordingly, this rejection is
not before us for review on appeal.
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Appeal 2016-005493
Application 13/725,580
OPINION
Rejection 73,4
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner’s prior art rejection of claims 1—
3 and 5—10 under 35 U.S.C. § 103(a) for the reasons presented by Appellants
and add the following.
Independent claim 1 is directed to a method of fabricating a solar cell
comprising the step of forming contacts between a metal foil, positioned
between a secondary substrate and the backside of a silicon lamina, and
doped regions on the backside of the silicon lamina by transmitting a pulsed
laser through the secondary substrate.
The Examiner found Carlson teaches a method of manufacturing
electrical contacts on a solar cell using pulsed laser firing of printed metal
contacts to cause their contact with n-type and p-type doped regions of a
silica lamina through the passivation layer. Final Act. 4; Carlson Figure 2,
39, 43, 56, 65, 73, and 75. The Examiner found Carlson does not teach
the transmission of the laser through a secondary substrate. Final Act. 4.
The Examiner relied on Funakoshi to teach the use of a secondary substrate
111, transparent to laser (as evidenced by Beeson3 4 5), having metal foils
3 We limit our discussion to independent claim 1.
4 A discussion of Sivaram is unnecessary for disposition of this appeal. The
Examiner relied on this reference to teach as known the cleaving of a silicon
lamina from a larger silicon substrate. Final Act. 6. Appellants have not
contested the Examiner’s finding on this matter. See Appeal Brief,
generally.
5 The Examiner relied on Beeson only as an evidentiary reference that
polyethylene terephthalate, the preferred secondary substrate of Funakoshi,
is transparent to lasers. Final Act. 5; Funakoshi 159; Beeson || 65, 76, 77.
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Appeal 2016-005493
Application 13/725,580
109/110 where the metal foil is adhesively attached to the rear side of a
silicon substrate 101 having p-type and n-type doping 104/106 to make
contact with the doping portions through the passivation layer 103. Final
Act. 4—5; Funakoshi Figures 1, 2, 6, 48, 74; Beeson Figure 2E, || 65, 76,
77. The Examiner determined that it would have been obvious to one of
ordinary skill in the art to modify the method of Carlson by substituting
Carlson’s printing of metal contacts with Funakoshi’s step of providing a
secondary substrate having a metal foil because the formation of the foils in
an insulative substrate ensures electronic separation of the n-type and p-type
electrodes while enabling long term weather protection for the contacts.
Final Act. 5; Funakoshi || 56—58.
Appellants argue, and the Examiner agrees, Carlson and Funakoshi,
taken alone or in combination, do not disclose transmission of a pulsed laser
through a secondary substrate to form contacts between a metal foil and the
doped regions of a solar cell. App. Br. 3^4; Reply Br. 2; Ans. 7. Appellants
additionally argue that the benefit provided by Funakoshi’s wiring substrate
does not involve firing a laser through the wiring substrate and, thus, there is
no objective reason to transmit a pulsed laser through the wiring substrate of
Funakoshi. App. Br. 7; Reply Br. 5. Appellants further argue the Examiner
does not provide support for the suitability of replacing printed contacts of a
solar cell with the wiring substrate of Funakoshi in the fabrication of
individual solar cells. App. Br. 7; Reply Br. 5—6.
We agree with Appellants that the Examiner’s obviousness rejection
cannot be sustained. The rejection is premised on the Examiner’s position
that one skilled in the art would use Funakoshi’s secondary substrate having
metal foils in Carlson’s method of forming electrical contacts via pulsed
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Application 13/725,580
lasers and form contacts between the metal foils of the secondary substrate
and the doped portions of a silicon lamina by transmitting Carlson’s pulsed
laser through Funakoshi’s secondary substrate. Final Act. 4—6. The
Examiner, however, points to no portions of Carlson or Funakoshi that
disclose transmission of a pulsed laser through a secondary substrate to form
contacts between a metal foil and the doped regions of a solar cell. App. Br.
3^4; Reply Br. 2; Ans. 7. Further, the Examiner has not provided an
adequate technical explanation of how one skilled in the art would have
adapted Funakoshi’s secondary substrate having metal foils for use in
Carlson’s method of forming contacts that relies on metal conductors printed
on a passivation layer. Carlson | 68. That is, the Examiner has not set forth
a factual basis sufficient to support the obviousness rejection of the
Appellants’ claimed method. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis”).
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Accordingly, we reverse the Examiner’s prior art rejections of claims
1—3 and 5—10 under 35 U.S.C. § 103(a) for the reasons presented by
Appellants and given above.
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Appeal 2016-005493
Application 13/725,580
Rejection II
The Examiner’s prior art rejection of claim 11 under 35 U.S.C.
§ 103(a) is premised on the teachings of Carlson, Funakoshi, Sivaram, and
Beeson rendering the subject matter of independent claim 1 obvious to one
skilled in the art. Final Act. 7. As discussed above, such is not the case.
Moreover, the Examiner does not rely on the additionally cited secondary
reference to overcome the previously noted deficiencies of Carlson,
Funakoshi, Sivaram, and Beeson. Id.
Accordingly, we also reverse the Examiner’s prior art rejection of
claim 11 for the reasons presented by Appellants and given above.
ORDER
The Examiner’s prior art rejections of claims 1—3 and 5—11 under
35 U.S.C. § 103 (a) are reversed.
REVERSED
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