Ex Parte Sharps et al

Board of Patent Appeals and Interferences

Apr 23, 2010

10723456 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL R. SHARPS,
MARVIN B. CLEVENGER,
and MARK A. STAN
____________________

Appeal 2008-003519
Application 10/723,456
Technology Center 1700
____________________

Decided: April 23, 2010
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 48-66, 68-80, and 82-98 under both 35 U.S.C.
§ 112, ¶ 1 and 35 U.S.C. 112, ¶ 2 on the basis that “substantially the same
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composition and thickness,” as required by all the claims, lacks written
descriptive support and is indefinite. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ invention relates to a multijunction solar cell with at least
one integral monolithic bypass diode (Spec. 3:33-34). The bypass diode is
part of a means for passing current away from a shadowed or damaged solar
cell (Spec. 1:32 to 2:3). Claim 48 is illustrative (emphasis added to highlight
the language at issue):
48. An integrated semiconductor structure comprising:
a multijunction solar cell including a first photoactive
junction formed in a substrate forming a bottom subcell where
there are no subcells located between the bottom subcell and the
lower surface of the substrate, and a second photoactive
junction formed in a region overlying said bottom subcell and
forming a second subcell; and

means for passing current when said multijunction solar
cell is shaded, wherein said means is on the same substrate as
the multijunction solar cell, wherein said means and said
bottom subcell have an identical sequence of semiconductor
layers, wherein each semiconductor layer in the means has
substantially the same composition and thickness as the
corresponding layer in the bottom subcell, wherein the means
for passing current is electrically connected in parallel across
the multijunction solar cell.

II. DISPOSITIVE ISSUES
The Examiner finds that the claims fail to comply with the written
description requirement because the word “substantially” is never used in
the originally filed disclosure to describe any part of the invention, and the
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word “substantially” introduces a "fudge factor" that opens up whatever it is
modifying to interpretation (Ans. 5). The Examiner determines that the
claims are indefinite because it is not clear what variations in thickness
and composition are encompassed by the term "substantially the same
composition and thickness" (Ans. 5-7).
Appellants contend that the claims meet the written description
requirement because a person of ordinary skill in the art would have
understood that deposition processes of the type described in the Application
inherently result in small variations in layer thickness and composition, as
evidenced by the Sharps Declaration (Br. 6-8). Appellants contend that the
claims are definite because one of ordinary skill in the art, as evidenced by
the Sharps Declaration, would understand that "substantially" corresponds to
normal variations of up to 2 to 3% in composition and thickness (Br. 8-9).
The following issues arise:
Did the Examiner err in finding that "substantially the same
composition and thickness" lacks written descriptive support in the
specification as originally filed?
Did the Examiner err in concluding that "substantially the same
composition and thickness" is indefinite because it is unclear what is
encompassed by that language?
III. FINDINGS OF FACT
The following Findings of Fact are particularly relevant for disposing
of the issue on appeal.
Appellants' Specification describes the solar cell 100 depicted in
Figure 1. The Specification indicates that the solar cell is made up of layers
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and specifies the composition of those layers. (Spec. 4:9-16.) The
Specification does not discuss the thickness of the layers, nor does it disclose
that the layers should be of uniform thickness and composition (See Spec.,
generally).
Appellants' Specification describes forming the structure by etching
the multi-junction solar cell depicted in Figure 3 (Spec. 5:27 to 8:4). Figure
3 shows the starting structure and is reproduced below:

Fig. 3 depicts a multi-junction solar cell prior to processing
(Spec. 3:19-20)

As shown in Figure 3, the starting structure consists of a number of
layers. The Specification does not provide details as to how these layers are
formed except to say that the layers are grown, formed by diffusion, or
inserted (Spec. 5:27 to 6:6).
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The integral bypass diode is formed by etching the starting structure
shown in Figure 3. Figure 4 shows the etched structure after a first etching
step. Figure 4 is reproduced below:

Figure 4 depicts the structure after the first etching step
(Spec. 3:21-22)

Figure 5 shows the separated structures after two more etching steps
(etches 501 and 502). Figure 5 is reproduced below:
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Etch 501 electrically separates the solar cell (shown on the left of
Figure 5) from the bypass diode (shown on the right of Figure 5). To
complete the structure, contacts 109 and 110 as well as metal layer 107 are
metallized onto the structure. The end product is shown in Figure 1, which
is reproduced below:

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The layers of the diode 106 shown on the right of Figure 1 do not
have the same labels as the corresponding layers (buffer layers 103) of the
solar cell shown on the left of Figure 1.
The Specification discloses "[m]odifying the thickness of the various
layers in the diode 106” as a way “to decrease resistance in the diode 106."
(Spec. 7:17-18.)
Sharps declares that “the nature of the deposition process inherently
results in small variations both in composition and thickness of each layer
over the surface of the wafer.” (Sharps' Dec. ¶ 4.) Sharps further declares
that "variations of two to three percent in composition and in the thickness
of the compound semiconductor layer over the surface of the wafer are quite
normal and in fact are well within manufacturing specifications for actual
commercial products.” (Sharps' Dec. ¶ 5.)
The Specification fails to define or provide any guidance as to the
meaning of "substantially the same composition and thickness."
IV. PRINCIPLES OF LAW
To comply with the written description requirement of 35 U.S.C.
§ 112, ¶ 1, the disclosure of the application must “clearly allow persons of
ordinary skill in the art to recognize that the inventor invented what is
claimed.” Ariad Pharms., Inc. v. Eli Lilly and Co., --- F.3d -----, 2010 WL
1007369, at *12, *14 (Fed. Cir. 2010) (en banc). While the words of the
disclosure need not match those of the claim, the description must do more
than merely disclose that which would render the claimed invention obvious.
ICU Medical, Inc. v. Alaris Medical Sys., Inc., 558 F.3d 1368, 1377 (Fed.
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Cir. 2009). What the written description must do is actually or inherently
disclose the claim element. PowerOasis, Inc. v. T-Mobile USA, Inc., 522
F.3d 1299, 1306-07 (Fed.Cir.2008). While it is permissible to add inherent
properties or characteristics of the invention to the disclosure and claims,
Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419 (Fed.Cir.1987), the
inherent properties or characteristics must inevitably occur when one of
ordinary skill in the art follows the teachings of the original disclosure.
Dreyfus v. Sternau, 357 F.2d 411, 415 (CCPA 1966); see also Pingree v.
Hull, 518 F.2d 624, 627-28 (CCPA 1975). Moreover, the description must
itself provide a basis for support, evidence of what was known to one of
ordinary skill in the art will not fill the gap. In re MacLean, 454 F.2d 756,
759 (CCPA 1972) (“Preponderantly water” found not supported by a
specification generically disclosing using water and including an example
of using 93% water where other evidence established that the process, by
definition, used an appreciable or high concentration of solvent).
35 U.S.C. § 112, ¶ 2 requires that the specification “conclude with one
or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.” This section of the
statute puts the burden of precise claim drafting squarely on the applicant.
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). This means that when
using a term of degree such as "substantially," the drafter must provide the
written description with some guidelines, examples, or some other standard
for measuring that degree sufficient to permit one of ordinary skill in the art
to determine what is encompassed. See Seattle Box Co. v. Industrial Crating
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“[w]hen a word of
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degree is used the district court must determine whether the patent’s
specification provides some standard for measuring that degree.”); In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (The claim language “essentially
free of alkali metal” was definite because the specification provided
guidelines and examples such that the ordinary artisan would draw the line
between unavoidable impurities in starting materials and essential
ingredients.); In re Mattison, 509 F.2d 563, 564-65 (CCPA 1975) (general
guidelines and examples in the specification were sufficient to permit one of
ordinary skill in the art to select a substituent that would “substantially
increase the efficiency of the compound as a copper extractant”).
V. ANALYSIS
Reviewing all the evidence as a whole, we find that the Specification
fails to convey to one of ordinary skill in the art that Appellants intended to
create corresponding solar cell layers (subcell layers 103) and buffer layers
(diode layers 106) of the same or substantially the same composition and
thickness.
The Specification is silent with regard to holding the thickness
constant. In fact, the Specification seems to indicate that the thickness of the
diode layers may be modified apart from the thickness of the solar cell layers
of subcell 103 (Spec. 7:17-18.).
Without any indication that the Appellants intended to hold the
composition and thickness constant throughout each layer, the fact that each
of the corresponding layers is formed by dividing a single deposited layer is
simply not enough to support the new claim limitation. There is no evidence
on this record that Appellants were using a process that necessarily would
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result in depositing layers of uniform composition and thickness. In fact, the
Specification provides no specific details of the layer forming processes.
While it may have been obvious to have held the composition and
thickness constant, that concept is not present in the Specification. Under
the circumstances, the Specification does not support the further concept of
maintaining the composition and thickness within some prescribed range
that would be encompassed by the word substantially. The evidence
therefore supports the position of the Examiner with regard to lack of written
descriptive support.
It is not particularly relevant under the facts of this case as to what
variation inherently occurs during the normal deposition of semiconductor
layers when the ordinary artisan was seeking to hold the composition and
thickness constant. There is simply no indication in the original written
description that the Appellants themselves intended to hold the layer
composition and thickness constant.
With regard to indefiniteness, we agree with the Examiner that the
thickness variations of up to 2 to 3% Sharps declares to be normal in
deposition processes for forming uniform layers does not render the claims
definite because there is no description of such “normal variations” in the
Specification as filed (answer 7).1 In fact, there is no guidance in the

1 Moreover, the statements provided in Declaration are not probative. The
declarant purports to provide an opinion regarding the knowledge and
expectation of a person of ordinary skill in the art. However, the credentials
of the declarant have not been provided in the Declaration. Furthermore,
factual support for the statements contained in the Declaration has not been
identified. That is, the declarant has not indicated what evidence was
utilized in formulating the opinions expressed in the declaration.
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Specification with regard to the thickness profile, much less guidance with
regard to tolerances allowed for the thickness. Therefore, we cannot say
there is any guidance in the Specification sufficient to permit one of ordinary
skill in the art to determine what composition and thickness variations the
word "substantially" would encompass.
VI. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.2
VII. DECISION
The decision of the Examiner is affirmed.
VIII. TIME PERIOD FOR RESPONSE
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

cam

Consequently, the declaration of Sharps is entitled to little weight. In re
Lindell, 385 F.2d 453, 456, (CCPA 1967).

2Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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