Ex Parte Suzuki et al

Board of Patent Appeals and Interferences

Sep 20, 2010

10527351 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte YUSUKE SUZUKI,
MASAHIRO MOROOKA, and KAZSUHIRO NODA
______________

Appeal 2010-002030
Application 10/527,351
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-4, 6, 8-17 in the Office Action mailed
February 23, 2009. Appellants subsequently amended these claims in the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Amendment filed June 18, 2009, which was entered in the Advisory Action
mailed July 6, 2009. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2009).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a photovoltaic element,
and is representative of the claims on appeal:
1. A photovoltaic element comprising:
a transparent electrode comprising an ITO substrate and a metallic
oxide layer or a derivative layer thereof, the ITO substrate being coated with
the metallic oxide layer or derivative layer thereof, the metallic oxide layer
or derivative layer being from 10nm to 100nm thick, the transparent
electrode having a resistance of about 5 Ω/cm2; and
a metallic oxide semiconductor layer contacting the metallic oxide
layer or derivative layer thereof, the metallic oxide semiconductor layer
comprising a light sensitizing dye.
Appellants request consideration of the grounds of rejection under 35
U.S.C. § 103(a) advanced on appeal by the Examiner, stating “[w]hether the
rejections of claims 1-4, 6 and 8-17 under 35 U.S.C. § 103(a) as allegedly
being unpatentable over Fujimori et al. (US 6,683,244 B2) should be
reviewed.” App. Br. 6. We thus decide the issues submitted by Appellants
with respect to Fujimori alone based on the ground of rejection of claims 1-
4, 14, and 17 over Fujimori. Ans. 4. We sustain this rejection for the
reasons discussed below.
Appellants did not submit argument with respect to the following
grounds of rejection, each ground including at least one reference in addition
to Fujimori. Accordingly, we summarily sustain the following grounds of
rejection under 35 U.S.C. § 103(a) advanced on appeal by the Examiner:
claims 6, 10 and 12 over Fujimori in view of Arakawa (JP 10-92477 A);
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claims 8, 9, and 16 over Fujimori in view of Ashida (JP 8-51224 A); claim
11 over Fujimori in view of Arao (US 5,244,509); claim 13 over Fujimori in
view of Yamada (US 6,566,162 B2); and, claim 15 over Fujimori in view of
Eisenbeiser (US 2003/0015700 A1) and Arao. Ans. 9-16. See generally
App. Br. See Manual of Patent Examining Procedure (MPEP) § 1205.02
(8th ed., Rev. 3, August 2005) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, that ground of rejection
will be summarily sustained by the Board.”).
Appellants argue the claims in the ground of rejection over Fujimori
as a group. See generally App. Br. Thus, we decide this appeal based on
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Opinion
I
The plan language of claim 1, as illustrated in Specification Figure 1,
specifies a photovoltaic element comprising at least transparent electrode 3,
which comprises an indium-tin oxide (ITO) substrate coated with a metallic
oxide layer or a derivative layer thereof; and metallic oxide semiconductor
layer 4, comprising a light sensitizing dye and contacting the metallic oxide
layer or derivative layer thereof. Spec. 4:14-16. We find Fujimori would
have described to one of ordinary skill in this art, as illustrated in Fujimori
Figure 2, a photoelectric conversion element comprising electrode 3, which
can be an ITO substrate, coated with barrier layer 8, which can be a metallic
oxide layer; and electron transport layer 4, which can be a metallic oxide
semiconductor layer and is in contact with barrier layer 8, that has light
sensitizing dye layer D. Fujimori, e.g., col. 1, ll. 47-50, col. 6, ll. 43-45, col.
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7, ll. 11-22, col. 7, l. 57 to col. 8, l. 9, and col. 12, ll. 27-31. Appellants do
not dispute the Examiner’s finding that the photovoltaic element
encompassed by claim 1 and Fujimori’s photoelectric
conversion element have the same general structure. App. Br., e.g., 7-8.
II
Appellants submit that the Examiner erred in finding that the
thickness range of about 0.01 to 10 µm, that is, 10 to 10,000 nm, of metallic
oxide barrier layer 8, coated on electrode 3, taught by Fujimori would have
rendered obvious the claimed thickness range of from 10 to 100 nm, that is
0.01 to 0.10 µm, of the metallic oxide layer, coated on the ITO substrate of
transparent electrode 3, of claim 1.2 App. Br. 7-8 and 10-11, citing Fujimori
col. 12, ll. 22-25. Appellants argue that while the claimed thickness range
falls within Fujimori’s range, Fujimori’s range is too broad to render
obvious the much narrower claimed range. App. Br. 10-11. Appellants
contend that “Fujimori states that the best results for preventing short
circuits are achieved when barrier layer 8 has a thickness between 0.5 µm
and 2 µm (i.e., 500 nm to 2000 nm),” and that in Fujimori’s Examples, “the
thickness of barrier layer 8 is between 0.9 µm and 10.2 µm (i.e., 900 nm to
10,200 nm).” App. Br. 8.
Appellants contend that Fujimori’s preferred thickness range of 0.5 to
2 µm, that is 500 to 2000 nm, for the best results for short circuit prevention,
falls outside the claimed range, and argue that one of ordinary skill in the art
would have been led by Fujimori’s specific guidance to select a thickness
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within this thickness range for best results. App. Br. 10-11, citing Fujimori
col. 12, ll. 22-25. Appellants also contend that Fujimori’s
broad range of about 0.01 to 10 µm, that is, 10 to 10,000 nm, is one hundred
times larger than the claimed range of 10 to 100 nm, that is 0.01 to 0.10 µm,
and thus the facts of this case fall within “the Federal Circuit[s] exception
for cases in which the prior art’s range disclosure is extremely broad” and
thus does not render “obvious species within the scope of the genus.” App.
Br. 10-11, citing In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003)
(citing In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)).
We find Fujimori would have taught that barrier layer 8, which can be
a metallic oxide layer, prevents short circuits in the disclosed photoelectric
conversion element. Fujimori, e.g., col. 7, ll. 57-69, and col. 11, ll. 51-57.
Fujimori would have disclosed that the ratio of the thickness of barrier layer
8 to the thickness of electron transport layer 4 is not particularly limited.
Fujimori col. 12, ll. 9-21. On this basis, Fujimori would have disclosed that
“[m]ore specifically, it is preferable that the average thickness (film
thickness) of the barrier layer 8 is about 0.01 to 10 µm, more preferably
about 0.1 to 5 µm, and even more preferably about 0.5 to 2 µm.” Fujimori
col. 12, ll. 22-25 (emphasis added). In these respects, Fujimori would have
taught with respect to the disclosed preferable and more limited ranges that
“[w]thin this choice it is possible to further enhance the effect described”
with respect to the prevention of short-circuiting. Fujimori col. 12, ll. 25-26.

2 We agree with Appellants’ position that Fujimori would not have
anticipated the claimed thickness range of the metallic oxide layer specified
in claim 1. See App. Br. 9-10; see generally Reply Br.
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On this record, we cannot agree with Appellants that the Examiner
erred in determining that the claimed thickness range of 10 to 100 nm, that is
0.01 to 0.10 µm, of the metallic oxide layer of claim 1 would have been
obvious over the preferable thickness range of 0.01 to 10 µm, that is, 10 to
10,000 nm, of the corresponding barrier layer 8 taught by Fujimori. Indeed,
the lower end of the claimed thickness range coincides within the lower end
of Fujimori’s preferable thickness range, and the upper end of the claimed
range overlaps with the lower end of Fujimori’s more preferably thickness
range. Thus, we find that, contrary to Appellants’ position, including cited
authority, one of ordinary skill in this art would have found in Fujimori the
clear teaching that any thickness of barrier layer 8 within Fujimori’s
preferable range, including the lower end thereof, will work as intended.
Cf., e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“The
statement in Zehender that ‘[i]n general, the thickness of the protective layer
should not be less than about [100 Angstroms]’ falls far short of the kind of
teaching that would discourage one of ordinary skill in the art from
fabricating a protective layer of 100 Angstroms or less.”).
Appellants have not adduced objective evidence with respect to
whether the claimed thickness range for the metallic oxide layer is critical
vis-à-vis the teachings of Fujimori. See, e.g., Geisler, 116 F.3d at 1469, and
cases cited therein. Appellants contend that they have discovered “the new
and unexpected result of preventing the deterioration of ITO during the
manufacturing process using a thin metallic oxide layer or derivative thereof
having a thickness of 10nm to 100nm” which benefit is not taught by
Fujimori. App. Br. 14-15. We find that one of ordinary skill in the art
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routinely practicing Fujimori would have formed photoelectric conversion
elements in which barrier layer 8 has a thickness at the lower end of the
disclosed preferable range and electrode 3 is an ITO substrate, thus falling
within claim 1. It is well settled that Appellants’ discovery of a new
property of Fujimori’s photoelectric conversion elements does not render
such products again patentable simply because those practicing Fujimori’s
invention may not have appreciated the property. See, e.g., In re Spada, 911
F.2d 705, 707 (Fed. Cir. 1990); In re Woodruff, 919 F.2d 1575, 1577 (Fed.
Cir. 1990).
III
Appellants submit that the Examiner erred in finding that resistance of
Fujimori’s electrode 3 and barrier layer 8 would inherently have a resistance
of 5 Ω/cm2 as claimed for transparent electrode 3, comprising ITO coated
with an oxide layer, on the basis that the structure of Fujimori’s
photoelectric conversion elements is the same as the claimed photovoltaic
elements encompassed by claim 1, even though Fujimori is silent with
respect to resistance. App. Br. 12. Appellants contend that Fujimori’s
electrode 3 and barrier layer 8 may not necessarily have the claimed
resistance because Fujimori teaches that these layers can have different
thicknesses “which could cause the resistance value to change significantly.”
App. Br. 12. Appellants contend that Fujimori discloses a broad thickness
range for electrode 3 and barrier layer 8, the use of different materials for
barrier layer 8, and a porosity of up to 20% for barrier layer 8, all of which
would affect resistance. App. Br. 12. Appellants further contend that
Fujimori employs a high temperature process to form electron transport
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layer 4 which would raise the resistance of electrode 3 if unprotected by
barrier layer 8, and Fujimori does not disclose that barrier layer 8 is capable
of such protection. App. Br. 12.
Appellants further contend that the Examiner erred in finding that
Fujimori teaches the claimed resistance of 5 Ω/cm2 for transparent electrode
3 because Fujimori teaches away from the claimed resistance. App. Br.
14-15. “Fujimori states that the resistance in the thickness direction of the
barrier layer 8 and the electron transport layer 4 is preferably larger than 100
Ω/cm2, and more preferably larger than 1k Ω/cm2.” App. Br. 14, citing
Fujimori col. 12, ll. 44-55. “Although Fujimori does not specify the
resistance of the barrier 8 alone, Fujimori states that the barrier layer
preferably has an electric conductivity substantially the same as the electron
transport layer 4.” App. Br. 14, citing Fujimori col. 2, ll. 31-35.
We disagree with both of Appellants’ positions. We agree with the
Examiner that Fujimori would have disclosed to one of ordinary skill in this
art a photoelectric conversion element comprising an electrode 3, which can
be an ITO substrate, coated with barrier layer 8, which can be a metallic
oxide layer falling within appealed claim 2; and a metallic oxide
semiconductor layer comprising a sensitizing dye 4+D, which falls within
the claimed photovoltaic elements encompassed by claim 1. Ans., e.g., 5-6
and 20-25. Fujimori, e.g., col. 7, l. 22, and col. 12, ll. 26-31. We find, in
this respect, that Appellants acknowledge that it was known in the art that
“as for the electric conductivity, no material that exceeds the ITO [sic] most
widely employed as a transparent conductive thin film has been reported.
The ITO can realize a very low resistance value as low as, for instance, 5
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Ω/cm2 or less and is inexpensive,” providing “high performance
inexpensively provided.” Spec 3:1-6. We further find that Fujimori prefers
that “the barrier layer [8] has electric conductivity which is substantially the
same as that of the electron transport layer” 4, and describes titanium
dioxide as a preferred material for electron transport semiconductor layer 4
and barrier layer 8. Fujimori, col. 2, ll. 31-33, col. 7, l. 66 to col. 8, l. 12,
and col. 12, ll. 35-43. Fujimori discloses that “[a]lthough the resistance in
the thickness direction of the barrier layer 8 and the electron transport layer
4 are not limited particularly, it is preferable that the resistance in the
thickness direction . . . of a laminate of the barrier layer 8 and the electron
transport layer 4 is larger than 100 Ω/cm2, and more preferably larger than
1k Ω/cm2.” Fujimori col. 12, ll. 44-52. We found above that one of
ordinary skill in the art routinely following Fujimori would have reasonably
constructed a barrier layer 8 in the thickness range of 0.01 to 0.10 µm, that is
10 to 100 nm. See above pp. 5-6.
On this record, the thickness of the barrier metallic oxide layer 8 of
Fujimori can be within the claimed metallic oxide thickness range of claim
1. Thus, Fujimori’s barrier layer 8 would have the same electric resistance
as the claimed metallic oxide layer, and both layers can be formed from the
same metallic oxides. Furthermore, one of ordinary skill in the art armed
with the knowledge in the art that ITO is an inexpensive, high performance
substrate that can have a resistance of 5 Ω/cm2 or less, would have
reasonably selected ITO for electrode 3 from among the materials for this
layer disclosed by Fujimori. On the basis that the same and similar materials
are used for the same layers of a photovoltaic element in claim 1 and by
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Fujimori, we find that it reasonably appears that the claimed photovoltaic
elements and the photoelectric conversion elements of Fujimori are identical
or substantially identical even though the claimed resistance property of
transparent electrode 3 comprising an ITO substrate
coated with a metallic oxide layer is not disclosed by Fujimori.
Accordingly, the burden shifted to Appellants to patentably
distinguish the claimed photovoltaic elements from the photoelectric
conversion elements of Fujimori. See, e.g., Spada, 911 F.2d at 708
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”); In re Best, 562 F.2d 1252, 1254-56 (CCPA
1977)3; In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have
chosen to describe their invention in terms of certain physical characteristics
. . . . Merely choosing to describe their invention in this manner does not
render patentable their method which is clearly obvious in view of [the
reference].” (citation omitted)).

3 Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Best, 562 F.2d at 1255 (footnote and citations omitted).
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We are not convinced that Appellants have carried this burden with
the argument that Fujimori would have taught away from the claimed
resistance because of the disclosure with respect to the resistance of a
laminate of barrier layer 8 and electron transport semiconductor layer 4
which exceeds the claimed resistance for transparent electrode 3, comprising
an ITO substrate coated with an oxide layer. Indeed, as the Examiner points
out, the resistance of the laminate of barrier layer 8 and electron transport
semiconductor layer 4 would reside to substantial extent in electron transport
semiconductor layer 4. Ans. 25-27. We note in this respect that while
Appellants point out that the resistance thus disclosed by Fujimori is based
on the thicknesses of the two layers, the thickness of barrier layer 8 can fall
within the claimed metallic oxide layer thickness range as we found above.
Accordingly, on this record, Appellants’ unsupported arguments based on
Fujimori’s teachings of resistance of the laminate of barrier layer 8 and
electron transport semiconductor layer 4 are entitled to little weight. See,
e.g., In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606
F.2d 303, 315 (CCPA 1979); In re Lindner, 457 F.2d 506, 508 (CCPA
1972).
IV
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Fujimori
with Appellants’ countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 1-4, 14, and 17 would have been obvious as a matter of law under
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35 U.S.C. § 103(a).
The Primary 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)(1)(iv).
AFFIRMED

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