Ex Parte Vail et al

Patent Trial and Appeal Board

Sep 7, 2018

13762527 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/762,527 02/08/2013
55286 7590 09/07/2018
SHARP LABORATORIES OF AMERICA, INC.
C/0 LAW OFFICE OF GERALD MALISZEWSKI
P.O. BOX 270829
SAN DIEGO, CA 92198-2829
Sean Vail
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.
SLA3020 3861
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
09/07/2018 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 SEAN VAIL, DAVID EV ANS, and WEI PAN
Appeal2017-009255
Application 13/762,527 1
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejections of claims 1-12, 23, 25, and 26. App. Br. 3.
We have jurisdiction. 35 U.S.C. § 6.
We affirm, and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, Sharp Laboratories of America, Inc., and is
identified as the real party in interest. App. Br. 3.
Appeal2017-009255
Application 13/762,527
BACKGROUND
The subject matter on appeal is directed to a dye-sensitized solar cell
(DSC) containing energy-donor materials designed to enhance photovoltaic
performance. Spec. 1: 13-16.
Figure 1 illustrates the claimed subject matter of claim 1 and is copied
below from Appellants' Specification:
fig. 1
SUBSTRATE 10.2.
Figure 1 depicts a partial cross-sectional view of a DSC enhanced
with an energy-donor material. Spec. 10:11-12.
Claim 1 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief, with emphasis added
to relevant limitations at issue in this appeal:
1. A dye-sensitized solar cell (DSC) [ 100] with energy-donor
enhancement, the DSC comprising:
a transparent substrate [102];
a transparent conductive oxide (TCO) film [ 104] overlying
the transparent substrate;
an n-type semiconductor layer [ 106] overlying the TCO
film, sensitized with a dye (DI) [108];
2
Appeal2017-009255
Application 13/762,527
a redox electrolyte [ 11 OJ, in contact with the sensitized n-
type semiconductor layer [106], and including an energy-donor
material (EDI) [112] dissolved in the redox electrolyte;
a counter electrode [ 114] overlying the redox electrolyte
[110]; and
wherein the dye (D 1) is capable of charge transfer at a
surface of the n-type semiconductor, and has a first optical
absorbance local maxima at a first wavelength (Al), a second
optical absorbance local maxima at a second wavelength (A2),
longer than the first wavelength);
wherein (Al) is located at wavelengths greater than 400
nanometers (nm) and less than 525 nm, and (A2) is located at
wavelengths greater than 600 nm and less than 700 nm;
wherein the energy-donor material (ED 1) is capable of
non-radiative energy transfer to the dye (D 1 ), has a third optical
absorbance local maxima at a third wavelength (A3) between the
first wavelength (Al) and the second wavelength (A2), a first
optical emission local maxima (A4) between the third
wavelength (A3) and the second wavelength (A2), and wherein
the first optical emission local maxima (A4) does not overlap the
optical local maxima (Al); and,
wherein the DSC photo-to-current conversion efficiency
(IPCE) value at the first wavelength (Al) and at the second
wavelength (A2) are both greater with the combination of DI and
ED 1, than with only D 1.
App. Br. 32-33 ( emphasis and bracketing added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
I. Claims 1-12, 23, 25, and 26 under 35 U.S.C. § 112, first
paragraph as lacking written description;
II. Claims 1-12, 23, 25, and 26 under 35 U.S.C. § 112, second
paragraph as being indefinite;
3
Appeal2017-009255
Application 13/762,527
III. Claims 1--4, 7-10, 12, 23, 25, and 26 under 35 U.S.C. § I03(a)
as unpatentable over Hardin2 in view of Barea; 3
IV. Claims 5 and 6 under 35 U.S.C. § I03(a) as unpatentable over
Hardin, Barea, and T omizaki; 4 and
V. Claim 11 under 35 U.S.C. § I03(a) as unpatentable over
Hardin, Barea, and Ogura. 5
OPINION
We address the claims separately to the extent they are so argued by
Appellant, beginning with Rejection II.
Re} ection II
The Examiner concludes that the limitation requiring no "overlap"
between optical local maximas Al and A4 is indefinite. Ans. 4.
Specifically, the Examiner concludes that, because the term "overlap"
connotes a range of values, it is not clear whether the claims require that "no
single value of Al, over the entire range of values which may relate to Al,
can overlap a single value of A4, over the entire range of values which may
relate[] to A4," or whether the single value of Al cannot be the same single
value of A4. Id.
2 US 2010/0307571 Al; Dec. 9, 2010
3 Eva M. Barea et al., Porphyrin Dyes with High Injection and Low
Recombination for Highly Efficient Mesoscopic Dye-Sensitized Solar Cells,
J. Phys. Chem. C 2011, 115:10898-10902.
4 Tomizaki et al., Practical synthesis of perylene-monoimide building blocks
that possess features appropriate for use in porphyrin-based light-
harvesting arrays. Tetrahedron 2003, 59:1191-1207.
5 Ogura et al. High-performance dye-sensitized solar cell with a multiple dye
system. Applied Physics Letters 2009, vol. 94.
4
Appeal2017-009255
Application 13/762,527
We sustain this rejection. Appellant argues that the claims do not
recite that local maximas Al and A4 are single points, and points to a
definition of the phrase "local maxima" in the Specification as "wavelengths
associated with relatively high absorbance ( or emission), but not necessarily
the wavelength of maximum absorbance (emission)." App. Br. 13-14
( emphasis added). Appellant contends further that if the "claim is
interpreted to read as a single wavelength, that single wavelength occurs
within a range of possible values." Reply Br. 3.
These arguments are not persuasive of reversible error. First, we
agree with the Examiner (Ans. 28-29) that Appellant has misquoted their
own definition. Namely, in the Appeal Brief, Appellant uses the plural form
of the term "wavelength" whereas the Specification actually uses the
singular form of this term. Spec. 13:24--14:2.
Moreover, Appellant's argument does not address the critical issue
raised by the Examiner's rejection- i.e., how the claim is to be construed
because of the indefiniteness of the term "overlap." The Examiner's two
possible interpretations of the claim do not depend on whether Al and A4
are interpreted as "single points" as Appellant's arguments suggest. See
Ans. 4 (explaining that "Al and A4 are both single points"). Rather, the
Examiner determined (Ans. 4) the claimed "overlap" refers to:
a) any possible value for Al "over the entire range of values which
may relate to Al, can overlap a single value of A4, over the entire range of
values which may relate[] to A4;" or
b) the precise values of Al and A4 not being exactly the same.
Ans. 4.
Appellant's arguments (App. Br. 13-14; Reply Br. 3) fail to shed any
light on the appropriate claim construction. Therefore, we sustain the
5
Appeal2017-009255
Application 13/762,527
Examiner's rejection under 35 U.S.C. § 112, second paragraph of claims 1-
12, 23, 25, and 26 as indefinite.
New ground of rejection
In addition to sustaining the Examiner's rejection of claims 1-12, 23,
25, and 26 as indefinite under 35 U.S.C. § 112, second paragraph for the
reasons expressed in the Final Action, the Answer, and above, we also make
a new ground of rejection of these claims.
Each of the independent claims 1, 23, and 26 recite various "local
maxima." App. Br. 32-33, 35-36, 37. The term "local maxima" is defined
in the Specification as "a wavelength associated with relatively high
absorbance ( or emission), but not necessarily the wavelength of maximum
absorbance (emission)." Spec. 13:25-14:2 (emphasis added). Based on this
definition, however, it is not clear what the phrase "associated with
relatively high absorbance ( or emission)" means. Specifically, it is unclear
what, precisely, the "high absorbance ( or emission)" is relative to.
For context, we reproduce Figure 8 from Appellant's Specification
below:
6
Appeal2017-009255
Application 13/762,527
fig~ 8 --------------------
Figure 8 depicts the optical absorption spectra of a dye (ZnP) and an
energy donor material TTBPP. Spec. 16: 13-14. The optical absorbance for
the zinc porphyrin (ZnP) dye (D 1) is represented by the dotted line, while
the optical absorbance for the energy donor material (TTBPP) (ED 1) is
outlined in the dashed line. See Spec. 14:3-15. 6 Looking at the dotted line,
representing D 1 (ZnP in dichloromethane ), the maximum absorbance
appears at 439 nm, followed by absorbance values in "lower energy Q-
bands" at 581 nm and 651 nm. Id. It is not clear, however, whether the
wavelengths associated with either of these "lower energy Q-bands" would
qualify as a "local maxima." Specifically, we observe that the absorbance at
581 nm is "relatively high" compared to the absorbance reading (near zero
absorbance units) at approximately 550 nm, but is not "relatively high"
compared to wavelengths associated with other absorbance readings, e.g.,
439 nm, 651 nm. Similarly, the absorbance reading at 651 nm is "relatively
6 Figure 8 does not appear to capture the emission data (A4) for the energy
donor material. Spec. 16: 13-17:2.
7
Appeal2017-009255
Application 13/762,527
high" when compared to lower absorbance readings ( e.g., 550 nm, 5 81 nm),
but is not "relatively high" compared to other absorbance values at other
wavelengths ( e.g., those spanning approximately 460-480 nm).
Even further, the absorbance readings between approximately 460 and
480 nm appear higher (i.e., around 0.2 au) than the Q-bands centered at 581
nm and 651 nm (i.e., well below 0.2 au). It is not clear, however, whether
the wavelengths associated with the absorbance values between
approximately 460 and 480 nm would satisfy the definition of a "local
maxima." Specifically, the absorbance values associated with such
wavelengths appear to be "relatively high" as compared to each of the Q-
bands centered at 581 nm and 651nm, but not as high as other absorbance
values above 0.2 au. Similar problems arise when one considers the
absorbance of the energy donor material TTBPP in Figure 8. Specifically, it
is not clear whether the absorbance at 415 nm may be considered a "local
maxima" because it is not "relatively high" compared to the absorbance at
534 nm. Spec. 16:13-17:2.
Thus, because each independent claim recites the phrase "local
maxima," and because no reasonably definite meaning can be ascribed to
this phrase, we newly reject claims 1-12, 23, 25, and 26 as indefinite under
35 U.S.C. § 112, second paragraph pursuant to our authority under 37 C.F.R.
§ 4I.50(b).
Rejection I
The Examiner rejects independent claims 1 and 23 under§ 112, first
paragraph for lacking written description support for the limitation requiring
local maxima Al to be located at wavelengths "greater than 400 nanometers
(nm) and less than 525 nm," and local maxima A2 to be "located at
8
Appeal2017-009255
Application 13/762,527
wavelengths greater than 600 nm and less than 700 nm." Ans. 3. The
Examiner finds that the recited wavelength ranges lack support in the
Specification. Id.
Additionally, the Examiner rejects independent claims 1, 23, and 26
for requiring first optical emission local maxima A4 to not overlap first
optical absorbance local maxima Al. Id. The Examiner finds that A4 and
Al are individual points, i.e., not a range of possible values. Id. The
Examiner explains "for there to be an overlap, which is known to mean
'extend over so as to cover partly[,]' the limitation necessarily requires that
any value Al over the range of possible values of Al cannot overlap with
any value of A4 over the range of possible values of A4." Id. The Examiner
finds that the Specification provides no such support of local maxima values
Al or A4 being a range. Id.
We sustain this rejection. "The test for determining compliance with
the written description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter." In
re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
As discussed with respect to Rejection II, the subject matter according
to the appealed claims is indefinite under 35 U.S.C. § 112, second
paragraph. Until the claims properly set forth the metes and bounds of the
claimed subject matter, including what defines a "local maxima," it is not
seen how the disclosure can reasonably convey possession of the disputed
limitations reciting this phrase.
Moreover, Appellant's arguments directed to Figures 8 and 9 are not
persuasive. App. Br. 11-12. In particular, Appellant argues that written
descriptive support exists for the Al local maxima to be "greater than 400
9
Appeal2017-009255
Application 13/762,527
nanometers (nm) and less than 525 nm," and for the A2 local maxima
"greater than 600 nm and less than 700 nm" because of various responses
"centered at" specific wavelengths falling within these ranges as illustrated
in Figure 8. Id. 12. Appellant then refers to the definition of the term "local
maxima" in the Specification, i.e., "a wavelength associated with relatively
high absorbance ( or emission), but not necessarily the wavelength of
maximum absorbance (emission)." Id.
This argument is not persuasive. As we indicated in our new ground
of rejection, supra, the absorbance value appearing at 651 nm is not
"relatively high" as compared to the absorbance values spanning
wavelengths of approximately 460 to 480 nm. Therefore, it is not clear
whether the 651 nm wavelength can be considered a "local maxima." There
is no disclosure contained within the description of Figure 8 that identifies
the 651 nm wavelength as a "local maxima," much less the "A2 local
maxima." See Spec. 16: 13-17:2. Therefore, because it is not clear that 651
nm in Figure 8 can be considered a "local maxima," written description
support for the recited A2 local maxima range is neither seen in Figure 8 nor
its accompanying description. Id.
We additionally note Appellant's argument regarding "a response
centered at approximately 435nm, corresponding to the Al local maxima ...
and a response centered at approximately 650 nm, corresponding to the A2
local maxima." App. Br. 12 (emphasis added). The rejected claims,
however, do not recite the phrase "centered at." To the extent that Appellant
is arguing that a local maxima occurs at a wavelength associated with a
specific absorbance "peak," we agree with the Examiner (Ans. 23-24) that
the absorbance "peak" observed in Figure 8 centered at approximately 435
nm does not provide support for the entire wavelength range of greater than
10
Appeal2017-009255
Application 13/762,527
400 nm to less than 525 nm. Similarly, we agree with the Examiner (Ans.
25) that, to the extent a given absorbance "peak" may be considered a "local
maxima," the peak centered at 651 nm in Figure 8 does not support the
broad range of greater than 600 nm and less than 700 nm.
For these reasons, the Examiner's written description rejection is
sustained.
Rejections III-V
"If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious-the claim becomes
indefinite." In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). See also In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (explaining that an obviousness
rejection should not be based on "considerable speculation as to the meaning
of the terms employed and assumptions as to the scope of such claims.").
All three independent claims 1, 23, and 26 have been rejected by the
Examiner as indefinite and we have sustained that rejection. We have
additionally entered a new ground of rejection identifying further
indefiniteness in these claims regarding the recitation of a "local maxima."
Here, the scope of the claims are indefinite and would require us to
engage in impermissible speculation and assumptions to determine the
propriety of the obviousness rejections. We decline to do so.
Thus, we reverse, proforma, the Examiner's obviousness rejections.
DECISION
Rejections I and II are affirmed.
Rejections III-V are reversed proforma.
We enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph for claims 1-12, 23, 25, and 26.
11
Appeal2017-009255
Application 13/762,527
AFFIRMED
37 C.F.R. § 4I.50(b)
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
12
Appeal2017-009255
Application 13/762,527
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
13