GIGA SOLAR MATERIALS CORP.

Patent Trials and Appeals Board

Mar 20, 2020

14932220 - (D) (P.T.A.B. Mar. 20, 2020)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/932,220 11/04/2015 CHIH-HSIEN YEH TSA1-PAU10US 3795
97066 7590 03/20/2020
Innovation Capital Law Group, LLP
19800 MacArthur Blvd.
Suite 280
Irvine, CA 92612
EXAMINER
CHERN, CHRISTINA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
03/20/2020 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):
eofficeaction@appcoll.com
processing@icaplaw.com
vlin@icaplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIH-HSIEN YEH, PO-YANG SHIH, and PI-YU HSIN

Appeal 2019-003033
Application 14/932,220
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–13.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, Giga Solar Materials Corp. (Application Data
Sheet filed November 4, 2015 at 5), which is also identified as the real party
in interest (Appeal Brief (without track changes) filed June 1, 2018 (“Appeal
Br.”) at 4).
2 See Appeal Br. 11–18; Final Office Action entered January 23, 2018
(“Final Act.”) at 3–20; Examiner’s Answer entered September 5, 2018
(“Ans.”) at 3–9.
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I. BACKGROUND
The subject matter on appeal relates to a conductive paste, which may
be used in solar or photovoltaic cells (Specification filed November 4, 2015
(“Spec.”) 1, l. 5–2, l. 13). Representative claim 1 is reproduced from the
Claims Appendix to the Appeal Brief, as follows:
1. A conductive paste comprising:
(a) about 85% to about 99.5% by weight of a conductive
metal or the derivative thereof, based on the weight of solids;
(b) about 0.5% to about 15% by weight of a lead-free glass
frit containing tellurium-bismuth-zinc-tungsten-selenium-oxide,
based on the weight of solids; and
(c) an organic vehicle;
wherein the weight of solids is the total weight of the
conductive metal (a) and the lead-free glass frit (b);
wherein tellurium oxide is present in an amount of about
55 wt.% to about 90 wt.%, bismuth oxide is present in an amount
of about 0.1 wt. % to about 15 wt. %, zinc oxide is present 15 in
an amount of about 0.1 wt.% to about 15 wt.%, tungsten oxide is
present in an amount of about 0.1 wt.% to about 15 wt.% and
selenium oxide is present in an amount of about 0.1 to about 10
wt.% in the lead-free glass frit.
(Appeal Br. 19 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103, as
follows:
A. Claims 1–10 as unpatentable over Park et al.3 (“Park”) and

3 WO 2014/126293 A1, published August 21, 2014. The Examiner relies
on US 2016/0013331 A1, published January 14, 2016 as an English
language equivalent of this reference (Final Act. 3), and the Appellant does
not object (Appeal Br. 14). Therefore, our citations to Park are also to the
United States document.
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Application 14/932,220

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Schulz et al.4 (“Schulz”); and
B. Claims 11–13 as unpatentable over Park, Schulz, and Carroll et
al.5 (“Carroll”).
(Ans. 3–9; Final Act. 3–20).
III. DISCUSSION
The Appellant’s arguments focus primarily on claim 1 (Appeal Br.
11–15). In addition, the Appellant provides additional comments or
arguments under separate sub-headings for claims 2–4. Therefore, we
address claims 2–4 individually to the extent these claims are separately
argued within the meaning of 37 C.F.R. § 41.37(c)(1)(iv). Otherwise, all
claims on appeal stand or fall with claim 1, which we select as
representative.
Having fully considered the Appellant’s arguments, we find that these
arguments fail to identify reversible error in the Examiner’s rejection as
maintained against claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Because we discern no reversible error in the Examiner’s factual
findings, analysis, and conclusion, we adopt them as our own. We add the
following for emphasis only.
The Appellant’s principal argument is that Schulz cannot be combined
with Park because Schulz teaches away from claim 1’s subject matter
(Appeal Br. 11). Specifically, the Appellant argues that while claim 1
requires selenium oxide as one of the oxides in a lead-free glass frit, “Schulz

4 US 2014/0048116 A1, published February 20, 2014.
5 US 2011/0308597 A1, published December 22, 2011.
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Application 14/932,220

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is totally silent in disclosing or teaching the possibility of using a lead-free
glass” and that Schulz’s inventive feature resides in the addition of salts
(id.). This argument has no persuasive merit. The Appellant does not direct
us to any description in Schulz itself that indicates that Schulz’s electro-
conductive paste must comprise lead (Schulz ¶¶ 9–13). Indeed, as the
Examiner correctly points out (Ans. 3), Schulz merely lists lead (Pb) as a
preferred element in the paste but does not require it (id. ¶ 82). In any event,
Park teaches that lead-free glass frits are advantageous because such frits
provide excellent adhesive strength (Park ¶ 36). In re Keller, 642 F.2d 413,
426 (CCPA 1981) (“[O]ne cannot show non- obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
The Appellant alleges that the art of conductive pastes is “very
unpredictable” (Appeal Br. 11). That allegation is unsupported by
persuasive objective evidence and is directly refuted by the Inventors’ own
Specification (e.g., Spec. 3, ll. 11–20 (disclosing a wide variety of elements
as suitable) and the prior art disclosures (e.g., Park ¶¶ 32–35; Schulz ¶ 82
(disclosing a wide variety of elements)). Cf. Regents of the Univ. California
v. Broad Institute, Inc., 903 F.3d 1286, 1295 (Fed. Cir. 2018) (approving the
Board’s position that “‘[s]pecific instructions that are relevant to the claimed
subject matter or success in similar methods or products have directed
findings of a reasonable expectation of success.’”) (internal citation
omitted).
The Appellant argues that the “laundry list” in Schulz’s possible
components in the glass frit include over two billion possibilities, one of
which includes selenium oxide, and urges In re Baird, 16 F.3d 380, 382–83
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Application 14/932,220

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(Fed. Cir. 1994) is controlling (Appeal Br. 12). Even if the Appellant’s
calculated number (two billion) is correct, we find no persuasive merit in the
Appellant’s position. In Baird, the claim at issue recited a bisphenol A
polyester containing an aliphatic dicarboxylic acid selected from the group
consisting of succinic acid, glutaric acid, and adipic acid. Id. at 381. The
prior art reference, Knapp, disclosed a generic diphenolic formula containing
a large number of variables encompassing more than 100 million different
diphenols, only one of which was a bisphenol A. Id. at 382. None of the
preferred diphenols included bisphenol A, and Knapp actually indicated a
“preference leading away” from the claimed compounds. Id. at 383.
In stark contrast, Schulz explicitly teaches selenium oxides as
preferred group VI oxides that may be used together with tellurium oxides
(Schulz ¶ 82). The fact that Schulz’s working examples exemplify other
compounds does not negate Schulz’s explicit teaching regarding selenium
oxides as preferred materials. Moreover, unlike the situation in Baird, we
are not directed to any disclosure in Schulz indicating a “leading away” or
teaching away that selenium oxides would be unsuitable for Schulz’s
purpose. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (“Nothing in
the prior art teaches that the proposed modification would have resulted in
an ‘inoperable’ process or a dietary fiber product with undesirable
properties.’”).
The Appellant also argues that Schulz and Park are non-analogous but
fail to present any analysis that is in accordance with the case law.6 We
decline to undertake such an analysis on our own.

6 Two separate tests for determining whether a prior art reference is
analogous are, as follows: (i) whether the art is from the same field of
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Application 14/932,220

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Lastly, the Appellant’s argument that unexpected results are
demonstrated in Examples G1, G2, G5, and G12 (Spec. 9 (Table 1)) is also
unpersuasive. The Appellant does not explain how and why these examples
constitute a fair comparison against the closest prior art, which is Park,
showing that the novel features of claim 1, while holding all other variables
constant, provide unexpectedly improved results that are commensurate in
scope with claim 1.
Regarding claims 2–4, the Appellant’s skeletal arguments fail to
reveal any reversible error in the Examiner’s findings, analyses, and
conclusions. In re Lovin, 652 F.3d 1349, 1356–57 (Fed. Cir. 2011).
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejections.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–10 103 Park, Schulz 1–10
11–13 103 Park, Schulz,
Carroll
11–13

endeavor, regardless of the problem addressed; and (ii) if the reference is not
within the inventor’s field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (reference describing a toothbrush found to be
in the same field of endeavor as a claim to a hairbrush based on findings
regarding function and structural similarity); In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1380–81 (Fed. Cir. 2007) (prior art disclosing springs
as part of a counterbalancing mechanism in a folding bed is reasonably
pertinent to an application describing a gas spring used as part of a lift assist
assembly in a claimed treadmill).
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Application 14/932,220

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Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
Overall
Outcome
1–13

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