Yasuo TSURUOKA et al.

Patent Trials and Appeals Board

Oct 4, 2021

2020004943 (P.T.A.B. Oct. 4, 2021)

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.
13/414,807 03/08/2012 Yasuo TSURUOKA 20374-135833-US 9724
42798 7590 10/04/2021
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
BAKHTIARI, NIKI
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
10/04/2021 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 YASUO TSURUOKA, KENZOU TAKEMURA, MASAKI FUJII,
and YUSUKE ASAKAWA
Appeal 2020-004943
Application 13/414,807
Technology Center 1700

Before TERRY J. OWENS, LINDA M. GAUDETTE, and N. WHITNEY
WILSON, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 4, 5, 7–10, 13, 14, 29, 30, 32–38, and
41–44.3
We reverse.

1 The following documents are of record: Specification filed March 8, 2012
(“Spec.”); Final Office Action dated March 19, 2019 (“Final Act.”); Appeal
Brief filed November 25, 2019 (“Appeal Br.”) and Claims Appendix
(“Claims App.”); Examiner’s Answer dated April 16, 2020 (“Ans.”); and
Reply Brief filed June 16, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Hitachi Chemical Company,
Ltd. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2020-004943
Application 13/414,807

2

CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A solar battery cell comprising:
a plurality of finger electrodes extending in a longitudinal
direction on a light receiving surface of a photovoltaic
substrate; an alignment marking formed from a conductive
material, the alignment marking having portions
discontinuously provided on the light receiving surface along a
line crossing two of the finger electrodes positioned nearest
opposite ends of the light receiving surface, each portion of the
alignment marking having a width in the longitudinal direction
equal to or smaller than a width of one of said finger electrodes
in a direction perpendicular to the longitudinal direction and
parallel to the light receiving surface;
a conductive adhesive on top of the alignment marking,
and
a TAB wire connected to the finger electrodes via the
conductive adhesive,
wherein the alignment marking indicates a position
where the TAB wire is to be connected to the finger electrodes
via the conductive adhesive.
Claims App. 1 (emphasis added).
REJECTIONS
1. Claims 1, 2, 4, 5, 7–10, 13, 14, 29, 30, 32–38, 41, and 42 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Kawama (JP
2000261012, pub. Sept. 22, 2000 (machine translation)) in view of Hashimoto
(US 2010/0243024 A1, pub. Sept. 30, 2010). Final Act. 3.
2. Claims 43 and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kawama in view of Hashimoto and Joge (US
2005/0133084 A1, pub. June 23, 2005). Final Act. 10.
Appeal 2020-004943
Application 13/414,807

3

OPINION
The Appellant argues that the Examiner reversibly erred in rejecting the
claims because the Examiner applied an unreasonably broad interpretation of
the claim term “conductive adhesive” (independent claims 1 and 29) as
reading on Kawama’s soldering layer 8. Appeal Br. 5; see also Reply Br. 1–4.
We agree.
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is consistent with the
specification.
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (citation and
internal quotation marks omitted); see also In re Baker Hughes, Inc., 215 F.3d
1297, 1303 (Fed. Cir. 2000) (explaining that the USPTO cannot adopt a
construction that is “beyond that which was reasonable in light of the totality
of the written description” in the Specification).
The Appellant cites Specification paragraphs 3 and 5 in support of an
interpretation of “conductive adhesive” that excludes solder. Appeal Br. 5; see
also Reply Br. 2–3. Specification paragraph 3 describes the drawbacks of
connecting solar battery cells together by soldering a TAB wire to the solar
battery cells. See also Spec. ¶ 2. Specification paragraph 5 discloses that in a
known, improved method of connecting the TAB wire, “a conductive
adhesion layer is used instead of . . . solder” (emphasis added). The
Specification describes the conductive adhesive as “a thermosetting resin in
which metal particles such as Al particles are mixed and dispersed.” Spec. ¶ 5.
Appeal 2020-004943
Application 13/414,807

4

The Specification discloses that the preferred embodiments of the invention
utilize a conductive adhesive to connect the TAB wire, although solder could
be used. Id. ¶ 143.
The above-cited Specification disclosure supports the Appellant’s
contention that the broadest reasonable interpretation of the claim term
“conductive adhesive” does not encompass solder. The Examiner did not
consider the Specification in determining that “conductive adhesive” reads on
Kawama’s solder layer. See Ans. 11–12. Rather the Examiner maintains that
Kawama’s solder layer is an electrically conductive adhesive because it is “a
substance that causes something to adhere,” which is the dictionary definition
of “adhesive material.” Id. at 12. “It is well established that dictionary
definitions must give way to the meaning imparted by the specification.” In re
Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006).
For the above reasons, we do not sustain the rejection of independent
claims 1 and 29, or the rejections of their respective dependent claims 2, 4, 5,
7–10, 13, 14, 30, 32–38, and 41–44.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
7–10, 13,
14, 29, 30,
32–38, 41,
42
103(a) Kawama, Hashimoto 1, 2, 4, 5,
7–10, 13,
14, 29, 30,
32–38, 41,
42
43, 44 103(a) Kawama,
Hashimoto, Joge
43, 44
Appeal 2020-004943
Application 13/414,807

5

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome

1, 2, 4, 5,
7–10, 13,
14, 29, 30,
32–38, 41–
44
REVERSED