Ex Parte Brabec et al

Patent Trial and Appeal Board

Jun 21, 2016

10559009 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/559,009 05/15/2006 Christoph Brabec
30407 7590 06/21/2016
BOWDITCH & DEWEY, LLP
311 MAIN STREET
P.O. BOX 15156
WORCESTER, MA 01615-0156
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.
310470.3047-100 P03/351 1169
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1755
MAILDATE DELIVERY MODE
06/21/2016 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 CHRISTOPH BRABEC and
CHRISTOPH W ALDAUF
Appeal2015-003489
Application 10/559,009
Technology Center 1700
Before BRADEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-5, 7-10, 15-17, 20, 23-32, 34, 35, 37-39, 41--43,
45--47, 50, 52 and 54. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an organic photovoltaic cell. Claim 1 is
illustrative:
1. An article, comprising:
a substrate;
a cathode;
a layer comprising Ti02;
Appeal2015-003489
Application 10/559,009
a photoactive layer consisting essentially of a conjugated
polymer and a fullerene;
a layer comprising PEDOT; and
an anode,
wherein:
the cathode is transparent or semitransparent; the layer
comprising Ti02 is between the cathode and the photoactive
layer;
the layer comprising Ti02 is electron conducting;
the cathode is between the substrate and the layer
comprising Ti02;
the layer comprising PEDOT is between the anode and
the photoactive layer; and
Sariciftci
Scher
Shaheen
the article is an organic photovoltaic cell.
The References
us 5,331, 183
US 6,878,871 B2
WO 01/84644 Al
The _,_Rejections
July 19, 1994
Apr. 12, 2005
Nov. 8, 2001
The claims stand rejected as follows: claims 16, 17 and 24--26 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, claims 16 and 17 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention, claims 1, 3-5, 7-10, 15, 20, 28, 29, 32, 34, 35, 45--47 and 54
under 35 U.S.C. § 103 over Scher in view of Sariciftci, and claims 15, 23-
27, 30, 31, 37-39, 41--43, 50, 52 and 54 under 35 U.S.C. § 103 over Scher in
view of Sariciftci and Shaheen.
OPINION
We affirm the rejections.
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Appeal2015-003489
Application 10/559,009
Rejections under 35 U.S.C. § 112
The Appellants do not challenge the rejections under 35 U.S.C. § 112,
first and second paragraphs (Br.7). Accordingly, we summarily affirm those
rejections.
Rejections under 35 U.S.C. § 103
The Appellants address the rejections under two headings, but rely
upon the same arguments under both headings (Br. 11-18). We therefore
limit our discussion to one claim, i.e., claim 1. Claims 3-5, 7-10, 15, 20,
23-32, 34, 35, 37-39, 41--43, 45--47, 50, 52 and 54 stand or fall with that
claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Scher discloses a photovoltaic device comprising a photoactive layer
which includes aligned nanostructures such as nanocrystals and can include
conductive polymers which can be poly[2-methoxy, 5-(2' -ethyl-hexyloxy)-
p-phenylene-vinylidene] (MEH-PPV) (col. 1, 11. 29--41; col. 17, 11. 26-33).
The nanostructures comprise "two inorganic materials (e.g., one material
that functions as a hole conductor and one that functions as an electron
conductor)" (col. 24, 11. 28-30) and preferably are semiconductors (col. 24,
11. 49-50).
Sariciftci discloses a photovoltaic cell comprising semiconducting
(conjugated) polymers as donors and Buckminsterfullerenes as acceptors
(col. 3, 11. 18-22). The conjugated polymers include poly(2-methoxy, 5-(2 ' -
ethyl-hexyloxy)-p-phenylene vinylidene) (MEH-PPV) (col. 4, 11. 44--49).
The Appellants assert, regarding the "consisting essentially of' term
in the claim limitation "a photoactive layer consisting essentially of a
conjugated polymer and a fullerene", that "the replacement of fullerenes as
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Application 10/559,009
electron acceptors by semiconductor nanocrystals in the photoactive layer of
the presently claimed invention or the addition of semiconductor
nanocrystals to the photoactive layer of the presently claimed invention
would materially affect the basic characteristics of the claimed invention"
(Br. 13).
The term "consisting essentially of' includes not only what is
specifically recited in the Appellants' claim, but also any other materials
which do not materially affect the basic and novel characteristics of the
claimed invention. See In re Herz, 537 F.2d 549, 551-52 (CCP A 1976); In
re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964); In re Janakirama-Rao,
317 F.2d 951, 954 (CCPA 1963). The rejection is not based upon
combining Scher's nanocrystals with Sariciftci's fullerenes but, rather, is
based upon substituting Scher' s nanostructures for Sariciftci' s fullerenes
(Ans. 70). That substitution would meet the Appellants' "consisting
essentially of' limitation.
The Appellants argue that one of ordinary skill in the art would not
have substituted Scher' s nanostructures for Sariciftci' s fullerenes because
doing so would change Scher' s principle of operation and would eliminate
the benefits of Scher' s nanostructures (Br. 12-16).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
reason which would have been apparent to one of ordinary skill in the art for
substituting Sariciftci' s fullerenes for Scher' s nanostructures would have
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Application 10/559,009
been to trade the benefits of Scher' s nanostructures for the benefits of the
combination of fullerenes and semiconducting conjugated polymers set forth
by Sariciftci (col. 3, 1. 61-col. 4, 1. 6):
(i) Because the semiconducting conjugated polymer (or its
precursor polymer) and the fullerenes are soluble, there is no
need for heat treatment at elevated temperatures. This greatly
simplifies the fabrication procedure and enables a continuous
manufacturing process.
(ii) Since the semiconducting polymer layer and the
fullerene can be cast onto the substrate directly from solution at
room temperature, the device structure may be fabricated on a
flexible transparent polymer substrate. Since such polymer
films are manufactured as large area continuous films, the use
of flexible polymer films as substrate enables the fabrication of
large area polymer solar cells using either a batch process or a
continuous process.
Accordingly, we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
It is ordered that the 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).
AFFIRMED
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