Ex Parte IIZUKA et al

Patent Trials and Appeals Board

Jan 17, 2019

12987261 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/987,261 01/10/2011
128170 7590 01/22/2019
Toyota
c/o Darrow Mustafa PC
410 N. Center Street, Suite 200
Northville, MI 48167
FIRST NAMED INVENTOR
Hideo IIZUKA
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.
TRDL-109-A 8181
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
docketing@darrowmustafa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEO IIZUKA, Y ASUHIKO TAKEDA, and
RISA YOSHI FUJIKAWA
Appeal2018-003161
Application 12/987,261
Technology Center 1700
Before N. WHITNEY WILSON, BRIAND. RANGE, and
LILAN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
January 13, 2017 decision finally rejecting claims 1-23 ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Toyota Motor Engineering and Manufacturing North
America, Inc. as the real party in interest (Appeal Br. 1 ).
Appeal2018-003161
Application 12/987,261
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to solar cells having a double groove
diffraction grating (i.e., a diffraction grating with alternating wide and
narrow grating elements) which is configured to transmissively diffract
normal incident light into the cell to maximize light pathlength within the
cell (Appeal Br. 1 ). This is said to maximize light absorption by a
photovoltaic portion of the cell (id.). Claim 1 is representative of the
claimed invention, and is reproduced below from the Claims Appendix to
the Appeal Brief:
1. A solar cell comprising:
a light-absorbing layer responsive to impinging polarized
light to produce electrical energy;
first and second electrodes of opposite polarity for
deriving electrical energy from the light-absorbing layer; said
electrodes being disposed parallel to one another on opposite
sides of and generally parallel to the light-absorbing layer; and
a solid transparent substrate having two parallel plane
surfaces, one of said surfaces contactingly overlying one of the
electrodes and having embedded in said contactingly overlying
surface a double groove diffraction grating comprising
regularly spaced double width dielectric diffraction grating
elements arranged substantially along the entirety of said
surface and integral with said substrate for transmissively
coupling a selected first order component of normal S-polarized
light incident on substantially the entirety of a surface of the
light-absorbing layer into the light absorbing layer with greater
than 50% coupling efficiency.
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Appeal2018-003161
Application 12/987,261
REJECTIONS
I. Claims 1, 4--6, 11, and 15 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Ramamoorthy2 in view of Saarinen 3 and Pietarinen. 4
II. Claims 2, 3, 8-10, 13, 14, 18, and 19 are rejected under
35 U.S.C. § 103(a) as unpatentable over Ramamoorthy in view of Saarinen
and Pietarinen, and further in view of Duerr. 5
III. Claims 7, 12, 16, 17, and 20-23 are rejected under
35 U.S.C. § I03(a) as unpatentable over Ramamoorthy in view of Saarinen
and Pietarinen, and further in view of Mizuno. 6
DISCUSSION
The Examiner finds that Ramamoorthy discloses each limitation of
claim 1, except that it does not disclose that the diffraction grating is a
double grooved diffraction grating comprising regularly spaced double
width dielectric diffraction grating elements arranged substantially along the
entirety of said surface and integral with said substrate for transmissively
coupling only a selected first order component of the normal S-polarized
light incident on substantially the entirety of a surface of the light-absorbing
layer into the light absorbing layer with greater than 50% coupling
efficiency (Final Act. 3--4, citing Ramamoorthy, Figs. 1 OA and 13).
2 Ramamoorthy et al., US 2009/0242019 Al, published October 1, 2009.
3 Saarinen et al., "Asymmetric beam deflection by doubly grooved binary
gratings," Applied Optics, Vol. 33, No. 14, pp. 2401-2405 (May 10, 1995).
4 Pietarinen et al., "Double Groove Broadband Gratings," Optics Express,
Vol. 16, No. 18, pp. 13824--13830 (September 1, 2008).
5 Duerr et al., US 2008/0245410 Al, published October 9, 2008.
6 Mizuno, US 6,350,945 Bl, issued February 26, 2002.
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Appeal2018-003161
Application 12/987,261
The Examiner finds that Saarinen discloses that double grooved
diffraction gratings offer enhanced 1st order diffraction and larger critical
angles, and Pietarinen teaches that double diffraction gratings can be used to
transmissively couple light (Final Act. 4). Therefore, according to the
Examiner it would have been obvious
to have modified the diffraction grating in the cell of
Ramamoorthy[]. to include a transmissively double-groove 1st
order diffraction grating geometry suggested by Saarinen[] and
Pietarinen[] because the simple substitution of a known element
known in the prior art to perform the same function, in the
instant case a diffraction grating for directing radiation, is a
matter of obviousness (see MPEP 2143 B) and because it would
provide for enhanced 1st order diffraction efficiency and larger
critical angles of incident light.
(Final Act. 5.)
Appellants argue, inter alia, the Examiner's "simple substitution" of
Saarinen's double diffraction grating (modified as suggested by Pietarinen to
make it transmissive rather than reflective) is improper, particularly because
a person of skill in the art would not have had a reasonable expectation of
success in making the recited combination (Appeal Br. 6-8). Moreover,
according to Appellants, modifying the art to achieve the claimed diffraction
properties would have required more than routine
experimentation/optimization from someone of skill in the art.
Appellants contend (Appeal Br. 6) that Saarinen explicitly states that
its disclosures regarding the properties of its double diffraction gratings are
specific to reflective (rather than transmissive) gratings, and states that its
teachings are not applicable to transmissive double diffraction gratings
which, according to Saarinen, can only occur at limited incidence angles
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Appeal2018-003161
Application 12/987,261
( citing Saarinen 2401 ). Therefore, according to Appellants, "the
transmissive double groove diffraction gratings having greater than 50%
coupling into of normal S-polarized light into a 1st order diffraction
component of the present claims represent a surprising result" (Appeal Br.
6).
Appellants also cite to a Rule 132 Declaration of Dr. Hideo Iizuka
( one of the inventors of the application on appeal) as evidence that the
diffraction properties of transmissive and reflective diffraction gratings are
governed by different physical principals, so that knowledge of how to
create a reflective diffraction grating having the claimed properties would
not have allowed a person of ordinary skill in the art to make a transmissive
diffraction grating having those same properties (Appeal Br. 6-7; see Iizuka
Deel. ,r,r 9-12). For example, Dr. Iizuka points to published literature which
shows that metallic, reflective gratings (like those disclosed by Saarinen)
will not accommodate modes with high electromagnetic amplitude in the
grating ridges, which are required to achieve the diffraction properties set
forth in claim 1 (Iizuka Dec. ,r 10).
The Examiner has not disputed the evidence set forth in the Iizuka
Declaration (see Ans. 26-28). Instead, the Examiner relies on disclosure in
Saarinen of specific dimensions for its gratings and disclosure in Pietarinen
of specific dimensions for its gratings as evidence that a person of skill in
the art would have known to vary these parameters to achieve the results set
forth in the claimed device (id.). However, the evidence from the Iizuka
Declaration shows that design parameters from reflective grating as
discussed in Saarinen, if transferred to a transmissive grating like Pietarinen,
would not have been expected to yield the same diffraction properties, such
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Appeal2018-003161
Application 12/987,261
as those set forth in the claims, and that more than routine experimentation
would have been required to arrive at the claimed diffraction properties
(Iizuka Deel. ,r 12).
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417
(2007). In the absence of a proper prima facie case of obviousness, an
applicant who complies with the other statutory requirements is entitled to a
patent. In re Roujfet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In order to justify rejecting a
claim as unpatentable, the Examiner must also articulate some "reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). This
reasoning must show that "there was an apparent reason to combine the
known elements in the fashion claimed." KSR, 550 U.S. at 418. Finally,
evidence showing there was no reasonable expectation of success may
support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048,
1054 (CCPA 1976).
We conclude that the preponderance of evidence of record does not
support the rejection of claim 1. The evidence does not support a finding
that a person of skill in the art would have had a reasonable expectation that
a transmissive diffraction grating having the claimed diffraction properties
could have been constructed based on the teachings of Saarinen and
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Appeal2018-003161
Application 12/987,261
Pietarinen. Accordingly, we reverse the rejection of claim 1.
The basis for our reversal of the rejection of claim 1 over
Ramamoorthy in view of Saarinen and Pietarinen is common to the rejection
of each of the independent claims. Accordingly, we reverse the rejection of
each of those claims, and the claims which depend from them, for the same
reasons.
CONCLUSION
We REVERSE the rejection of claims 1, 4---6, 11, and 15 under
35 U.S.C. § 103(a) as unpatentable over Ramamoorthy in view of Saarinen
and Pietarinen.
We REVERSE the rejection of claims 2, 3, 8-10, 13, 14, 18, and 19
under 35 U.S.C. § 103(a) as unpatentable over Ramamoorthy in view of
Saarinen and Pietarinen, and further in view of Duerr.
We REVERSE the rejection of claims 7, 12, 16, 17, and 20-23 under
35 U.S.C. § 103(a) as unpatentable over Ramamoorthy in view of Saarinen
and Pietarinen, and further in view of Mizuno.
REVERSED
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