Ex Parte MURATA et al

Patent Trial and Appeal Board

Jul 31, 2015

12270978 (P.T.A.B. Jul. 31, 2015)

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.
12/270,978 11/14/2008 Kazuya MURATA SAN.002.0068.NP 3190
65181 7590 07/31/2015
MOTS LAW, PLLC
1629 K STREET N.W.
SUITE 200
WASHINGTON, DC 20006-1635
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1755
MAIL DATE DELIVERY MODE
07/31/2015 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 KAZUYA MURATA1
and Mitsuhiro Matsumoto
________________

Appeal 2013-007289
Application 12/270,978
Technology Center 1700
________________

Before CHARLES F. WARREN, MARK NAGUMO, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Kazuya Murata and Mitsuhiro Matsumoto (“Murata”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection2 of claims 1–6, 19,
and 20.3 We have jurisdiction. 35 U.S.C. § 6. We affirm-in-part.

1 The real party in interest is listed as Sanyo Electric Co., LTD. (Appeal
Brief, filed 12 June 2012 (“Br.”), 3.)
2 Office action mailed 18 January 2012 (“Final Rejection”; cited as “FR”).
3 Remaining copending claims 7–18 have been withdrawn from
consideration by the Examiner (FR 1, ¶ 5a; Br 5), and are not before us.
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OPINION
A. Introduction4
The subject matter on appeal relates to thin-film solar cell modules
that include multiple cell elements connected in series. (Spec. 1, ll. 16–18.)
The solar cells are formed by layering, on a translucent substrate, a
translucent conductive layer, a first (typically amorphous) semiconductive
layer, a transparent conductive layer, a second (typically crystalline)
semiconductive layer, and a back-surface conductive layer. The cell
elements are defined further by three “separating grooves” that separate
various combinations of layers into separate parts. (Id. at ll. 18–24.)
A diagram of the claimed solar cell module is shown in Fig. 1, below.

{Fig. 1 shows a cross section of a solar cell embodiment}
A translucent glass or plastic substrate 15 is provided, on which
transparent and conductive light-receiving-surface-side layer 2, made of

4 Application 12/270,978, Solar cell module and method of manufacturing
the same, filed 14 November 2008, claiming the benefit of an application
filed 27 December 2007 in Japan. We refer to the “ʼ978 Specification,”
which we cite as “Spec.”
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materials such as tin oxide (SnO2) or zinc oxide (ZnO) is deposited. A first
semiconductor layer 3 generates charges upon exposure to light of a first
frequency range through layers 1 and 2, as well as by light reflected from
transparent conductive layer 4. (Id. at 9, ll. 8–13.) Transparent conductive
layer 4 may be a material such as ZnO or a thin metal layer, or more
complex structures. (Id. at 9, l. 21, through 10, l. 6.) A second
semiconductive layer 5 also generates carriers with incident light of a second
frequency range (to achieve a wider spectral response), and is covered by
back-surface-side conductive layer 6.
As illustrated in Fig. 1, layer 2 is separated into parts by first
separating groove 7a, which is filled with the material of semiconductor
layer 5. Layers 3, 4, and 5 are separated by groove 7b, which is filled with
the material of conductive layer 6. Layers 6, 5, and 4, and optionally
layer 3, are separated into parts by third separating groove 7c, which is
positioned opposite to separating groove 7a, on the other side of separating
groove 7b, as shown in Fig. 1.6 Layers 3 and 4 are separated into parts by
separating groove 8, which overlies directly separating groove 7a, and which
is filled with the material of second semiconductor layer 5. A novel aspect
of Murata’s design is said to be that separating groove 8 is wider than
separating groove 7a, and that separating groove 8 is defined in part by the

5 Throughout this Opinion, for clarity, labels to elements in figures are
presented in bold font, regardless of their presentation in the original
document.
6 Separating groove 7c separates cell 10 from the adjacent cell. Separating
groove 7b, which is filled with a conductor, connects adjacent cells 10 in
series.
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horizontal upper surface of light-receiving-surface-side conductive layer 2,
labeled 2a in Fig. 1.
The adhesion of the material of second semiconductor layer 5 to
translucent substrate 1 is said to be relatively weak. As a result,
delamination of the second semiconductive layer 5 from substrate 1 is said
to be a problem in prior art solar cell modules. (Id. at 4, ll. 4–14.) The
adhesion of second semiconductor material 5 to conductive light-receiving
surface layer 2 is said to be relatively strong. As a result, wider separating
groove 8 provides additional horizontal surfaces 2a to which semiconducting
material 5 can bond, thereby reducing the tendency of delamination from the
substrate.
A second problem said to arise in prior art solar cell modules is the
formation of a conductive path near the interface between the light-
receiving-surface-side conductive layer and the second semiconductive
layer. This conductive path is said to result in a leakage current that reduces
the efficiency of the solar cell assembly. Wider separating groove 8 is said
to alleviate this problem as well. (Id. at 19, ll. 16–24.)
Claim 1 is representative of the dispositive issues and reads:
A solar cell module, comprising:
a translucent substrate [1];
a translucent light-receiving-surface-side conductive layer [2]
formed on a principal surface of the substrate;
a first semiconductor layer [3] formed on the light-receiving-
surface-side conductive layer [2];
a transparent conductive layer [4] formed on the first
semiconductor layer [3];
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a second semiconductor layer [5] formed on the transparent
conductive layer [4];
a back-surface-side conductive layer [6] formed on the second
semiconductor layer [5];
a first separating groove [7a] configure[d]
to separate the light-receiving-surface-side conductive
layer [2] into parts having top horizontal surfaces on the
opposite side from the substrate [1],
the first separating groove [7a] being filled with a material
for the second semiconductor layer [5];
a second separating groove [7b] configured
to separate the first semiconductor layer [3], the transparent
conductive layer [4] and the second semiconductor layer [5]
into parts,
the second separating groove [7b] being filled with a
material for the back-surface-side conductive layer [6];
a third separating groove [7c] formed in a location opposite to
the first separating groove [7a] across the second separating
groove [7b] and configured
to separate the back-surface-side conductive layer [6], the
second semiconductor layer [5] and the transparent
conductive layer [4] into parts; and
a transparent conductive layer separating groove [8] formed
continuously from the first separating groove [7c] and
configured to separate the transparent conductive layer [4]
and the first semiconductor layer into parts,
the transparent conductive layer separating groove [8] being
filled with the material for the second semiconductor layer [5],
wherein the transparent conductive layer separating groove [8]
at a side of the first separating groove [7a] is
larger in width than the first separating groove [7a] at a
side of the transparent conductive layer separating
groove [8]
such that the top horizontal surfaces [2a] of the light-
receiving-surface-side conductive layer [2] bond with the
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material for the second semiconductor layer [5] filled in
the transparent conductive layer separating groove [8].
(Claims App. (filed 2 January 2013) 4–5; some indentation and
paragraphing, bracketed labels to elements in Fig. 1, and emphasis added.)
The Examiner maintains the following grounds of rejection:7
A. Claims 19 and 20 stand rejected under 35 U.S.C. §112(2).
B. Claim 20 stands rejected under 35 U.S.C. §112(1) as lacking
an adequate written description for the limitation “improved
mechanical resistance.”
C. Claims 1–6, 19, and 20 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Hayashi8 and Shinohara.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Federal Circuit has explained that, on appeal, the appellant must
not only show the existence of error, but also that the error was harmful
because it affected the decision below. In re Chapman, 595 F.3d 1330, 1338
(Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009)
(“the burden of showing that an error is harmful normally falls upon the
party attacking the agency’s determination.”).

7 Examiner’s Answer mailed 29 January 2013 (“Ans.”).
8 Katsuhiko Hayashi et al., Photovoltaic module, U.S. Patent
No. 6,632,993 B2 (2003). The ’978 Specification discusses Hayashi as an
example of the prior art. (Spec. 3, ll. 21–23 et seq.)
9 Wataru Shinohara, Photovoltaic cell, etc., U.S. Patent Application
Publication 2005/0284517 A1 (2005).
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Rejections under § 112
The Examiner holds claim 19 to be indefinite in the recitation of “the
bonding region” and in the recitation that “an angle between an inner wall of
the first separating groove [7a] and the principal surface of the substrate [1]
is formed that is almost orthogonal” (bracketed labels to Fig. 1 and emphasis
added). (FR 2; Ans. 5–6.)
Claim 19 does not recite “the bonding region,” so this basis of
rejection has no merit.10 The Examiner states, without elaboration or further
explanation, that “[i]t is unclear at what angles is considered to be ‘almost.’”
(FR 2.) Our reviewing court has explained recently that a claim in an
application for patent may be rejected as indefinite, “when the USPTO has
initially issued a well-grounded rejection that identifies ways in which
language in a claim is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response.” In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014). It is also long settled law that claims must be
understood from the point of view of a person having ordinary skill in the
art, and that absolute precision, being unattainable, is not a requirement of
definiteness. Here, the Examiner has not explained, nor is it apparent on its

10 It appears that the amendment filed under 37 C.F.R. § 1.116
on 12 April 2012 contained this limitation. However, the Examiner denied
entry of the amendment, so the issue is moot. Murata’s protests that those
amendments should have been entered (Br. 16, ll. 4–5 and 8-9; Suppl. to the
Brief filed 2 January 2013 (presenting claims as last amended before the
final rejection) at 2) are unavailing before this Board, as the issue is
petitionable, and beyond our jurisdiction.
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face, that the modifier “almost” renders the claim ambiguous, vague,
incoherent, opaque, or unduly unclear.
The Examiner holds claim 20 to be indefinite in the recitations “said
layers,” in line 11, and “this layer,” in the last two lines. As Murata explains
(Br. 16), the context makes clear that the “said layers” are the transparent
conductive layer [4], the first semiconductor layer [3], and the translucent
light-receiving-surface side conductive layer [2] penetrated by the second
semiconductive layer material [5]. Similarly, the context of the final clause
makes clear that the first “this layer” refers to the just-recited translucent
light receiving surface side conductive layer [2], while the second “this
layer” refers to the first semiconductor layer [3]. The Examiner has not
explained what other interpretation would be both plausible and in conflict
with this reading.
We reverse the rejections for indefiniteness.
Claim 20, which was presented as a new claim in the amendment filed
immediately before the final rejection, uses the phrase “with improved
mechanical resistance to semiconductor layer separation from translucent
substrate” to characterize, in the preamble, the claimed solar cell module.
The Examiner finds that that recitation “has not [sic] support . . . in the
originally filed disclosure.” (FR 2.)
Whether the written description requirement has been met is a
question of fact, and is therefore evaluated by the preponderance of
evidence. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (“This inquiry, as we have long held, is a
question of fact.”).
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Murata first objects that because the recitation is in the preamble, it is
not entitled to patentable weight, so the rejection in improper. (Br. 14, last
two lines.) This argument is wrong as a matter of law. While recitations in
preambles may not be entitled to patentable weight, they may nonetheless
limit the claim by imposing conditions that the subject matter specified by
the body of the claim must satisfy. Moreover, all the words of a claim must
be considered, and none should be presumed nugatory.
Murata also directs us to the Specification, page 24, lines 16–19, as
evidence of support. This passage reads, in full, “[f]or the foregoing
reasons, solar cell module 10 according to the second embodiment is capable
of further increasing the effect or preventing second semiconductor layer 5
from being delaminated from substrate 1.” The Examiner also directs our
attention to similar language at lines 7–19 of page 24 and at page 19, all
referring to preventing “delamination” rather than “improved mechanical
resistance to semiconductor layer separation from [the] translucent
substrate,” as recited in claim 20.
Absent a definition provided in the specification equating two
different words, or evidence that the art recognizes the two words as
synonyms, different words in claims are presumed, reasonably, to have
different meanings.
In the Answer, the Examiner reasons that “improved mechanical
resistance” is broader than “preventing delamination,” and that “[p]reventing
delamination of the second semiconductor does not lead one skilled in the
art to predict other characteristics of mechanical resistance of a solar cell.”
(Ans. 5, ll. 5–7.) Murata did not file a Reply.
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The Examiner’s statement is incomplete, in that it is not “mechanical
resistance” in general, but “mechanical resistance to semiconductor
separation from [the] translucent substrate” that is at issue. Nonetheless,
Murata has not directed our attention to a definition in the Specification or in
the prior art of record showing that one phrase means the same as the other.
Accordingly, we are not persuaded of harmful error in the rejection
for lack of written description of the subject matter of claim 20 within the
meaning of 35 U.S.C. § 112, first paragraph, and we affirm.
Obviousness (Rejection C, all claims)
The Examiner holds that it would have been obvious to adopt the
geometry of grooves described by Shinohara, which are wider in the upper
portions than in the lower portions, as required by transparent conductive
layer separating groove [8] compared to first separating groove [7a], to the
grooves described by Hayashi, in order to prevent short circuits in the
conductive layers as described by Shinohara in paragraphs [0017]–[0019].
(FR 8.)
Murata urges that Shinohara does not suggest the contact of the top or
side of its light-receiving surface-side conductive layer with the second
[semi]conductive layer material. (Br. 19–20.)
These arguments are not persuasive of harmful error because the
Examiner finds that Hayashi provides that teaching. Murata does not raise
any other substantive criticism of the obviousness rejection of claim 1. We
decline to scour the references seeking other evidence that might weigh
against or for obviousness or nonobviousness, as our primary role is review,
not fact-finding in the first instance.
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Regarding claim 2, which requires that the second semiconductor
layer [5] essentially contains a microcrystalline semiconductor, Murata urges
the Examiner erred because Hayashi at column 7, lines 30–60, does not refer
to any microcrystalline semiconductor. “Accordingly,” Murata concludes,
“the examiner’s assertion is without support.” (Br. 21.) As the Examiner
points out (Ans. 12, ll. 1–4), however, Hayashi teaches that “[t]he term
‘crystalline’ employed herein is to be interpreted inclusively and is meant to
include ‘polycrystalline’ and also ‘microcrystalline’.” (Hayashi, col. 4,
ll. 25–27.) Murata’s conclusion is thus without merit.11
Murata urges the Examiner erred in referring to Hayashi, column 10,
lines 20–34, as evidence that the subject matter of claim 5 would have been
obvious, because that passage refers to Hayashi’s interlayer 5, which
corresponds to the “transparent conductive layer” [4] of the subject
application, not to “the light-receiving-surface-side conductive layer” [2],
recited in claim 5. (Br., para. bridging 22–23.) This argument is not
persuasive of harmful error because Hayashi describes transparent front
electrode 3 as being constituted of oxides such as an ITO film, an SnO2 film,
or a ZnO film. (Hayashi, col. 7, ll. 3–5.) Hayashi recommends both ZnO
and SnO2, among others, as materials for conductive interlayer 5. Because
at least some of the most-highly recommended materials for the two
transparent conductive layers are identical, we are not persuaded that Murata
has demonstrated harmful error in the Examiner’s conclusion (FR, para.
bridging 9–10) that it would have been obvious to adjust the specific

11 Because the ʼ978 Specification cites and discusses Hayashi as an example
of particularly relevant prior art (Spec. 3–4), we may presume that Murata is
familiar with its teachings.
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resistance of transparent front electrode 3 by doping with impurities such as
aluminum or gallium, in the same way as conductive interlayer 5.
Finally, Murata urges (Br. 23–24) that the Examiner erred in holding
the subject matter of claim 6, which requires that the width of transparent
conductive layer separating groove [8] be no larger than 2.5 times the width
of first separating groove [7a], as an obvious matter of design choice. The
Examiner, in Murata’s view, failed to establish any facts supporting the
conclusion, and failed to provide any reasoning showing that those facts
would have led the ordinarily skilled person to select separating grooves in
the required range relative widths.
The Examiner’s reliance on the case Gardner v. TEC Systems, Inc.,
725 F2d 1338 (Fed. Cir. 1984) is unavailing. Obviousness is a legal
conclusion based on the facts of each case. As the Federal Circuit explained,
“[p]recedent cannot establish facts.” Case v. CPC Int’l, Inc., 730 F.2d 745,
750 (Fed. Cir. 1984). Gardner, which addressed the obviousness of an
apparatus for drying printed materials on glossy papers (as in many
periodicals), does not concern the materials and dimensions of solar cells
relevant to the present appeal. The Examiner’s generalized arguments
regarding the relations of dimensions to “the desired properties of the
photovoltaic system” and the desire to optimize widths of separating grooves
“to balance such properties as efficiency and the material cost” (Ans. 13,
l. 20, to 14, l. 4) are too general to demonstrate that artisans would have had
any reason to select such ratios of dimensions based on the teachings of
Hayashi and Shinohara.
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The weight of the evidence is that the Examiner did not establish a
prima facie case of obviousness of claim 6.
C. Order
It is ORDERED that the rejection of claims 19 and 20 under
35 U.S.C. § 112(2) is REVERSED;
It is FURTHER ORDERED that the rejection of claim 20 under
35 U.S.C. § 112(1) for lack of adequate written description is AFFIRMED;
It is FURTHER ORDERED that the rejection of claims 1–5, 19,
and 20 under 35 U.S.C. § 103(a) in view of the combined teachings of
Hayashi and Shinohara is AFFIRMED;
It is FURTHER ORDERED that the rejection of claim 6 under
35 U.S.C. § 103(a) in view of the combined teachings of Hayashi and
Shinohara is REVERSED.
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-IN-PART
pgc