Ex Parte MURATA et alDownload PDFPatent Trial and Appeal BoardJul 31, 201512270978 (P.T.A.B. Jul. 31, 2015) Copy Citation 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2 Office action mailed 18 January 2012 (“Final Rejection”; cited as “FR”). 3 Remaining copending claims 7–18 have been withdrawn from consideration by the Examiner (FR 1, ¶ 5a; Br 5), and are not before us. Appeal 2013-007289 Application 12/270,978 2 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.” Appeal 2013-007289 Application 12/270,978 3 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. Appeal 2013-007289 Application 12/270,978 4 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]; Appeal 2013-007289 Application 12/270,978 5 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 Appeal 2013-007289 Application 12/270,978 6 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). Appeal 2013-007289 Application 12/270,978 7 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. Appeal 2013-007289 Application 12/270,978 8 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.”). Appeal 2013-007289 Application 12/270,978 9 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. Appeal 2013-007289 Application 12/270,978 10 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. Appeal 2013-007289 Application 12/270,978 11 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. Appeal 2013-007289 Application 12/270,978 12 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. Appeal 2013-007289 Application 12/270,978 13 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 Copy with citationCopy as parenthetical citation