Ex Parte Nakamura et al

Patent Trial and Appeal Board

Aug 24, 2017

13821821 (P.T.A.B. Aug. 24, 2017)

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.
13/821,821 03/08/2013 Masami Nakamura 4700.P0396US 2331
23474 7590 08/28/2017
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
TRIVISONNO, ANGELO
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAMI NAKAMURA, NAOTO SHINDO,
TADASHI KANASAKU, and JUNICHI ATOBE
Appeal 2017-001757
Application 13/821,8211
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 4, 10, and 13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Shoei Chemical Inc. and Kyocera Corporation as the
real parties in interest. App. Br. 1.
2 In this Opinion, we refer to the Specification filed March 8, 2013
(“Spec.”); the Final Action mailed February 16, 2016 (“Final Act.”); the
Appeal Brief filed June 3, 2016 (“Appeal Br.”); the Examiner’s Answer
mailed September 12, 2016 (“Ans.”); and the Reply Brief filed November
11, 2016 (“Reply Br.”).
Appeal 2017-001757
Application 13/821,821
The claims are directed to a solar cell element. Claim 1, reproduced
below with disputed terms emphasized, is illustrative of the claimed subject
matter:
1. A solar cell element, comprising:
a semiconductor substrate with a main surface having a
texture structure in which projections having an average width
and height of 2 pm or less are formed;
an antireflection film disposed in a first region on the
main surface of the semiconductor substrate; and
a front surface electrode which is disposed in a second
region on the main surf ace of the semiconductor substrate,
comprises silver as a main component and contains a tellurium
based glass containing tellurium, tungsten, and bismuth as
essential components, wherein the tellurium-based glass
contains, in terms of oxide, tellurium in an amount of 50.0 to
70.0 mol%, tungsten in an amount of 19.0 to 40.0 mol%, and
bismuth in an amount of 5.0 to 25.0 mol%.
Appeal Br. (Claims App’x 1).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Fujii et al. US 2008/0220559 A1 Sept. 11, 2008
(“Fujii”)
Clifford et al. WO 92/00925 Jan. 23, 1992
(“Clifford”)
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Application 13/821,821
REJECTION
The Examiner maintains and Appellants seek review of the rejection
under 35 U.S.C. § 103(a) of claims 1,4, 10, and 13 as unpatentable over
Fujii in view of Clifford. Final Act. 3—7; see also Appeal Br. 2—7.
OPINION
Appellants argue, with respect to independent claim 1, that the
Examiner unreasonably determined that the applied prior art teaches or
suggests modifying Fuijii’s surface electrode material with Clifford’s glass
composition. Appeal Br. 2—7. Appellants do not make separate
patentability arguments for the dependent claims 4, 10, and 13, which will
stand or fall with independent claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
With respect to claim 1, the Examiner finds that Fujii discloses a solar
cell element comprising a semiconductor substrate, an antireflection film,
and a front surface electrode as claimed. Final Act. 3^4. The Examiner
further finds that Fujii does not disclose that the front surface electrode
contains a tellurium-based glass containing tellurium, tungsten, and bismuth
as essential components. Id. at 4. According to the Examiner, Fujii also
does not disclose that such glass contains, in terms of oxide, tellurium in an
amount of 50.0 to 70.0 mol%, tungsten in an amount of 19.0 to 40.0 mol%,
and bismuth in an amount of 5.0 to 25.0 mol%. Id. at 4—5.
With respect to Fujii’s missing elements, the Examiner finds that
Clifford “discloses a solder/sealing glass capable of sealing electrical
components in semiconductor devices . . . , wherein the glass composition is
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Application 13/821,821
comprised of 50-95 mol% tellurium oxide, 0.1—40 mol% tungsten oxide and
0—30 mol% bismuth oxide . . . Id. at 5. The Examiner determines that
[i]t would have been obvious to one having ordinary skill in the
art at the time of the invention to modify the device of [Fujii] and
replace the glass frit of the conductive electrode paste with the
glass composition taught by [Clifford] because the solder glass
composition of [Clifford] possesses good water and chemical
durability in combination with a high expansion and low melting
temperature ....
Id. The Examiner concludes that a prima facie case of obviousness exists
because the mol% ranges of Clifford’s glass composition elements and the
dimensions of projections in Fujii’s textured substrate overlap with the
ranges and dimensions recited in claim 1. Id.', see also id. at 3^4.
Appellants’ challenge focuses on whether the Examiner erred in
combining Fujii with Clifford. Appeal Br. 2—7.
Appellants argue that conventional manufacturing of a solar cell front
surface electrode, which contains tellurium-based glass, typically suffers
from bleeding artifacts in the electrode. Id. at 2. Appellants further argue
that such undesirable bleeding is avoided if the tellurium-based glass
contains tellurium, tungsten and bismuth as essential components and that,
in terms of oxide, each of these elements are present in the claimed mol%
ranges. Id. According to Appellants, because “Fujii and Clifford both are
completely silent about the bleeding problem[,] ... no person would try to
obtain a glass composition for preventing bleeding while ensuring an
optimal fire-through property and excellent ohmic contact.” Id. at 7; see
also Reply Br. 3.
Appellants’ contention that it is significant that the applied prior art
does not recognize the bleeding problem is unpersuasive, as “[o]ne of
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Application 13/821,821
ordinary skill in the art need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed.
Cir. 2005) (citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992)); see
also In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some
motivation or suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventors.”).
Moreover, we agree with the Examiner that only one dependent claim
references the bleeding problem—claim 13 recites the limitation “the finger
electrodes essentially have no bleeding.” Ans. 3. The Examiner finds that
the solar cell element suggested by Fujii and Clifford is substantially the
same as that of claim 13, thus, the Examiner’s proposed solar cell element
would inherently possess the ability to prevent finger electrode bleeding.
Ans. 4. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here,
the claimed and prior art products are identical or substantially identical. . .
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”).
Appellants argue that “there is no teaching or suggestion about the utility of
Clifford’s low melting glass for service at such a high firing temperature as
required in the formation of applicants’ or Fujii’s electrodes.” Appeal Br. 5—
6. According to Appellants, because “Fujii discloses the firing being
performed at a temperature of 600—800°C, the Clifford reference expressly
teaches away from the low-melting glass disclosed there being used in a
temperature range any higher than 450°C.” Reply Br. 3.
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Application 13/821,821
Appellants’ arguments are not persuasive because they fail to identify
any teaching in the applied prior art that criticizes, discredits, or discourages
using Clifford’s low-melting glass in a temperature range any higher than
450°C. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover,
we agree with the Examiner that Appellants do not provide any indication or
evidence that such a glass composition is rendered useless at temperatures
higher than 450°C. Ans. 5; see also Best, 562 F.2d at 1255.
Appellants argue that Clifford
provides no suggestion or motivation regarding the selection of
W and Bi oxides from a large number of oxides of the ... groups
[iii) from 0.1 to 40 mol % of one or more oxides of Mg, Ba, Ti,
Nb, Ta, Mo, W, Ag, Zn, B, Tl or an appropriate amount of a
precursor for one or more of the chosen oxides, and iv) optionally
up to 30 mol% of one or more other oxides of Pb, V, Li, Na, K,
Rb, Cs, Ca, Sr, Zr, Hf, Si, Ge, Al, Ga, In, P, Sn, Sb, Bi, La or a
rare earth metal, or an appropriate amount of a precursor for one
or more of the chosen oxides] in combination with Te oxide,
without regard to the copper oxide essential to Clifford glass, for
use in the solar cell front surface electrodes.
Appeal Br. 6; see also id. at 4.
For purposes of § 103, a reference is prior art for all that it discloses.
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
The fact that a reference “discloses a multitude of effective combinations
does not render any particular formulation less obvious.” See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also In
re Corkill, 111 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of
claims affirmed in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands’ of compounds”); In re Susi,
440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the
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Application 13/821,821
disclosure of the prior art was “huge, but it undeniably include [d] at least
some of the compounds recited in appellant’s generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant’s additives”).
Therefore, Appellants’ argument for non-obviousness based on Clifford’s
disclosure of multiple oxides is unpersuasive, since Appellants have not
shown persuasively that the Examiner’s finding that Clifford provides
direction to select overlapping mol% ranges of tellurium, tungsten, and
bismuth oxide components that would meet the claim limitations is
erroneous or unreasonable.
Appellants also argue that hindsight provides the only motivation to
combine the references as the Examiner has done. Reply Br. 2, 3, 6. “Any
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The Examiner’s
explanation of the reasons a person of ordinary skill in the art would have
had to combine the prior art teachings is sufficient when an allowance is
made for “the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
Based on the record before us, Appellants have not shown that the
Examiner reversibly erred in rejecting the claims as prima facie obvious.
Thus, the burden of going forward shifts to Appellants. In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984).
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Application 13/821,821
Appellants seek to rebut the prima facie case by showing unexpected
results in Table 1 in the Specification as evidence that “when the tellurium-
based glass contains the three essential components as required in Claim 1,
the electrode is formed on the specific substrate of Claim 1 without
bleeding.” Appeal Br. 7. Appellants contrast these results with the results
provided from testing tellurium-based glass comprised of oxide components
outside the claimed mol% ranges. Id. According to Appellants, such testing
of comparative examples resulted in “significant bleeding,” thereby
demonstrating that bleeding prevention by the claimed solar cell element is
“clearly unexpected.” Id. Appellants conclude that “it is readily recognized
from these test results the effects of the addition of tungsten and bismuth to
tellurium and the criticality thereof in the claimed invention.” Reply Br. 4.
Unexpected results must be “commensurate in scope with the degree of
protection sought by the claims on appeal.” In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005); see also In re Graselli, 713 F.2d 731, 743 (Fed. Cir.
1983) (It is well settled “that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”). In this instance, we agree with the Examiner that, although claim
1 requires a generic semiconductor substrate, all 33 of the examples tested in
Table 1 were limited to one multicrystalline silicon semiconductor substrate
material. See Ans. 4; see also Spec. 165. Appellants therefore have not
provided evidence that all semiconductor substrates would achieve the
alleged unexpected results, and the evidence of non-obviousness relied upon
by Appellants is not commensurate in scope with the claims.
Unexpected results must also be established by clear and convincing
evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent
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Appeal 2017-001757
Application 13/821,821
upon appellants to submit clear and convincing evidence to support their
allegation of unexpected property.”); see also McClain v. Ortmayer, 141
U.S. 419, 429 (1891) (conclusive evidence needed to establish new
function). For the reasons stated by the Examiner in the Answer, Appellants
have not met their burden in providing clear and convincing evidence of
unexpected results. See Ans. 4. Furthermore, Appellants have not provided
evidence of unexpected results showing the criticality of the endpoints of:
(i) tellurium in an amount up to 70.0 mol% because no data points between
70.0—80.0 mol% were tested; (ii) tungsten in an amount of 19.0 to 40.0
mol% because no data points between 9.5—19.0 mol% were tested and no
data is provided above 40.0 mol%; and (iii) bismuth in an amount up to 25.0
mol% because no data is provided above 25.0 mol%. Spec. Table 1.
Accordingly, Appellants fail to show evidence of unexpected results that
might rebut the Examiner’s determination that a prima facie case of
obviousness exists.
We sustain the Examiner’s rejection of claim 1. For the same reasons,
we sustain the rejection of claims 4, 10, and 13 which depend from claim 1.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4, 10, and
13 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)(l)(iv).
AFFIRMED
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