Ex Parte ROTTO et al

Patent Trials and Appeals Board

Jun 19, 2019

14778623 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/778,623 09/21/2015
32692 7590 06/21/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
NELSON T. ROTTO
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.
75130US010 9515
EXAMINER
MALLEY JR., DANIEL PATRICK
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NELSON T. ROTTO,
GREGORYL. BLUEM, MARKI. VOTAVA, and
GRACE XAVIER
Appeal2018-008878
Application 14/778,623
Technology Center 1700
Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.
ANKENBRAND, Acting Vice Chief Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 9-13. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, 3M Innovative Properties Company, which,
according to the Brief, is a real party in interest. Appeal Brief, filed May 23,
2018 ("Appeal Br.") 2. Appellant also identifies 3M Company as a real
party in interest. Id.
2 Final Action, mailed January 12, 2018 ("Final Act.").
3 Appellant withdrew claims 1-8 and 14--20 from consideration. Final Act.
1; see Appeal Br. 2.
Appeal 2018-008878
Application 14/778,623
STATEMENT OF THE CASE
Background
The subject matter on appeal relates to "crystalline silicon solar cells
and modules including charge collections tapes." Specification, filed Sept.
21, 2015 ("Spec.") ,r 2. According to the specification, photovoltaic cells
have included bus bars made of highly conductive metal, typically silver, to
conduct current the cells produce. Id. ,r 6. However, silver is expensive and
a silver bus bar represents a significant percentage of the total material cost
for a silicon solar cell. Id. ,r 8. In view of this, the specification states:
The inventors of the present disclosure recognized that the
silver bus bars ( or silver paste) on the front and rear surface of
solar cells or solar modules can be eliminated or reduced by
replacing the silver busbars on the front and rear surface with a
solderable tape including a conductive metal foil and a
nonconductive adhesive.
Id. ,I 10.
Of the appealed claims, claim 9 is independent. Claim 9 is
representative of the subject matter on appeal, and reproduced below:
9. A photovoltaic solar cell comprising:
a silicon wafer comprising a front surface and a back
surface,
a busbar tape,
wherein the silicon wafer comprises one or more of silver
gridlines on the front surface,
wherein the busbar tape comprises:
a conductive metal foil; and
a nonconductive thermoset adhesive;
wherein the busbar tape is solderable and
2
Appeal 2018-008878
Application 14/778,623
wherein the busbar tape is bonded to the front surface of
the silicon wafer via the nonconductive thennoset
adhesive.
Appeal Br. 7 (Claims App'x).
The Reference
Fukushima US 2013/0056152 Al Mar. 7, 2013
The Rejection
The Examiner maintains the following rejection on appeal:
Claims 9--13 are rejected under 35 U.S.C § I02(a)(l) over Fukushima.
OPINION
After having considered the evidence presented in this Appeal and
each of Appellant's contentions, we are not persuaded that Appellant
identifies reversible error with respect to the Examiner's rejection of claims
9-13. We affirm the Examiner's rejection of those claims for the reasons
expressed in the Final Action, the Answer, and explained below.
The Examiner finds Fukushima discloses a photovoltaic cell
comprising, among other things, a busbar tape including a conductive metal
foil and a nonconductive thermoset adhesive, wherein the busbar tape is
solderable. Examiner's Answer, dated Aug. 10, 2018 ("Ans.") 4.
Appellant contends Fukushima is focused on connecting solar cells to
create a solar module, whereas Appellant's invention is "focused on
connections within a single solar cell" and its busbar tape does not
interconnect solar cells. Appeal Br. 3--4. Appellant further argues that "the
busbar recited in claim 9 is within the solar cell" and "[t]he silicon wafer and
busbar tape are necessarily within the photovoltaic solar cell because the
3
Appeal 2018-008878
Application 14/778,623
photovoltaic solar cell comprises the silicon wafer and busbar tape." Id. at 4
(citing Spec. ,r 31); Reply Brief, filed Sept. 13, 2018 ("Reply Br.") 2. 4
Appellant's arguments are not persuasive. As the Examiner concludes
at page 8 of the Examiner's Answer, these arguments are directed to
limitations not recited in claim 9. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) ("Many of appellant's arguments fail from the outset because
... they are not based on limitations appearing in the claims."). Further,
although we interpret claims in light of the specification, we do not read
limitations from the specification into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
In addition, Appellant asserts Fukushima does not disclose that its
busbar tape is solderable, as recited in claim 9, and Fukushima is directed to
solving problems associated with soldering by using an adhesive tape. 5
Appeal Br. 4--5; Reply Br. 2.
This argument also is unpersuasive. Where patentability rests upon a
property of the claimed material not disclosed within the art, the US PTO has
no reasonable method of determining whether there is, in fact, a patentable
difference between the prior art materials and the claimed material. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Once the Examiner provides a
reasonable basis to believe that the characteristic is inherent, the burden
4 Appellant's Reply Brief is not paginated. For ease of reference, we
number the Reply Brief as pages 1-2.
5 Appellant also argues that the Examiner relies upon a comparative example
of Fukushima to find Fukushima's busbar tape is solderable. Appeal Br. 4.
This does not identify a reversible error because the explanation in the
Examiner's Answer demonstrates that the Examiner does not rely on a
comparative example of Fukushima to support the § 102 rejection. See Ans.
4--8.
4
Appeal 2018-008878
Application 14/778,623
shifts to the applicant to prove that the prior art products do not necessarily
possess the characteristics of his claimed product. Id. at 1254--55
(discussing In re Swinehart, 439 F.2d 210 (CCPA 1971) and In re Ludtke,
441 F.2d 660 (CCPA 1971)).
Here, the Examiner correctly finds that there is no structural
difference between the claimed busbar tape and Fukushima's tape. Ans. 6-
8. 6 Fukushima discloses adhesive tape 20 that includes metal foil 1 and
adhesive layers 2a, 2b. Fukushima ,r 32, Fig. 2. Metal foil 1 can be made
of, for example, copper, aluminum, iron, gold, silver, nickel, and chromium
and be 10-200 µm thick. Id. ,r 34. Although claim 9 does not limit the
material of the metal foil or its thickness, the materials and foil thickness
disclosed by Fukushima correspond to those disclosed in the specification.
Spec. ,r 37.
Fukushima's adhesive composition preferably contains a
thermosetting resin, such as an epoxy resin or a polyimide resin, and the
thickness of the adhesive layer can be 5 to 50 µm. Fukushima ,r,r 37, 54.
Although claim 9 does not recite a particular thermosetting adhesive or
adhesive layer thickness, Fukushima's thermosetting resins and adhesive
layer thickness correspond to those disclosed in the specification. Spec.
,r,r 45, 47.
6 Appellant contends the Examiner cited a section of the Manual of Patent
Examination Procedure ("MPEP") regarding the effect of the preamble, but
the arguments regarding whether Fukushima's tape is solderable regard a
limitation in the body of claim 9. Reply Br. 2. This argument does not
identify a reversible error, however, because the Examiner's analysis at
pages 6-8 of the Answer explains why Fukushima's tape necessarily would
be solderable.
5
Appeal 2018-008878
Application 14/778,623
As a result, the Examiner provides a reasonable basis for Fukushima's
tape being "solderable." This shifts the burden to Appellant to prove that
Fukushima's tape does not necessarily possess the characteristic of being
solderable. However, Appellant's arguments that Fukushima discloses
problems with soldering, 7 that Fukushima is directed to adhesive bonding,
and Fukushima does not otherwise disclose that its tape is solderable do not
meet this burden, or otherwise identify a reversible error in the rejection of
claim 9.
Appellant does not argue claims 10-13 separately from claim 9.
Appeal Br. 3-5. Thus, claims 10-13 fall with claim 9.
Accordingly, we affirm the Examiner's rejections of claims 9-13
under 35 U.S.C. § 102(a)(l) over Fukushima.
DECISION/ORDER
The Examiner's rejection of claims 9-13 under 35 U.S.C. § 102(a)(l)
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
7 To the extent Appellant argues that Fukushima teaches away from a
solderable tape, "the question whether a reference 'teaches away' from the
invention is inapplicable to an anticipation analysis." Celeritas Techs. Ltd.
v. Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (citation
omitted).
6