Ex Parte ROTTO et alDownload PDFPatent Trials and Appeals BoardJun 19, 201914778623 - (D) (P.T.A.B. Jun. 19, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation