Ex Parte Shin et al

Patent Trial and Appeal BoardDec 17, 2012

11593572 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/593,572 11/07/2006 Byong-Cheol Shin 66267/P849 3225 23363 7590 12/18/2012 CHRISTIE, PARKER & HALE, LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER BERNIER, LINDSEY A ART UNIT PAPER NUMBER 1755 MAIL DATE DELIVERY MODE 12/18/2012 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 Samsung SDI Co. Ltd. (Inventors: Byong-Cheol Shin, Ji-Won Lee, Wha-Sup Lee, Kwang-Soon Ahn, Jae-Man Choi, and Joung-Won Park) ____________________ Appeal 2011-007397 Application 11/593,572 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, HUBERT C. LORIN, and MARK NAGUMO, Administrative Patent Judges. SCHAFER, Administrative Patent Judge. DECISION ON APPEAL Samsung SDI Co., Ltd. (Applicant) appeals from an Examiner’s decisions rejecting claims 1-18. 35 U.S.C. §§ 6(b) and 134(a). Because we do not see reversible error in the Examiner’s conclusion that the recited dimensions of the absorption layer of the claimed solar cells do not patentably distinguish the claims over the prior art, we affirm. Appeal 2011-007397 Application 11/596,572 2 The Claimed Subject matter Applicant’s invention relates to solar cells. Applicant’s solar cells have the same physical components of solar cells known in the art: (1) first and second electrodes facing each other; (2) a light absorption layer in contact with the first electrode; (3) an electrolyte encompassing the absorption layer; and (4) first and second lead electrodes formed on the first and second electrodes. In operation, the light absorption layer generates electrons when irradiated. Those electrons move through the absorption layer to the first electrode and from there move into the first lead electrode which is electrically connected to a device to be powered. Electrons return to the solar cell from the device through a second lead electrode formed on the second electrode in contact with the electrolyte. The electrons move from the second electrode through the electrolyte to the absorption layer completing the circuit. In Applicant’s invention, the light absorption layer has edges that intersect at a corner and that are dimensioned so the ratio of the lengths of the edges is in the range of 1.3 – 125 and in some claims 1.3-5. Claim 1 illustrates the invention: 1. A solar cell comprising: first and second electrodes facing each other; a light absorption layer formed on the first electrode, wherein the light absorption layer has a first edge proceeding in a first direction and a second edge proceeding in a second direction crossing the first direction; and a lead electrode formed on the first electrode in the first direction such that the lead electrode is spaced apart from the light absorption layer, wherein when the length of the first edge of the light absorption layer proceeding in the first direction is indicated by A and the length of the second edge of the light absorption Appeal 2011-007397 Application 11/596,572 3 layer proceeding in the second direction crossing the first direction is indicated by B, the value of A/B satisfies the following condition: 1.3≤A/B≤125. Rejections In the Answer, the Examiner maintained the following rejections: 1. Claims 1-2, 4-5, 9-14, and 16-17 under 35 U.S.C. 103(a) as unpatentable over the combined teachings of Yamazaki1 and Mizutani, 2 and 2. Claims 3, 6-8, and 18 under 35 U.S.C. 103(a) as unpatentable over the combined teachings of Yamazaki, Mizutani, and Fujimori.3 Analysis Claims 1 and 16 Applicant does not contest the Examiner’s finding (Answer, 4-5; Final Rej., 3) that Yamazaki teaches a solar cell that includes all the claimed structural elements. Nor does Applicant contest the Examiner’s finding (Answer, 5; Final Rej. 3) that the sole difference between the solar cells described by Yamazaki and those claimed by Applicant resides in the relative dimensions of the intersecting sides of the light absorption layer. The Examiner held that the dimensions of the light absorption layer were a “matter of design choice” and do not recite an unobvious distinction over prior art solar cells. Answer, paragraph bridging pages 5 and 6. We understand the Examiner’s reference to “design choice” to mean that the mode of operation of the described solar cells would have been expected to be the same regardless of the absorption layer dimensions. In this regard, we note that neither Yamazaki nor 1 U.S. Patent 6,653,701 B1, patented Nov. 25, 2003. 2 U.S. Patent 4,367,369, patented Jan. 4, 1983. 3 U.S. Patent Publication 2002/0108649 A1, published Aug. 15, 2002. Appeal 2011-007397 Application 11/596,572 4 Mizutani express any concern about controlling the dimensions of the absorption layer and the operation of the solar cell. Thus, it is presumably within the skill of the art to determine the appropriate dimensions for any specific end use application of the solar cell. We are aware of no technical reason, and have not been directed to any, that would have suggested that the dimensions of the absorption layer in a solar cell of the type described by Yamazaki would fundamentally alter the operation of the device. The Examiner’s finding that the selection of the particular dimensions is a design choice is reasonable and supported by a preponderance of the evidence. The Examiner also found that Mizutani teaches a solar cell4 that includes an absorption layer having the dimensions of 15 mm x 40 mm such that the length of the first edge of the light absorption layer proceeding in the first direction is indicated by A (40 mm) and the length of the second edge of the light absorption layer proceeding in the second direction crossing the first direction is indicated by B (15 mm), the value of A/B satisfies the following conditions: 1.3≤≤125 and 1.3 ≤ A/B ≤ 5 (40 mm/15 mm = 2.7) (Column 4 lines 20-39). Answer, 5, 2nd full paragraph. Applicant has not contested this finding. We conclude that the Examiner has made out a prima facie case of obviousness as to the subject matter of claims 1 and 16 at least to the extent of dimensioning Yamazaki’s absorption layer to be 40 mm x 15 mm and providing a ratio of the edges of 2.7. As we noted above, the dimensions of the absorption layer would not alter the principles of operation of the solar cell. Thus, it is within the level of ordinary skill in the art to choose the appropriate dimensions to achieve 4 Mizutani characterizes its disclosed invention as a “solar battery.” Mizutani, 1:5- 8. It is apparent, however, that Mizutani’s “solar battery” is a solar cell in that it converts solar energy into electrical energy. Mizutani, 1:9-12. Appeal 2011-007397 Application 11/596,572 5 the desired end use parameters of the solar cell. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Applicant argues that Mizutani does not disclose a lead electrode or anything that could be equated with a lead electrode. Brief, 5. The Examiner relied on Yamazaki for teaching the structural features of solar cells including lead electrodes. Answer, 4-5. The Examiner relied on Mizutani to show that solar cells meeting Applicant’s dimensional limitations were known in the art. Answer, 5, 8- 9, and 13. A prima facie case cannot be defeated by attacking references individually where the rejection is based on a combination of references. The references must be read for what they fairly teach in combination. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). Applicant also argues: there is no disclosure or suggestion in Yamazaki or Mizutani that the lead electrode (or "metal electrode" of Yamazaki) should extend in the "first direction" and not the "second direction" because Mizutani does not disclose or show a lead electrode and because Yamazaki does not disclose or show an orientation. Brief, 6 (emphasis added). Applicant’s claims 1 and 16, however, do not require that a lead electrode “extend in the ‘first direction’ and not the ‘second direction.’” In any event, the person having ordinary skill in the art would understand the principles of operation of the solar cell and would have expected that the solar cell would operate effectively as long as the orientation and dimensions of the lead electrode did not impede the flow of electrons exiting the first electrode after being generated by the absorption layer. Absent a showing of criticality in the orientation and dimensions of the lead electrodes, a lead electrode formed in the Appeal 2011-007397 Application 11/596,572 6 first direction corresponding to the long edge of the absorption layer would not patentably distinguish the claimed solar cells from those disclosed by Yamazaki. Unexpected Results Referring to its Table 1, Applicant argues that invention achieves unexpected results due to the dimensions of the absorption layer. Applicant has the burden of proving unexpected results inhere in the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Applicant’s proofs must be clear and convincing. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property.") The proofs must show that the superior results are “surprising or unexpected” to one of ordinary skill in the art when considered in the context of the prior art. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). It is not sufficient to show that results are obtained which merely differ from those obtained in the prior art. The difference must be shown to be an unexpected. In re D'Ancicco, 439 F.2d 1244, 1248 (1971). In other words, mere improvement in properties does not always suffice to show unexpected results.” Soni, 54 F.3d at 751. Additionally, The unexpected results relied upon also must be “different in kind and not merely in degree from results of the prior art.” In re Harris, 409 F.3d 1339, 1344 (2005). Applicant argues that Table 1 shows an over 35% improvement in efficiency compared to the Applicant’s comparative example. Brief, 8. While the table shows higher efficiency was achieved with ratios of 5 and 20 compared with a ratio of 1.2 for the comparative example, it has not been established that the difference in results relates to a difference in kind rather than degree. In other words, it has not been shown that Applicant’s solar cell works any differently that Appeal 2011-007397 Application 11/596,572 7 Yamazaki’s. Nor has it been established that the person of ordinary skill in the art would have considered the differences in the degree of increased efficiency to be unexpected. Applicant has presented only attorney argument that the increased degree of efficiency would have been considered unexpected to a person having ordinary skill in the art. Counsel’s argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Applicant has failed to provide clear and convincing evidence that the claimed ratios provide in an unexpectedly improved solar cell. The Examiner’s decisions rejecting claims 1 and 16 are affirmed. Other arguments We have considered applicant’s remaining arguments and find none that warrant reversal. Cf., Loughlin v. Ling, 684 F.3d 1289, 1295 (Fed. Cir. 2012). Claims 2-15, 17, and 18 With respect to claims 2, 4, 5, 9-15, and 17, rejected over the combined teachings of Yamazaki and Mizutani, and claims 3, 6-8, and 18, rejected over the combined teachings of Yamazaki, Mizutani, and Fujimori, applicant relies on the arguments it made with respect to claims 1 and 16 for patentability. Brief, 6 -7. Since applicant has not relied on the additional subject matter added by dependent claims 2-15, 17, and 18 as imparting patentability to those claims, we also affirm the rejection of those claims. DECISION The Examiner’s decisions rejecting claims 1-18 are affirmed. Appeal 2011-007397 Application 11/596,572 8 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 cam