Ex Parte Smith

Patent Trial and Appeal Board

May 23, 2017

14040018 (P.T.A.B. May. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10031.011800 1059
EXAMINER
LEONG, SUSAN DANG
ART UNIT PAPER NUMBER
1756
MAIL DATE DELIVERY MODE
14/040,018 09/27/2013
74254 7590 05/23/2017
Okamoto & Benedicto LLP
P.O. Box 641330
San Jose, CA 95164-1330
David D. SMITH
05/23/2017 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 DAVID. D. SMITH1
Appeal 2016-006167
Application 13/467,082
Technology Center 1700
Before BEVERLY A. FRANKIN, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON -APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner’s Final
Action, dated July 30, 2015, rejecting claims 1—8 and 17—20. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant identifies the real party in interest as SunPower Corporation.
App. Br. 1.
Appeal 2016-006167
Application 13/467,082
Independent claim 1 is illustrative of the subject matter on appeal and
is reproduced below:
1. A solar cell comprising:
an epitaxial silicon layer;
a first doped oxide on the epitaxial silicon layer;
a silicon nitride layer that is directly on the first doped
oxide; and
a first metal contact on a backside of the solar cell,
wherein the first metal contact is electrically coupled to a first
doped region of the solar cell via a first contact opening through
the silicon nitride layer and the first doped oxide.
Appellant requests review of the Examiner’s rejection of claims 1—8
and 17—20 under 35 U.S.C. § 103(a) as unpatentable over Gee (US
2012/0000511 Al, published January 5, 2012) and Kim (US 2013/0048067
Al, published February 28, 2013). App. Br. 2; Final Act. 3.
Appellant relies on the same arguments in addressing the rejection of
independent claims 1 and 17. See generally Appeal Brief. Appellant further
relies on these same arguments in addressing the rejections of dependent
claim 2—8 and 18—20. Id. at 5—6. Accordingly, we select claim 1 as
representative of the subject matter before us on appeal. Claims 2—8 and
17—20 stand or fall with claim 1.
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Appeal 2016-006167
Application 13/467,082
OPINION
The Prior Art Rejection
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of representative claim 1
for the reasons presented by the Examiner in the Final Action and the
Answer. We add the following for emphasis.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 3^4.
Appellant does not dispute that the combined teachings of Gee and
Kim teach a solar cell structure having a silicon nitride layer located
between an oxide layer and a metal contact. See generally Appeal Brief.
Instead, Appellant argues (1) Kim discloses a silicon nitride layer
(antireflective coating) that is applied to an undoped oxide layer and not
directly on a doped oxide layer as required by the subject matter of claim 1
(App. Br. 3; Reply Br. 2; Kim Figure 4, || 39-42) and (2) application of the
silicon nitride layer as taught by Kim on Gee’s solar cell structure would
result in application of the silicon nitride layer over an interlayer dielectric
(IFD) layer that is required by Gee and, thus, not directly on an oxide layer
as claimed (App. Br. 4—5; Gee 177).
We find these arguments unavailing for the reasons presented by the
Examiner. Ans. 9—13.
Moreover, Appellant’s argument (1) is premised on bodily
incorporation. It is well established that the obviousness inquiry does not
ask “whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In reEtter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
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Appeal 2016-006167
Application 13/467,082
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”).
With respect to argument (1), Kim discloses as known in the prior art
to apply a silicon nitride layer, not only on the epitaxial silicon layer as
disclosed by Gee (Gee 176), but also on the oxide layer located on the
backside of the solar cell structure (Kim Figures 4—5, 39-42). While
Appellant argues the differences between the oxide layers of Gee and Kim in
terms of the presence or lack thereof of dopants (App. Br. 3), Appellant has
not provided an adequate technical explanation why the presence of dopants
in the oxide layer would have made the use of the silicon nitride layer taught
by Kim unsuitable for Gee’s doped oxide layer.
With respect to argument (2), Appellant’s assertion that Gee’s solar
cell structure requires the presence of an ILD layer that would prevent
application of a silicon nitride layer directly on an oxide layer is at best
based on an alternative, perhaps preferred, embodiment disclosed by Gee. It
is well settled that a reference may be relied upon for all that it discloses,
including non-preferred embodiments. Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art,
including unpreferred embodiments, must be considered” (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976))). The disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). As recognized by the Examiner, Gee discloses one
embodiment where an ILD might optionally be printed over the metallization
layer and back contacts to provide electrical isolation in a module assembly
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Appeal 2016-006167
Application 13/467,082
(emphasis added). Ans. 12; Gee 48, 77. Given this disclosure, Appellant
has directed us to no portion of Gee that supports the stated assertion that
Gee’s solar cell structure requires the presence of an ILD on the metal. That
is, Appellant has not directed us to any portion of Gee that contravenes the
broader disclosure of the reference relied upon by the Examiner. Ans. 12.
Thus, Appellant has not pointed to error in the Examiner’s conclusion of
obviousness.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1—
8 and 17—20 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner’s prior art rejection of claims 1—8 and 17—20 under 35 U.S.C.
§ 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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