Ex Parte Yamazaki et al

Patent Trial and Appeal Board

Jan 23, 2017

12793294 (P.T.A.B. Jan. 23, 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.
12/793,294 06/03/2010 Shunpei YAMAZAKI 12732-0658001 / US 12440 6393
7590 01/24/2017
John F. Hayden
FISH & RICHARDSON P.C.
11th Floor
1425 K Street, N.W.
Washington, DC 20005
EXAMINER
BAKHTIARI, NIKI
ART UNIT PAPER NUMBER
1757
MAIL DATE DELIVERY MODE
01/24/2017 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 SHUNPEI YAMAZAKI, SATOHIRO OKAMOTO, and
KAZUO NISHI
Appeal 2015-002429
Application 12/793,294
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and
MONTE T. SQUIRE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 1, 4—7, 10—13 and 15—17 under
35 U.S.C. § 103(a) over the combined prior art of at least Yokota (US
5,071,490 issued Dec. 10, 1991), Takeyama (US 2004/0144420 A1
published July 29, 2004), and Fischer (US 4,199,894 issued Apr. 29, 1980).2
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
1 According to the Appellants, the real party in interest is Semiconductor
Energy Laboratory Co., Ltd. (App. Br. 1).
2 The Examiner applied Winkeler in addition to the references applied to
claim 1 in the rejection of claims 7 and 10—12. In response, however,
Appellants rely upon the same arguments as made for claim 1 (App. Br. 5).
Appeal 2015-002429
Application 12/793,294
Claim 1 is illustrative of the claimed subject matter (emphasis added):
1. A photoelectric conversion device comprising:
a first cell having a photoelectric conversion function comprising:
a first conductive film;
a first photoelectric conversion layer over the first conductive
film; and
a second conductive film over the first photoelectric conversion
layer;
a second cell having a photoelectric conversion function over the first
cell, the second cell comprising:
a third conductive film;
a second photoelectric conversion layer over the third
conductive film; and
a fourth conductive film over the second photo electric
conversion layer; and
a structure body including a resin and conductive particles between
the first cell and the second cell, wherein the structure body is configured to
fix the second conductive film of the first cell and the third conductive film
of the second cell to each other and to electrically connect the second
conductive film of the first cell and the third conductive film of the second
cell to each other through the conductive particles,
wherein the first cell and the second cell are connected in series.
App. Br. 6 (Claims Appendix).
Appellants’ arguments are directed to the limitation “wherein the first
cell and the second cell are connected in series”, which is common to each
of independent claims 1, 7 and 13. Accordingly, all the claims stand or fall
together, even those claims separately rejected (e.g., App. Br. 5).
ANALYSIS
Upon consideration of the appeal record, including the Appellants’
position in this appeal as set forth on pages 3—5 of the Appeal Brief (as well
as pages 1—3 of the Reply Brief filed December 15, 2014), we affirm the
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Appeal 2015-002429
Application 12/793,294
Examiner’s rejections for the reasons stated by the Examiner (Final Office
Action mailed November 25, 2013, at 2—5; Examiner’s Answer mailed
October 17, 2014 at 3—9). We add the following primarily for emphasis.
Appellants’ sole argument is that there would have been no reason or
motivation to modify Yokota to connect the first and second cells in series
because Yokota’s invention involves connecting the cells in parallel in order
to minimize the thickness of the lower cell layer to overcome disadvantages
in the prior art which connected the cells in series (e.g., App. Br. 4; Reply
Br. 1 (Appellants state that modifying Yokota’s cell to be in series “directly
contradicts” the intended principle of operation)). Appellants’ allegation is
essentially that Yokota teaches away from the claimed invention.
These arguments fail to consider the applied prior art as a whole.
Whether a reference teaches away from a claimed invention is a question of
fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000).
As aptly pointed out by the Examiner, Fischer teaches advantages of
parallel and/or series connections of solar cells (Fischer, col. 2,11. 12—23;
Ans. 5 and 11). Fikewise, Yokota explicitly teaches that the prior art
included solar cells connected in series (col. 2,11. 30-40). Merck & Co., Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (all disclosures of
the prior art, including unpreferred embodiments, must be considered).
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Appeal 2015-002429
Application 12/793,294
Thus, Appellants have not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have used a series connection as exemplified in
Fischer for the cells of the Yokota/Takeyama combination in order to obtain
a known advantage of a series connection, even if at the expense of a benefit
of a parallel connection (see also, Ans. 11 (pointing out that parallel and/or
series connections are a known limited set of electrical interconnections an
artisan may select). Notably, the claims on appeal do not in any way limit
the thickness of the cell layers, which is an underlying benefit of Yokota’s
parallel connection icf, Yokota col 2,11. 35—40 to col. 3,11. 35—40). KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). See also, In
re Keller, 642 F.2d 413, 425—26 (CCPA 1981) (“The test for obviousness . .
. is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”); In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Thus, all of the Examiner’s § 103 rejections on appeal are 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)(1).
AFFIRMED
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