First Solar, Inc.

Patent Trials and Appeals Board

Jan 4, 2022

2021000768 (P.T.A.B. Jan. 4, 2022)

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. 15/586,505 05/04/2017 Yong Liang 1-59261 6696 109944 7590 01/04/2022 MacMillan, Sobanski and Todd, LLC - FIRST SOLAR One Maritime Plaza, 5th Floor 720 Water St. Toledo, OH 43604 EXAMINER GONZALEZ RAMOS, MAYLA ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 01/04/2022 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): MST@mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YONG LIANG, JINBO CAO, and WILLIAM HULLINGER Appeal 2021-000768 Application 15/586,505 Technology Center 1700 BEFORE TERRY J. OWENS, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-6, 8-11, 13-17, 19, and 21-24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as First Solar, Inc. Appeal Br. 3. Appeal 2021-000768 Application 15/586,505 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A photovoltaic device, comprising: a transparent conductive oxide layer; a semiconducting layer; a buffer layer interposed between the transparent conductive oxide layer and the semiconducting layer; and an interlayer comprising a metal species disposed directly in contact with the buffer layer between the transparent conductive oxide layer and the semiconducting layer, wherein: the metal species comprises gadolinium, beryllium, calcium, barium, strontium, scandium, yttrium, hafnium, lutetium, lanthanum, or combinations thereof, an average atomic concentration of the metal species in the interlayer is in a range from about 10 percent to about 99 percent, and the interlayer has a thickness in a range from about 0.2 nanometers to about 200 nanometers. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sekiguchi US 2012/0090678 A1 Apr. 19, 2012 Rojo US 2012/0132268 A1 May 31, 2012 Lemmon US 2013/0146133 A1 Jun. 13, 2013 Cao US 2013/0192667 A1 Aug. 1, 2013 Barnes US 2015/0047699 A1 Feb. 19, 2015 Appeal 2021-000768 Application 15/586,505 3 REJECTIONS 1. Claims 1-6, 8, 10-11, 14-17, and 22-24 are rejected under pre- AlA 35 U.S.C. § 103(a) as being unpatentable over Rojo in view of Barnes. 2. Claims 9 and 13 are rejected under pre-AlA 35 U.S.C. § 103(a) as being unpatentable over Rojo in view of Barnes as applied to claims 1-6, 8, 1--11, 14-17, and 22-24 above, and further in view of Lemmon. 3. Claim 19 is rejected under pre-AlA 35 U.S.C. § 103(a) as being unpatentable over Rojo in view of Barnes as applied to claims 1-6, 8, 10-11, 14-17, and 22-24 above, and further in view of Cao. 4. Claim 21 is rejected under pre-AlA 35 U.S.C. § 103(a) as being unpatentable over Rojo in view of Barnes as applied to claims 1-6, 8, 10-11, 14-17, and 22-24 above, and further in view of Sekiguchi. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. Appeal 2021-000768 Application 15/586,505 4 Rejection 1 We refer to the Examiner’s statement of the rejection as set forth on pages 3-16 of the Final Office Action. Therein, the Examiner finds, inter alia, that Rojo teaches an interlayer, but does not teach an interlayer comprising the presently claimed metal species, and does not teach an interlayer having a thickness in a range from about 0.2 nm to about 200 nm as recited in claim 1. Final Act. 9. The Examiner relies upon Barnes for teaching this aspect of the claimed subject matter. Final Act. 9-10. Appellant argues, inter alia, that the combination of Barnes with Rojo does not support a prima facie case of obviousness because the teachings of Barnes do not provide suggestion or motivation to combine the disclosures of Barnes and Rojo to produce the claimed structure for the reasons stated in the Appeal Brief. Appeal Br. 6-8. We are persuaded by this line of argument. The Examiner’s stated position in the record does not adequately indicate where is the suggestion in the applied art to modify buffer layer 700 of Rojo (which the Examiner equates with Appellant’s claimed interlayer) to be made of the claimed metal species and to have the claimed thickness as the layer according to Barnes, for the reasons provided by Appellant in the record in view of the differing structures as discussed by Appellant on pages 6-8 of the Appeal Brief. On page 7 of the Appeal Brief, Appellant states that the Examiner erred in interpreting the layers described by Rojo and Barnes in this regard, given the differing structures therein, and therefore the combination fails to suggest the claimed subject matter. We agree and note that setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with Appeal 2021-000768 Application 15/586,505 5 an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In view of the above, we reverse Rejection 1. We also reverse Rejections 2-4 for the same reasons (the additionally applied references in these rejections are not relied upon by the Examiner to cure the stated deficiencies of Rejection 1). CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8, 10- 11, 14-17, 22-24 103(a) Rojo, Barnes 1-6, 8, 10, 11, 14-17, 22-24 9, 13 103(a) Rojo, Barnes, Lemmon 9, 13 19 103(a) Rojo, Barnes, Cao 19 21 103(a) Rojo, Barnes, Sekiguchi 21 Overall Outcome 1-6, 8-11, 13-17, 19, 21-24 REVERSED