International Business Machines Corporation

Patent Trials and Appeals BoardJul 31, 2020

2019004959 (P.T.A.B. Jul. 31, 2020)

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. 15/467,969 03/23/2017 Lawrence A. Clevenger DE920090036US2 5682 135567 7590 07/31/2020 Kunzler, PC. - Poughkeepsie 50 W. Broadway 10th Floor Salt Lake City, UT 84101 EXAMINER TRINH, THANH TRUC ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 07/31/2020 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): docket@kunzlerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LAWRENCE A. CLEVENGER, RAINER KRAUSE, ZHENGWEN LI, GERD PFEIFFER, KEVIN PRETTYMAN, and BRIAN C. SAPP ____________ Appeal 2019-004959 Application 15/467,969 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8–19 of Application 15/467,969. Final Act. (May 3, 2018). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. We, however, reject all of the ’969 Application’s claims by relying upon findings of fact and 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies International Business Machines Corp. as the real party in interest. Appeal Br. 2. Appeal 2019-004959 Application 15/467,969 2 conclusions of law that differ from those that form the basis of the Examiner’s rejections. Accordingly, we designate this opinion as containing a new ground of rejection. I. BACKGROUND The ’969 Application describes photovoltaic cells, particularly a regeneration method for restoring the efficiency of photovoltaic cells. See Spec. ¶ 1. A common method of manufacturing photovoltaic modules involves the use of thin silicon semiconductor films, which are deposited upon a substrate. Id. ¶ 2. The ’969 Application describes increasing the efficiency of such photovoltaic modules. Id. ¶ 3. According to the ’969 Application, illuminating the photovoltaic cell decreases the cell’s efficiency, whereas annealing the cell recovers the degraded performance. Id. ¶ 43. Claims 8 and 9 are representative of the ’969 Application’s claims and are reproduced below from the Claims Appendix of the Appeal Brief. 8. An apparatus comprising: an illumination module that illuminates, during a manufacturing process, a photovoltaic cell to receive a time integrated irradiance, such that the cumulative power of electromagnetic radiation received by the photovoltaic cell is equivalent to at least 5 hours of solar illumination; and an annealing module that anneals, during the manufacturing process, the photovoltaic cell at a temperature above 90 degrees Celsius for a minimum of 10 minutes, wherein annealing the photovoltaic call further comprises the illumination module illuminating the photovoltaic cell during the annealing, the annealing in Appeal 2019-004959 Application 15/467,969 3 response to the illumination module illuminating the photovoltaic cell. 9. The apparatus of claim 8, wherein the illumination module illuminating the photovoltaic cell to receive a time integrated irradiance, such that the cumulative power of electromagnetic radiation received by the photovoltaic cell is equivalent to at least 5 hours of solar illumination comprises one of: the photovoltaic cell receiving a time integrated irradiance equivalent to at least 20 hours of solar illumination; the photovoltaic cell receiving a time integrated irradiance equivalent to at least 16 hours of solar illumination while being heated by the annealing module to at least 50 degrees Celsius; and the photovoltaic cell being irradiated in sunlight using a solar concentrator for at least 10 hours, and wherein the solar concentrator increases the irradiance of solar illumination on the photovoltaic cell by a factor of 2 to 5. Appeal Br. 14 (Claims App.) (emphasis added). II. REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 8–19 are rejected under 35 U.S.C. § 112, ¶ 2 as indefinite. Final Act. 3–4. 2 The Examiner has withdrawn the rejections of: (i) claim 15 under 35 U.S.C. § 112, ¶ 1, for failing to comply with the written description requirement, (ii) claim 9 under 35 U.S.C. 112, ¶ 2, as indefinite for providing insufficient antecedent basis for a limitation, and (iii) claims 8–19 for nonstatutory double patenting over claims 1–12 of U.S. Patent No. Appeal 2019-004959 Application 15/467,969 4 2. Claims 8–19 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Guha.3 Final Act. 5–7. 3. Claims 12, 18, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Guha and Webb.4 Final Act. 8–9. III. DISCUSSION A. Rejection of claims 8–19 under 35 U.S.C. § 112, ¶ 2 as indefinite. The Examiner rejected claims 8–19 as indefinite. Final Act. 3. The Examiner determined that claim 8—the sole independent claim—is indefinite because this claim recites “both an apparatus and the method steps of using the apparatus.” Final Act. 3. We cannot sustain the Examiner’s rejection. As an initial matter, we note that the Examiner’s rejection is based upon an incorrect statement of law. As the Federal Circuit has explained, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant persuasively argues that claim 8 recites structural claim elements for an apparatus: (i) an illumination module and (ii) an annealing module. Appeal Br. 8. Claim 8, furthermore, recites claim language that describes the functional capability 9,634,165 and claims 1–3 and 5–7 of co-pending U.S. Patent Application No. 15/467,972. Answer 3–4. 3 US 4,555,586, issued Nov. 26, 1985. 4 US 3,597,281, issued Aug. 3, 1971. Appeal 2019-004959 Application 15/467,969 5 of each of Appellant’s structural claim elements.5 See Schreiber, 128 F.3d at 1478; see also In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). We reverse this rejection on this basis alone. We also reverse this rejection because the Examiner erred by not construing claim 8 as invoking § 112, ¶ 6. When a claim limitation is recited in purely functional terms, the limitation may invoke the “means-plus-function” clause of 35 U.S.C. § 112, ¶ 6, even though “means for” does not appear in the claim. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). In such cases § 112, ¶ 6 may be applicable if the claim terms fail to recite sufficiently definite structure or recite functions without reciting sufficient structure for performing that function. Id. (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). In this case, claim 8 includes generic structural terms such as “apparatus” and “module.” Generic terms such as “mechanism,” “element,” “device,” and “module,” “typically do not connote sufficiently definite structure” and therefore may invoke § 112, ¶ 6. MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Williamson, 792 F.3d at 1350 (“‘Module’ 5 In rejecting claim 8 as indefinite, the Examiner relied upon In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); see Final Act. 3–4. These cases, however, are inapposite. See Katz, 639 F.3d at 1318 (the claims at issue in each of these cases were “directed to user actions, not system capabilities”). Unlike the claims found indefinite in those decisions, the functional language recited in claim 8 does not require a separate user to perform any method steps. Appeal 2019-004959 Application 15/467,969 6 is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6.”); see Manual of Patent Examining Procedure (MPEP) § 2181 (9th ed., June 2020). Claim 8, furthermore, recites illuminating and annealing functions without reciting sufficient structure for performing these functions. Therefore, the Examiner erred by not construing the claim elements set forth above under 35 U.S.C. § 112, ¶ 6. When a specification does not describe sufficient structure to perform the recited function of a means-plus-function claim element, the claim is properly rejected as indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA) or 35 U.S.C. § 112(b) (post-AIA): [I]f one employs means-plus-function language in a claim, one must set forth in the specification and adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc); see also In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997). We find that Figures 1–7 and paragraph 34 of the Specification provide support for the functions of the “illumination module” and the “annealing module” recited in the claims. The Figures and the identified disclosure, however, do not link or associate any structure with the recited “illumination module”6 in relation to the “annealing module.” Therefore, we reject claims 8–19 under 35 U.S.C. § 112, ¶ 2 as indefinite. 6 Appellant points to paragraphs 42 and 63 as providing written description support for the claimed “illumination module” illuminating with a light source, which provides electromagnetic radiation and simulated sunlight. Appeal Br. 6–7 (citing Spec. ¶ 63 (“[A] photovoltaic cell is illuminated such Appeal 2019-004959 Application 15/467,969 7 The Examiner also rejected claim 9 as indefinite because “claim 9 depends on claim 8 and recites the broad limitation ‘at least 50 degrees Celsius’ . . . , and the claim also recites ‘a temperature above 90 degrees Celsius’ . . . , which is the narrower statement of the range/limitation.” Final Act. 4. We consider the Examiner’s rejection of claim 9 and the other dependent claims in view of our conclusion that claim 8, properly interpreted, invokes § 112, ¶ 6. Claim 9 is a dependent claim drawn to the apparatus subject matter recited in claim 8. Thus, claim 9 in proper form must further limit the structural components in claim 8—namely the illumination module and the annealing module—for an apparatus to fall within the scope of claim 9. See 35 U.S.C. § 112, ¶ 4 (“[A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.”). Because claim 9 fails to set forth a further structural limitation of the apparatus subject matter of claim 8, claim 9 is in improper dependent form. See also Pfizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (when a claim relying on another claim “fails to ‘specify a further limitation of the subject matter’ of the [another] claim to which it refers because it is completely outside the scope of [the another claim,]” such claim is invalid under 35 U.S.C. § 112, ¶ 4). To the that the time integrated irradiance it receives from a light source is equivalent to five hours of solar illumination.”) (emphasis added)). The Specification’s paragraph 46 further describes a solar concentrator. In our view, however, the ’969 Application does not link or associate the described light source, solar concentrator, or any “illumination module” structurally with the claimed “annealing module.” Appeal 2019-004959 Application 15/467,969 8 extent claim 9 further limits each of the structural components recited in claim 8 by functional capability, it is not clear what structural features are encompassed by claim 8, but are not within the scope claim 9. Although dependent claims 12, 15, 18, and 19 further limit the apparatus subject matter of claim 8 structurally, dependent claims 9–11, 13, 14, 16, and 17 do not. We, therefore, reject claims 9–11, 13, 14, 16, and 17 under 35 U.S.C. § 112, ¶ 4 as being of improper dependent form. B. Rejections of Claims 8–19 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Guha and Claims 12, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over the combination of Guha and Webb We are unable to address Appellant’s arguments because the claims are indefinite. See A. Rejection of claims 8–19 under 35 U.S.C. § 112, ¶ 2 as indefinite, supra. Therefore, discerning the claims’ proper scope would require undue and improper speculation. See In re Aoyama, 656 F.3d 1293, 1298–99 (Fed. Cir. 2011) (explaining that a claim cannot be both indefinite and anticipated and refusing to review an anticipation rejection); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions.”). Furthermore, neither the Final Rejection nor the Examiner’s Answer applied 35 U.S.C. § 112, ¶ 6 either to claim construction or to the validity analysis. The failure to construe the ’969 Application’s claims properly is a second reason to reverse the rejections of claim 8–19 as anticipated or rendered obvious by the applied prior art. Appeal 2019-004959 Application 15/467,969 9 Thus, for procedural reasons only, we reverse the Examiner’s prior art rejections of claims 8–19. We emphasize that our reversal should not be interpreted as an expression of any opinion regarding the merits of the Examiner’s rejections pursuant to § 102(b) or § 103(a) as set forth in the Final Action and the Examiner’s Answer. If prosecution of the ’969 Application continues and the § 112, ¶ 2 rejection is overcome, the Examiner remains free to reject the claims under § 102(b) as anticipated by or, in the alternative, under § 103(a) as unpatentable over Guha; and under § 103(a) as unpatentable over the combination of Guha and Webb, if such rejections are appropriate. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 8–19 112, ¶ 2 Indefiniteness 8–19 8–19 9–19 112, ¶ 4 Improper dependent form 9–11, 13, 14, 16, 17 8–19 102(b), 103(a) Guha 8–19 12, 18, 19 103(a) Guha, Webb 12, 18, 19 Overall Outcome 8–19 As explained above, although we cannot sustain the rejections of claims 8–19 as asserted by the Examiner, we reject claims 8–19 as indefinite and claims 9–11, 13, 14, 16, and 17 as being of improper dependent form. To protect Appellant’s procedural rights, we designate our opinion as setting forth a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section Appeal 2019-004959 Application 15/467,969 10 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, [A]ppellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. REVERSED; NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b)