OKINAWA INSTITUTE OF SCIENCE AND TECHNOLOGY SCHOOL CORPORATION

Patent Trials and Appeals Board

Nov 25, 2020

2020002482 (P.T.A.B. Nov. 25, 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.
15/503,780 02/14/2017 Yabing QI P170146US00 5099
38834 7590 11/25/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
BRATLAND JR, KENNETH A
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YABING QI and MATTHEW RYAN LEYDEN

Appeal 2020-002482
Application 15/503,780
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 24–30 and 39–43.2,3 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—i.e., “OKINAWA INSTITUTE OF SCIENCE AND
TECHNOLOGY SCHOOL CORPORATION” (Application Data Sheet
filed February 14, 2017 at 5), which is also identified as the real party in
interest (Appeal Brief filed November 6, 2019 (“Appeal Br.”) at 1).
2 See Appeal Br. 5–36; Reply Brief filed February 6, 2020 (“Reply Br.”) at
1–17; Non-Final Office Action entered June 24, 2019 (“Non-Final Act.”) at
2–25; Examiner’s Answer entered December 23, 2019 (“Ans.”) at 3–10.
3 We heard oral arguments from the Appellant’s representative on
November 17, 2020.
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I. BACKGROUND
The subject matter on appeal relates to a system based on
low-pressure chemical vapor deposition for fabricating perovskite films
(Specification filed February 14, 2017 (“Spec.”) ¶ 1). Representative claim
24, the sole independent claim on appeal, is reproduced from the Claims
Appendix to the Appeal Brief, as follows:
24. A system for fabricating a perovskite film, the
system comprising:
a housing for use as a furnace, the housing having a closed
hollow structure elongated longitudinally,
an inlet portion and an outlet portion on the housing, the
inlet portion and the output portion being configured to input and
output gases, respectively, and the inlet portion being configured
to be adjusted for inputting a gas into the housing;
a single organic halide source, the single organic halide
source being provided in an evaporation unit in a first section of
the housing, and the evaporation unit being configured to
generate an organic halide gas from the organic halide source;
one or more substrates provided in a second section of the
housing, each of the one or more substrates being pre-deposited
with a metal halide compound, the second section being
downstream of the first section along a flow path of the gas in
the housing;
a first temperature control unit coupled to the first section
of the housing, the first temperature control unit being configured
to control a first temperature for the organic halide source; and
a second temperature control unit coupled to the second
section of the housing, the second temperature control unit being
configured to control a second temperature for the one or more
substrates pre-deposited with the metal halide compound,
wherein the evaporation unit is configured to generate the
organic halide gas by evaporating the organic halide source at
the first temperature without a chemical reaction between the
organic halide source and the gas inputted into the housing.
(Appeal Br. 37–38 (emphasis added)).
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Application 15/503,780

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II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103 as follows:
A. Claims 24, 25, 27, 28, and 39–43 as unpatentable over Maeda4
in view of Park et al.5 (“Park”) and further in view of Chen et
al.6 (“Chen”);
B. Claims 29 and 30 as unpatentable over Maeda in view of Park
and further in view of Chen, and still further in view of Aoki;7
and
C. Claim 26 as unpatentable over Maeda in view of Park and
further in view of Chen, and still further in view of Schowalter
et al.8 (“Schowalter”).
(Ans. 3–10; Non-Final Act. 2–25).
III. DISCUSSION
1. The Examiner’s Position
Under 35 U.S.C. § 112(f), the Examiner interprets “evaporation unit”
recited in the claims as a means-plus-function limitation, which is shown in
the Inventors’ disclosure as an evaporation unit 212 that may be in the form
of a crucible configured to contain an organic halide source material (Non-
Final Act. 5 (referring to Figure 2 and ¶ 34 of the published Application (US
2017/0268128 A1, published Sept. 21, 2017)). In addition, the Examiner

4 US 5,769,942, issued June 23, 1998.
5 US 2007/0151509 A1, published July 5, 2007.
6 Chen et al., Planar Heterojunction Perovskite Solar Cells via Vapor-
Assisted Solution Process, 136 J. AM. CHEM. SOC. 622–25 (2014).
7 US 5,199,994, issued April 6, 1993.
8 US 2007/0101932 A1, published May 10, 2007.
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states that the “single organic halide source” and the “one or more substrates
being pre-deposited with a metal halide compound” limitations recited in
“claim 24 do not carry patentable weight since they relate either to the article
worked upon or to the mode of operation of the apparatus rather than its
actual structure” (Non-Final Act. 9; see also Ans. 4).
With these interpretations, the Examiner finds that Maeda describes
most of the limitations recited in claim 24 but “does not explicitly teach that
the source material is provided in an evaporation unit contained in the first
section of the housing, the evaporation unit being configured to generate a
gas from the source” (Non-Final Act. 6–9). The Examiner finds further,
however, that “Park teaches an analogous embodiment of a source material
contained within an apparatus for film growth” in which the source material
itself is provided within a crucible disposed within a housing (id. at 9).
Based on these findings, the Examiner asserts:
Thus, in view of the teachings of Park, an ordinary artisan would
readily recognize that the source material (28) utilized within the
horizontal chamber (21) in Fig. 16 of Maeda may be contained
within a crucible which therefore functions as the claimed
evaporation unit with the motivation for doing so being to, for
example, provide a means for easily inserting, removing, and
replenishing the source material within the crystal growth
system. It is noted that since the crucible (430) itself is merely
configured to hold the source material while being heated by the
energy source (410) without itself reacting with either the source
material or the carrier gas, the crucible may therefore be
considered as an evaporation unit which is configured to generate
a source gas by facilitating evaporating the source material.
(Id.).
Alternatively, the Examiner states that “[e]ven if it is assumed
arguendo that the [claims require the] use of an organic halide source to
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produce an organic halide gas and a substrate pre-deposited with a metal
halide, the use of said products in the apparatus of Maeda would have been
obvious in view of the teachings of Chen” (id. at 10). Specifically, the
Examiner finds that “Chen teaches that perovskite thin films may be grown
by a vapor-assisted solution process (VASP) in which a PbI2 layer is initially
formed on a substrate” and “[t]he PbI2 layer is then reacted with gaseous
species sublimated from a CH3NH3I powder heated to 150 °C in an inert N2
atmosphere for a predetermined interval in order to form a perovskite thin
film” (id.). The Examiner concludes:
Accordingly, an ordinary artisan would look to the teachings of
Maeda and readily recognize that the epitaxial growth apparatus
in Fig. 16 of Maeda may be utilized for the growth of a perovskite
thin film according to the method of Chen by providing CH3NH3I
powder as the source material (28) in the first area and the
substrate containing the PbI2 layer as the growth substrate (29)
in the second area and adjust the relative temperature of each
region as well as the flow of the desired inert carrier gas in order
to form a perovskite thin film on the substrate (29). In this case
carrying out the growth method of Chen using the apparatus of
Maeda would therefore involve nothing more than the use of a
known device for its intended use. The combination of prior art
elements according to known methods to yield predictable
results has been held to support a prima facie determination of
obviousness. All the claimed elements are known in the prior art
and one skilled in the art could combine the elements as claimed
by known methods with no change in their respective functions,
with the combination yielding nothing more than predictable
results to one of ordinary skill in the art.
(Id. at 10–11 (emphasis added; internal citations omitted)).
2. The Appellant’s Contentions
The Appellant contends that the Examiner’s claim interpretations of
the “single organic halide source” and the “one or more substrates being pre-
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deposited with a metal halide compound,” as recited in claim 24, are
erroneous because these limitations are not merely directed to the material
worked upon by the claimed system or to a mode of operation but rather
necessary structural elements of the claimed system needed to produce
perovskite films (Appeal Br. 10, 14). As for the Examiner’s combination of
Maeda with Chen, the Appellant contends, inter alia, that Maeda’s teachings
concerning an apparatus for epitaxial growth of a heterogeneous reaction
product derived from SiI2 and a Si material source on a substrate are
unrelated to those pertaining to perovskite films as disclosed in Chen and as
recited in the claims on appeal (id. at 15–17). The Appellant argues that,
therefore, a person having ordinary skill in the art would not have combined
the references in the manner claimed by the Inventors and that the rejection
is based on impermissible hindsight (id. at 19–26).
3. Opinion
For the reasons given in the Appeal Brief, we agree with the
Appellant that the Examiner’s rejections are not well-founded. We add the
following for emphasis.
In contrast to the factual circumstances in the legal decisions cited in
the Answer (Ans. 4–5), the “single organic halide source,” which is provided
in the “evaporation unit in a first section of the housing,” and the “one or
more substrates being pre-deposited with a metal halide compound,” which
are provided in “second section of the housing,” are positively recited as part
of the structures that make up the system specified in claim 24. Therefore,
based on a plain reading of the claim language as would be understood by a
person skilled in the art, we find no basis to conclude that these limitations
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merely recite the materials worked upon by the claimed system or a mode of
operation.
As for the Examiner’s combination of Maeda and Chen, we agree
with the Appellant that Maeda’s apparatus relates to a system designed for a
completely different type of epitaxial growth based on a different reaction
than that contemplated in Chen and in the claimed invention (compare
Maeda, col. 3, ll. 29–48, with Chen 622). Other than impermissible
hindsight reasoning, the Examiner fails to offer a sufficient reason with
some rational underpinning to support a conclusion that a person having
ordinary skill in the art would have combined the references in the manner
claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In this regard, “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id.
Because the Examiner does not rely on any of the remaining
references to cure the deficiencies in the proposed combination of Maeda
and Chen common to all three rejections, we do not sustain the rejections as
to any of the claims on appeal.

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IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24, 25, 27, 28,
39–43
103 Maeda, Park, Chen 24, 25, 27,
28, 39–43
29, 30 103 Maeda, Park, Chen,
Aoki
29, 30
26 103 Maeda, Park, Chen,
Schowalter
26
Overall
Outcome
24–30, 39–43

REVERSED