OKINAWA INSTITUTE OF SCIENCE AND TECHNOLOGY SCHOOL CORPORATIONDownload PDFPatent Trials and Appeals BoardNov 25, 20202020002482 (P.T.A.B. Nov. 25, 2020) Copy Citation 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. Appeal 2020-002482 Application 15/503,780 2 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)). Appeal 2020-002482 Application 15/503,780 3 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. Appeal 2020-002482 Application 15/503,780 4 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 Appeal 2020-002482 Application 15/503,780 5 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- Appeal 2020-002482 Application 15/503,780 6 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 Appeal 2020-002482 Application 15/503,780 7 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. Appeal 2020-002482 Application 15/503,780 8 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 Copy with citationCopy as parenthetical citation