SolarWindow Technologies, Inc. et al.

Patent Trials and Appeals Board

Jan 11, 2022

2021001123 (P.T.A.B. Jan. 11, 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. 15/178,384 06/09/2016 Scott R. Hammond 5759.001US01 2689 21186 7590 01/11/2022 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER KANG, TAE-SIK ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT R. HAMMOND, ROSS LARSEN, DANA CROSBY OLSON, and ZBYSLAW OWCZARCZYK ____________ Appeal 2021-001123 Application 15/178,384 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 3-7, 10-15, 17-19, 21, 22, 24, and 25. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies SolarWindow Technologies, Inc. and Alliance for Sustainable Energy, LLC as the real parties in interest (Appeal Br. 1). Appeal 2021-001123 Application 15/178,384 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal: 1. A composition of matter, the composition of matter comprising a copolymer material including an acceptor-donor- acceptor moiety repeat unit, wherein the copolymer material comprises neighboring instances of the acceptor-donor-acceptor moiety repeat unit linked together by adjacent acceptor moieties; wherein the adjacent acceptor moieties each comprise a diketo-pyrrolo-pyrrole (DPP) monomer. (Appeal Br. 20, Claims App.) Independent claims 6 and 13 are each directed to an “organic photovoltaic device” comprising a composition of matter as recited in claim 1 with adjacent acceptor moieties comprising DPP monomer (Appeal Br. 21-23, Claims App.). Independent claim 19 is directed to a “method for fabricating an organic semiconductor material” which likewise recites “an acceptor-donor-acceptor repeat unit” with adjacent acceptor moieties comprising DPP monomer (Appeal Br. 24, Claims App.). Appeal 2021-001123 Application 15/178,384 3 REFERENCES The Examiner relied upon the following prior art: Name Reference Date Schumann et al. US 2016/0056397 A1 Feb. 25, 2016 Letian Dou et al. A Selenium-Substituted Low- Bandgap Polymer with Versatile Photovoltaic Applications, 25 Adv. Mater. 825-31 2013 Shu-Wei Chang et al. Cyclopentadithiophene- benzothiadiazole copolymers with permutations of repeating unit length and ratios: synthesis, optical and electrochemical properties and photovoltaic characteristics, 5 RSC Adv 107276-84 2015 Seongwon Yoon et al. Systematic optimization of low bandgap polymer/[6,6]-phenyl C70 butyric acid methyl ester blend photodiode via structural engineering, 35 Organic Electronics 17-23 2016 REJECTIONS ON APPEAL Claims 1, 3-7, 10-14, 17, and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Yoon in view of Chang (Final Act. 3). Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over Yoon in view of Chang and Schuman (Final Act. 9). Claims 19, 21, 22, 24, and 25 are rejected under 35 U.S.C. § 103 as unpatentable over Dou in view of Chang (Final Act. 10). Appeal 2021-001123 Application 15/178,384 4 OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s main argument focuses on the belief that Chang’s BT acceptor polymer chemical structure is so distinct from that of Yoon’s or Dou’s DPP acceptor polymer that one of ordinary skill in the art would not have combined their teachings so as to result in the claimed composition (Appeal Br. 7-18). Appellant contends that the Examiner erred in relying on Chang’s statement that its teachings of CPDT-BT donor-acceptor ratios may influence other D-A (donor-acceptor) ratios in other material systems (e.g., Appeal Br. 11). Appellant also contends that Chang disparages the donor- Appeal 2021-001123 Application 15/178,384 5 acceptor ratio of 1:2 relied upon by the Examiner (Appeal Br. 9). Finally, Appellant contends that the Examiner has not shown how one would have expected a lower electron density or lower band gap from the proposed change (Appeal Br. 12). These arguments are reiterated in the Reply Brief. Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claims, the applied prior art as a whole and the inferences that one of ordinary skill would have made, as aptly explained by the Examiner (Ans. 13-14). There is no dispute that but for explicitly teaching a donor-acceptor ratio that will result in “adjacent acceptor moieties each comprise a . . . (DPP) monomer” as recited in each independent claim, the composition of matter/copolymer material in the photovoltaic device of Yoon (or Dou for claim 19) encompasses the claimed composition of matter of claim 1 and photovoltaic device of claims 6 and 13, and the method of claim 19 (Dou). As pointed out by the Examiner, Yoon (and Dou) and Chang are each directed to a photovoltaic device having a conjugated polymer with donor- acceptor bulk heterojunction (Ans. 13). “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); Cf. In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the Appeal 2021-001123 Application 15/178,384 6 particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). Contrary to Appellant’s arguments, Chang does not teach away by disparaging a donor-acceptor ratio of 1:2 (e.g., Ans. 6-7). It is well established that a prior art reference must be considered in its entirety, i.e., as a whole, when determining if it would lead one of ordinary skill in the art away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches away from a claimed invention is a question of fact). Chang explicitly teaches that the donor-acceptor ratio is a result- effective variable, includes a ratio of 1:2, and teaches that this ratio may be adjusted in other materials as well (Chang, Abstract, col. 1 of p. 107277; e.g., Ans. 14). One of ordinary skill in the art would have readily appreciated that the donor-acceptor ratio of Yoon (or Dou) may likewise be adjusted so as to result in the claimed organic photovoltaic copolymer. Appellant has not explained sufficiently why the claimed subject matter is any more than the predictable use of a known workable donor-acceptor ratio in a photovoltaic copolymer as taught in Chang in the photovoltaic copolymer of Yoon (or Dou). Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” (quoting KSR, 550 U.S. at 402)). Appeal 2021-001123 Application 15/178,384 7 Under the flexible inquiry set forth by the Supreme Court, the USPTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Even if Appellant was correct that Chang disparages a 1:2 donor to acceptor ratio, one of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole that the use of any workable ratio as exemplified in the photovoltaic copolymer of Chang in Yoon’s or Dou’s photovoltaic copolymer would have been within the skill and creativity of one of ordinary skill in the art. Cf. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”). Appellant does not rely upon any evidence of unexpected results. To the extent that Appellant points to the Specification’s discussion of lower electron density and concomitant lower bandgaps (Appeal Br. 11 (cites to Spec. ¶ 26 but appears in Spec. ¶ 25 filed 6/9/2016)), the claims are not limited to any specific electron density and also are open-ended such that other materials and other donor-acceptor ratios are permitted so long as the recited copolymer linked by recited acceptor units is also present. In any event, it has been held that when, as is the case here, the Examiner establishes a reasonable basis that the products or processes claimed by the applicant and disclosed or suggested by the prior art appear to be the same or substantially similar, the burden is properly shifted to the applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977). Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement [in In re Wright] Appeal 2021-001123 Application 15/178,384 8 that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.” (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir. 1988). Appellant has not met this burden, especially in light of Chang’s teachings of various workable ranges for donor-acceptor ratios. Accordingly, weighing all the evidence in this appeal, we determine that the evidence of obviousness outweighs any evidence of nonobviousness and we sustain the Examiner’s rejections on appeal. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-7, 10-14, 17, 18 103 Yoon, Chang 1, 3-7, 10- 14, 17, 18 15 103 Yoon, Chang, Schuman 15 19, 21, 22, 24, 25 103 Dou, Chang 19, 21, 22, 24, 25 Overall Outcome 1, 3-7, 10- 15, 17-19, 21, 22, 24, 25 TIME PERIOD FOR RESPONSE 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)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED