The Regents of the University of California et al.

Patent Trials and Appeals BoardMar 12, 2021

2020001533 (P.T.A.B. Mar. 12, 2021)

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. 14/954,131 11/30/2015 Hengbin Wang 30794.582-US-U1 9222 22462 7590 03/12/2021 GATES & COOPER LLP (General) HOWARD HUGHES CENTER 6060 CENTER DRIVE SUITE 830 LOS ANGELES, CA 90045 EXAMINER CHERN, CHRISTINA ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 03/12/2021 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): docketing-us@gates-cooper.com gates-cooper@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HENGBIN WANG, RAM SESHADRI, MICHAEL CHABINYC, ANNA LEHNER, and CHRISTOPHER LIMAN ____________ Appeal 2020-001533 Application 14/954,131 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–4, 7, 8, 10–16, 19, 20, and 22–25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision refers to the Specification filed Nov. 30, 2015 (“Spec.”); Final Office Action dated Mar. 11, 2019 (“Final Act.”); Amended Appeal Brief filed Sept. 26, 2019 (“Appeal Br.”); Examiner’s Answer dated Oct. 29, 2019 (“Ans.”); and Reply Brief filed Dec. 19, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Regents of the University of California and The Mitsubishi Chemical Corporation, as the real parties in interest. Appeal Br. 2. Appeal 2020-001533 Application 14/954,131 2 CLAIMED SUBJECT MATTER The invention relates to optoelectronic devices comprising a semiconducting active layer between a first electrode and a second electrode, including optoelectronic devices having a solid state thin film active layer comprising semiconducting bismuth halide complex materials, and a method of forming an optoelectronic devices. Spec. 1:11–12, 2:10–16, 14:1–3; Abstract. Claim 14 illustrates the subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 14. A method of forming a solid state thin film optoelectronic device, the method comprising: depositing an active layer between a first electrode and a second electrode, wherein the active layer comprises a semiconducting material of the formula AaBbMmXx, wherein: A represents a monovalent inorganic cation, a monovalent organic cation, or mixture of different monovalent organic or inorganic cations; B represents a divalent inorganic cation, a divalent organic cation, or mixture of different divalent organic or inorganic cations; M represents Bi3+ or Sb3+; X represents a monovalent halide anion, or mixture of different monovalent halide anions; and a, b represent 0 or any positive numbers, m, x represent any positive numbers, and a + 2b + 3m = x. Claims Appendix 3–4. Appeal 2020-001533 Application 14/954,131 3 REFERENCES The Examiner relies on the following prior art as evidence in rejecting the claims on appeal: Name Reference Date Munteanu et al. (“Munteanu”) US 2008/0092945 A1 Apr. 24, 2008 Peresh et al., K2(Rb2,Cs2,TI2)TeBr6(I6) and Rb3(Cs3)Sb2(Bi2)Br9(I9) Perovskite Compounds, Inorganic Materials, Vol. 47, No. 2, 208–212 (2011) (“Peresh”). Koh et al., Formamidinium-Containing Metal-Halide: An Alternative Material for Near-IR Absorption Perovskite Solar Cells, J. Phys. Chem. C, 118, 16458–16462 (2013) (“Koh”). REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections: 1. Claims 1–4, 7, 8, 10, 11, 13–16, 19, 20, 22, 23, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Peresh in view of Koh (“Rejection 1”). Final Act. 3. 2. Claims 12 and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Peresh in view of Koh as applied to claims 2 and 15 above, and further in view of Munteanu (“Rejection 2”). Final Act. 7–8. OPINION Having considered the respective positions the Examiner and Appellant advance in light of this appeal record, we affirm the Examiner’s rejections based essentially on the factual findings and reasons the Examiner provides in the Answer and Final Office Action. We add the following primarily for emphasis. Appeal 2020-001533 Application 14/954,131 4 Rejection 1 The Examiner rejects claims 1–4, 7, 8, 10, 11, 13–16, 19, 20, 22, 23, and 25 under § 103 as obvious over Peresh in view of Koh. Final Act. 3. Appellant presents argument for the patentability of independent claims 1 and 14 as a group but does not present separate argument for the patentability of any of the remaining claims subject to the Examiner’s rejection. Appeal Br. 3, 7. We select claim 14 as representative and claims 1–4, 7, 8, 10, 11, 13, 15, 16, 19, 20, 22, 23, and 25 stand or fall with claim 14. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines the combination of Peresh and Koh suggests a method satisfying the limitations of claim 14 and would have rendered the claim obvious. Final Act. 3–5. The Examiner relies on Peresh for disclosing the majority of the limitations but finds Peresh does not expressly disclose the semiconductor material is an active layer used in an optoelectronic solid state thin film device and wherein the semiconductor active layer is deposited between a first electrode and a second electrode. Id. at 3–4 (citing Peresh 208, 210, 211, Tables 1, 2). The Examiner relies on Koh for those teachings. The Examiner finds Koh discloses an optoelectronic solid state thin film device and a method of forming a solid state thin film device comprising a perovskite semiconductor active layer deposited between a first electrode and a second electrode wherein the active layer comprises an organic-inorganic perovskite material. Id. (citing Koh 16458, 16459, 16460, Fig. 2), Based on the above findings, the Examiner determines: [I]t would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Appeal 2020-001533 Application 14/954,131 5 the perovskite of Peresh in any electronics application in which electrical and optical properties are advantageous, including as an active layer used in an optoelectronic solid state thin film device, wherein the semiconductor active layer is deposited between a first electrode and a second electrode in the device and method of Peresh. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Id. at 4–5. Appellant argues the Examiner’s rejection should be reversed because Koh teaches away from the claimed invention. Appeal Br. 3; Reply Br. 3. Appellant contends that, in contrast to the claimed invention, which requires including bismuth/antimony perovskite materials having the structure A3B2X9, Koh teaches lead perovskite materials having the structure ABX3, and fails to teach or suggest any bismuth/antimony materials. Appeal Br. 3, 5. Appellant further contends Koh’s disclosure encourages using perovskite materials having band gap values that are as close as possible to a band gap of ~1.4 eV and teaches away from using perovskite materials having band gap values higher than, for example, 1.55 eV. Id. at 4–5. Appellant also contends that because Koh teaches away from using perovskite materials having band gap values higher than 1.55 eV and the bismuth/antimony perovskite materials Peresh discloses all exhibit bandgap values between 1.80 and 2.48 eV, a person of ordinary skill in the art would not have been motivated to combine Koh and Peresh to arrive at the claimed invention. Id. at 5–6; Reply Br. 5. We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection based on the factual findings and reasons the Appeal 2020-001533 Application 14/954,131 6 Examiner provides at pages 3–6 of the Answer and pages 3–5 of the Final Office Action, which a preponderance of the evidence supports. Peresh, Abstract, 208, 210, 211, Tables 1, 2; Koh, Abstract, 16458, 16459, 16460, Fig. 2. Rather, on this appeal record, we agree with the Examiner that the combination of Peresh and Koh suggests the limitations of claim 14 and would have rendered the claim obvious. Appellant’s argument that Koh teaches away from the claimed invention because Koh teaches lead perovskite materials and fails to teach or suggest any bismuth/antimony materials (Appeal Br. 3, 5) is not persuasive because it is premised on what Koh teaches individually, and not the combined teachings of Peresh in view of Koh as a whole, and what the combined teachings of the references would have suggested to one of ordinary skill in the art. One cannot show non-obviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner does not rely upon Koh for teaching the claimed bismuth/antimony perovskite materials. Rather, as the Examiner explains (Ans. 4; Final Act. 3–4), the Examiner relies upon Peresh as the primary reference for teaching the claimed perovskite material composition including bismuth/antimony perovskite materials having the structure A3B2X9, and that the perovskite materials Peresh discloses are known to be used in electronics and possess electrical and optical properties. Peresh 208, 210, 211, Tables 1, 2. As the Examiner further finds and explains (Ans. 4–5; Final Act. 4), Koh is relied upon as a secondary reference for teaching using a perovskite material as an active layer in an optoelectronic solid state thin film device Appeal 2020-001533 Application 14/954,131 7 and wherein the semiconductor active layer is deposited between a first electrode and a second electrode. Koh, Abstract, 16458–16460, Fig. 2(a). Appellant’s argument is also misplaced and unpersuasive because, as the Examiner explains (Ans. 4), the argument appears to be based on bodily incorporating Koh’s method into the method of Peresh, which is not the proper analysis for determining obviousness based on the combination of Peresh and Koh. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). We also do not find persuasive Appellant’s argument that Koh teaches away from using perovskite materials having band gap values higher than 1.55 eV (Appeal Br. 4–5) and because the bismuth/antimony perovskite materials Peresh discloses all exhibit bandgap values between 1.80 and 2.48 eV, a person of ordinary skill in the art would not have been motivated to combine Koh and Peresh (id. at 5–6). Contrary to what Appellant argues (Appeal Br. 4–5), the fact that Koh discusses use of perovskite materials having certain band gap values and reasons it may be preferable for its devices, without more, does not constitute a teaching away. See In re Susi, 440 F.2d 442, 445–46 (CCPA 1971) (explaining that disclosure of particular preferred embodiments does not teach away from a prior art reference’s broader disclosure). That is, Koh’s disclosures regarding certain preferred embodiments or examples of perovskite materials having band gap values closer to ~1.4 eV do not negate or teach away from Koh’s broader disclosure regarding using a perovskite material as an active layer in an optoelectronic solid state thin film device and wherein the semiconductor active layer is deposited between Appeal 2020-001533 Application 14/954,131 8 a first electrode and a second electrode. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a prior art reference’s disclosure must be considered for all that it teaches, including “the inferences which one skilled in the art would reasonably be expected to draw therefrom”); see also In re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away where the prior art’s disclosure “does not criticize, discredit, or otherwise discourage the solution claimed”). The Examiner also provides a reasonable basis, which a preponderance of the evidence supports, why one of ordinary skill in the art would have had reason to combine the teachings of Peresh and Koh to arrive at the claimed invention and had a reasonable expectation of success. Ans. 4–6; Final Act. 4–5; see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appellant’s disagreement as to the Examiner’s factual findings and reasons for combining the references, without more, is insufficient to establish reversible error. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as to the existence of factual disputes do not amount to a developed argument.”). Appellant’s argument that a person of ordinary skill in the art would not have been motivated to combine Koh and Peresh (Appeal Br. 5–6) is not persuasive of reversible error because it appears to be based on Appellant’s misinterpretation of the Examiner’s stated rejection. In contrast to the Examiner’s stated rejection, which is based on whether it would have been Appeal 2020-001533 Application 14/954,131 9 obvious to use the perovskite material of Peresh as an active layer in an optoelectronic solid state thin film device, we agree with the Examiner (Ans. 5–6) that Appellant appears to interpret the rejection as replacing the perovskite material of Koh with the perovskite material of Peresh. Moreover, as the Examiner finds (Ans. 4, 6), Appellant does not identify or direct us to persuasive evidence that the perovskite material of Peresh cannot be used in an optoelectronic solid state thin film device as an active layer in the manner claimed, as the Examiner proposes; or as to why one of ordinary skill in the art would not have had reasonable expectation of success in doing so, particularly in view of the fact Peresh discloses perovskite materials are known to be used in electronics and possess electrical and optical properties (Peresh 208, 210, 211). Accordingly, we affirm the Examiner’s rejection of claims 1–4, 7, 8, 10, 11, 13–16, 19, 20, 22, 23, and 25 under 35 U.S.C. § 103 as obvious over Peresh and Koh. Rejection 2 In response to the Examiner’s rejection of claims 12 and 24 under 35 U.S.C. § 103 as obvious over Peresh, Koh, and Munteanu (Rejection 2), Appellant does not present any additional substantive arguments. Rather, Appellant relies on the arguments it previously discusses and presents above in response to the Examiner’s rejection of claims 1 and 14 under 35 U.S.C § 103 as obvious over Peresh and Koh. See Appeal Br. 7 (“[D]ependent claims 2–13, and 15–25 are submitted to be allowable over Koh, Peresh and Munteanu in the same manner, because they are dependent on independent Appeal 2020-001533 Application 14/954,131 10 claims 1 and 14, respectively, and thus contain all the limitations of the independent claims.”). Thus, based on the factual findings and reasoning the Examiner provides in this appeal record, and for essentially the same reasons we discuss above for affirming the Examiner’s rejection of claims 1–4, 7, 8, 10, 11, 13–16, 19, 20, 22, 23, and 25 as obvious over Peresh and Koh (Rejection 1), we affirm the Examiner’s rejection of claims 12 and 24 as obvious over Peresh, Koh, and Munteanu (Rejection 2). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7, 8, 10, 11, 13–16, 19, 20, 22, 23, 25 103 Peresh, Koh 1–4, 7, 8, 10, 11, 13–16, 19, 20, 22, 23, 25 12, 24 103 Peresh, Koh, Munteanu 12, 24 Overall Outcome 1–4, 7, 8, 10–16, 19, 20, 22–25 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). AFFIRMED