Ex Parte Bonucci et al

Patent Trial and Appeal Board

Nov 27, 2017

13509593 (P.T.A.B. Nov. 27, 2017)

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.
13/509,593 05/14/2012 Antonio Bonucci P730-US 9233
72932 7590
Steinfl + Bruno LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
11/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO BONUCCI, ROBERTO MACCHI,
and ROBERTO GI ANN ANT ONIO
Appeal 2017-010135
Application 13/509,593
Technology Center 1700
Before CHRISTOPHER C. KENNEDY, JULIA HEANEY,
and JEFFREY R. SNAY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—7, 9, 10, and 15 of Application
13/509,593. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This Decision refers to the Specification filed May 11, 2012 (“Spec.”),
Final Office Action dated Oct. 19, 2016 (“Final Act.”), Appeal Brief filed
April 11, 2017(“App. Br.”), Examiner’s Answer dated June 9, 2017
(“Ans.”), and Reply Brief filed July 31, 2017 (“Reply Br.”).
2 Appellants identify the real party in interest as SAES Getters S.P.A. App.
Br. 2.
Appeal 2017-010135
Application 13/509,593
BACKGROUND
The subject matter on appeal relates to a dye-sensitized solar cell.
App. Br. 3. The cell has a sandwich structure; a pair of electrodes are
separated by an electrolytic solution and by a metal oxide layer coated with a
layer of a photosensitizing dye. Id.', Spec. 1:16—18. According to the
Specification, the particle morphology of the metal oxide layer affects both
light diffusion and transmission, as well as efficiency of energy conversion.
App. Br. 3, citing Spec. 2:25—26, 28—30. Appellants seek to improve the
performance of the dye-sensitized solar cell by finding “a suitable
compromise between the need for light diffusion, which requires larger
diameters, and the need for maximizing the surface area, which requires a
nanometric size.” App. Br. 3, citing Spec. 3:18—20.
Claim 1, the sole independent claim, is reproduced below with
disputed terms italicized:
1. A dye sensitized solar cell comprising a pair of electrodes
serving as anode and cathode, respectively, between which an
electrolytic solution is arranged, said anode comprising a
supporting member on which a metal oxide layer comprising a
mixture of sintered powders of titanium dioxide and
nanozeolites is arranged,
wherein the nanozeolites are finely and uniformly
dispersed, and
wherein the average particle size of the powders of
titanium dioxide is in the range from 3 to 30 nm and at least ten
percent of the nanozeolites, with respect to the total number of
the powders of nanozeolites, have an average diameter particle
size in the range from 230 to 320 nm.
App. Br. 29 (Claims App’x.).
2
Appeal 2017-010135
Application 13/509,593
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1—7 and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kang.3 Final Act. 2—5.
2. Claims 1—7 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kang. Final Act. 7—11.
3. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kang and Beckenbaugh.4
Final Act. 6—7, 11—12.
4. Claims 1—7 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kang and Atienzar.5 Final
Act. 12-16.
5. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kang, Atienzar, and
Beckenbaugh. Final Act. 16—17.
DISCUSSION
Anticipation Rejection
Appellants argue claims 1,3, and 4, and do not present separate
argument for dependent claims 2, 5—7, and 15. App. Br. 7—13. We therefore
limit our discussion to claims 1, 3, and 4. We sustain the rejection for the
3 Man Gu Kang, Enhanced Photocurrent or Fu)II)-Dye Sensitized Solar
Cells by Incorporation of Titanium Silicalite-2 in HO2 Film, 23 Bull.
Korean Chem. 140 (2002) (“Kang”).
4 US 2007/0102040 Al, published May 10, 2007.
5 Pedro Atienzar, Titanium-Containing Zeolites and Microporous Molecular
Sieves as Photovoltaic Solar Cells, 8 Chem. Phys. Chem. 1115—1119 (2007)
(“Atienzar”).
3
Appeal 2017-010135
Application 13/509,593
reasons expressed by the Examiner in the Final Office Action and Answer,
which we adopt as our own. We add the following primarily for emphasis.
Appellants argue that Kang does not anticipate claims 1, 3, or 4
because it is missing the claimed elements of a “powder of nanozeolite,”
“the nanozeolites are finely and uniformly dispersed,” and “an average
particle size in the range from 230 to 320 nm” for the powders of
nanozeolites. App. Br. 6—14. Appellants argue that the Examiner failed to
give “ordinary and customary meaning” to those claim terms. Id. at 6.
In determining an issue of claim construction, “the PTO must give
claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Under that standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
forth in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
In determining the broadest reasonable interpretation of “powder,” we
note that the Specification does not provide a definition for the term, nor do
Appellants provide a contention with regard to its ordinary meaning. App.
Br. 6—7. Appellants merely argue that the Examiner’s construction is
unreasonably broad because the Examiner finds that Kang’s TS-2 clusters
read on the claimed powders of nanozeolite. Id. This conclusory argument
is not persuasive because Appellants do not explain why a person of
ordinary skill in the art would not consider the term “powder” to encompass
4
Appeal 2017-010135
Application 13/509,593
clusters of nanometer-sized particles, such as the TS-2 clusters of Kang. See
In re Baxter TravenolLabs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not
the function of this court to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).
With regard to “the nanozeolites are finely and uniformly dispersed,”
Appellants rely on the Specification at page 6, lines 15—23 as supporting
their argument that the term must be interpreted consistent with the
Specification. App. Br. 9. The paragraph of the Specification on which
Appellants rely, however, does not provide a definition for “finely and
uniformly dispersed,” nor does it describe the structure of nanozeolites that
are “finely and uniformly dispersed.” Spec. 6:15—23. Rather, it describes a
specific thermal treatment of nanozeolites in a mixture with metal oxide that
results in the nanozeolites being “finely and uniformly dispersed.” Id.
Moreover, Appellants’ reliance on MPEP 2113 is misplaced, because
claim 1 is not a product by process claim. The manufacturing steps
described in Specification at page 6, lines 15—23 do not limit our
interpretation of “the nanozeolites are finely and uniformly dispersed.” See
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[ajbsent claim language
carrying a narrow meaning, the PTO should only limit the claim based on
the specification or prosecution history when those sources expressly
disclaim the broader definition.”)
Appellants’ arguments concerning interpretation of “the nanozeolites
are finely and uniformly dispersed” are not persuasive of reversible error in
the Examiner’s finding that Kang’s TS-2 nanozeolites read on the “finely
and uniformly dispersed” nanozeolites recited in claim 1. The Examiner’s
findings that Kang describes its TS-2 nanozeolite as being in a “mixed film
electrode,” which scatters light due to the TS-2 particles dispersed in the
5
Appeal 2017-010135
Application 13/509,593
film, and further describes processing by adding TS-2 nanozeolite particles
to a “TiCE colloid comprised colloidal solution” (Final Act. 4, citing Kang
140; Ans. 19) are supported by Kang and well-reasoned. Appellants, on the
other hand, do not provide any explanation why Kang’s TS-2 clusters would
not read on the “finely and uniformly dispersed” nanozeolites of claim 1.
With regard to the limitations “an average diameter particle size” in
claim 1 and “average particle size” as recited in claims 3 and 4, the
Examiner determines that the broadest reasonable interpretation of “particle
size” is “a size, or dimension, of a particle.” Final Act. 3. Appellants argue
that “the plain meaning of the term ‘particle size’ and ‘average particle size’
should be interpreted as an equivalent or averaged equivalent diameter,
rather than simply ‘a size’ of a particle.” App. Br. 13. Appellants further
argue that if particle size were interpreted simply as “size of a particle” as
asserted by the Examiner, it would be ambiguous and non-representative for
non-spherical or irregular-shaped particles. Id. at 12—13. Appellants do not
direct us to any evidence in support of these arguments,6 and the
Specification does not provide a special definition of “particle size” or
6 Appellants present new argument in their Reply Brief concerning a
dictionary definition of “particle size” which could have been, but was not,
presented in the Appeal Brief. See Reply Br. 4. Appellants have not shown
good cause as to why we should consider the new argument, especially
considering that the Examiner did not have an opportunity to address it. Ex
parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative opinion) (“When
new issues have been raised by the Appellant but not addressed by the
Examiner, the Board, unless good cause is shown, will not consider those
new issues.”). Accordingly, we decline to consider the new argument raised
in the Reply Brief.
6
Appeal 2017-010135
Application 13/509,593
discuss particle size in relation to particle shape. For these reasons,
Appellants’ arguments concerning the interpretation of “particle size” are
not persuasive.
Therefore, applying a broadest reasonable interpretation of the claim
terms disputed by Appellants, as discussed above, we determine a
preponderance of the evidence supports the Examiner’s conclusion of
anticipation.
Obviousness Rejections
Rejection 2 is based on the Examiner’s alternative interpretation of the
term “particle size” and determines unpatentability based on Kang alone.
Ans. 7. Having adopted the Examiner’s interpretation of “particle size” set
forth in the anticipation rejection, we need not reach Rejection 2.
With regard to Rejections 3 and 5, Appellants do not present
substantive argument concerning Beckenbaugh, upon which the Examiner
relies in those rejections. Accordingly, claims 9 and 10 fall with claim 1.
See In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the prior
art”).
Rejection 4 is based on the Examiner’s determination, for the sake of
compact prosecution, that if the claim term “particle size” were understood to
imply a structure narrower than “a size, or dimension, of a particle,” it would
have been obvious to a person of ordinary skill in the art to have selected the
300 nm zeolite material described in Atienzar for use in Kang, because it
would have involved selection of a known zeolite based on its suitability for
its intended purpose, i.e., a porous electrode in a dye-sensitized solar cell.
7
Appeal 2017-010135
Application 13/509,593
Ans. 15. Appellants argue that a person of ordinary skill in the art would not
have been motivated to modify Kang with Atienzar’s zeolite because
Atienzar states that “The photoresponse is quite independent of the zeolite
pore dimensions or particle size.” App. Br. 26, citing Atienzar, Abstract.
This argument is not persuasive of reversible error because Appellants do not
provide meaningful analysis as to why that single sentence in Atienzar would
lead away from a combination with Kang. We therefore sustain the
Examiner’s obviousness rejection in Rejection 4.
SUMMARY
We affirm the rejection of claims 1—7 and 15 under 35 U.S.C.
§ 102(b).
We affirm the rejections of claims 1—7, 9, 10, and 15 as unpatentable
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
8