Ex Parte Chiba et al

Patent Trial and Appeal Board

Dec 16, 2015

12089410 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/089,410 04/07/2008
23117 7590 12/18/2015
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Yasuo Chiba
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
914-254 2585
EXAMINER
BERNIER, LINDSEY A
ART UNIT PAPER NUMBER
1755
NOTIFICATION DATE DELIVERY MODE
12/18/2015 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUO CHIBA, LIYUAN HAN,
NAOKI KOIDE and MASAMI KIDO
Appeal 2014-004139
Application 12/089 ,410
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-10. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 reads (emphasis added):
1. A photovoltaic cell comprising:
a photoelectric conversion layer comprising at least three
porous semiconductor layers with dye absorbed thereto;
a carrier transporting layer; and
a pair of electrodes, wherein
Appeal 2014-004139
Application 12/089 ,410
said at least three porous semiconductor layers of said
photoelectric conversion layer have a total haze ratio in a near
infrared region ranging from 60°/o to 95°/o.
The Examiner maintains the following rejections:
(a) claims 1-10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Chiba (US 6,677,516 B2, issued January 13, 2004); and
(b) claims 1-10 rejected on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claims 1-9 of Chiba.
ANALYSIS
The Prior Art Rejection Under 35 US.C. § 103 (a) (Rejection (a))
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art for the reasons
presented by the Examiner. We add the following for emphasis.
Independent Claim 1 is directed to a photovoltaic cell comprising a
photoelectric conversion layer comprising at least three porous
semiconductor layers where said at least three porous semiconductor layers
have a total haze ratio in a near infrared region ranging from 60% to 95%. 1
1 Appellants argue the claims 1-3, 7, and 10 together and present separate
arguments for dependent claims 4--6, 8, and 9. See Appeal Brief, generally.
In arguing claim 4, Appellants' arguments follow a line of argument
concerning an experimental comparison presented when discussing claim 1.
App. Br. 19. Thus, our initial discussion will focus on independent claim 1.
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Application 12/089 ,410
Appellants define the haze ratio in the near infrared region as meaning a
haze ratio in any one of wavelengths within the near infrared region from
780 run to 1200 nm. Spec. 9.
Claim 1
The Examiner found Chiba discloses a photovoltaic cell having a
photoelectric conversion layer (3) comprising a multilayered porous
semiconductor layer with a dye absorbed thereto; a carrier transporting layer
( 6); and a pair of electrodes (10, 20). Final Act. 2; Chiba Abstract, Figure 1,
col. 3, 1. 67---col. 4, 1. 7. The Examiner found Chiba does not explicitly
disclose that (a) the photoelectric conversion layer comprises at least three
porous semiconductor layers and (b) said at least three porous
semiconductor layers of said photoelectric conversion layer have a total haze
ratio in a near infrared region ranging from 60% to 95%. Final Act. 2.
As to (a), the Examiner found Chiba discloses that the porous
semiconductor layer can be a multilayer porous semiconductor layer. Final
Act. 2; Chiba col. 5, 11. 56-59, claims 1-5. The Examiner found it would
have been obvious to modify the porous semiconductor layer of Chiba so
that it comprises three porous semiconductor layers because Chiba suggests
a multilayer porous semiconductor layer would allow more specific tailoring
of the layers to different haze ratio values and could be designed to increase
the efficiency of the photovoltaic cell. Final Act. 2-3; Chiba col. 5, 1. 45-
col. 6, 1. 12.
Claims 5, 6, 8, and 9 will be addressed separately. However, claims 2--4, 7,
and 10 stand or fall with independent claim 1.
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Application 12/089 ,410
As to (b ), the Examiner found Chiba discloses providing a dye
sensitized photovoltaic cell capable of photovoltaic conversion of light of a
wide range of spectrum from the visible region to the near infrared light
region in the sunlight spectrum and additionally discloses using a dye that
can absorb light in the near infrared region. Final Act. 3; Chiba col. 2, 11.
43--48, col. 11, 11. 16-40. The Examiner found it would have been obvious
to one having ordinary skill in the art to modify the porous semiconductor
layer of Chiba to have a total haze ratio in a near infrared region ranging
from 60% to 95%, because a significant amount of the light incident on earth
from the sun is in the near infrared region and increasing the haze ratio in the
region of light absorption increases the solar cell conversion efficiency for
that wavelength. Final Act. 3; Chiba Table 1, col. 2, 11. 43--48.
Appellants argue Chiba's photoelectric conversion layer has only two
porous semiconductors layers while the claimed photoelectric conversion
layer has at least three layers which provide improved photoelectric
conversion efficiency. App. Br. 10-11.
We are unpersuaded by this argument. As noted by the Examiner,
Chiba discloses the photovoltaic cell can have first, second and subsequent
(a third or more) porous semiconductor photovoltaic structure. Ans. 1 O;
Chiba col. 5 11. 46-59, col. 611. 45--47, col. 6 11. 60-68. Thus, Appellants'
arguments are unavailing because it is well settled that a reference may be
relied upon for all that it would have reasonably suggested to one having
ordinary skill in the art, including non-preferred embodiments. Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("all disclosures
of the prior art, including unpreferred embodiments, must be considered")
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
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Application 12/089 ,410
Appellants argue Chiba is directed to dye-sensitized photovoltaic cells
with a porous photovoltaic layer comprising a haze ratio at a wavelength in
visible light region only and does not discuss or suggest haze ratios in the
near infrared region as defined in the Specification. App. Br. 9; Spec. 9.
We are unpersuaded by this argument. As noted by the Examiner,
Chiba expressly discloses providing a dye sensitized photovoltaic cell that
can conduct efficient photovoltaic conversion of light of a wide range of
spectrum from the visible light region to the near infrared light region
(emphasis added). Ans. 9; Chiba col. 2, 11. 32-50. The Examiner found
Chiba discloses a wavelength spectrum of 630-800 nm that overlaps
Appellants' disclosed infrared wavelength spectrum of 780-1200 nm. Ans.
15; Chiba col. 11, 11. 3 7--41. Thus, contrary to Appellants' argument, the
reference teaches improving the effectiveness of using light in both
wavelength regions. Chiba col. 11, 11. 3 2--41.
Appellants argue Chiba does not disclose or suggest total haze ratios
in a near infrared region ranging from 60% to 95% and that the Examiner's
rejection is based on impermissible hindsight. App. Br. 9, 18. In support of
this assertion, Appellants rely on the Declaration under 37 C.F.R. § 1.132 of
Yasuo Chiba. 2 App. Br. 13-16. The Declaration compares haze ratios for
Appellants' Example 16 (3-layer porous semiconductor structure) and
Chiba's Example 9 (2-layer porous semiconductor structure). Deel. Figure
1, i-fi-17-11. According to Declarant, the 2-layer porous semiconductor
structure of Chiba's Example 9 has a total haze ratio of less than 60% in a
near infrared region (not less than 780 nm) while the 3-layer semiconductor
2 The Declaration was entered into the record on December 13, 2010.
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Application 12/089 ,410
structure of Appellants' Example 16 has a total haze ratio of not less than
60% in a near infrared region. Deel. Figure 1.
We are unpersuaded by these arguments. First, the proferred
comparison in the Declaration is between different porous semiconductor
structures (3-layer versus 2-layer). App. Br. 14; Deel. iii! 8-9. Given that
Chiba discloses porous structures of more than two layers (Chiba col. 5, 11.
45---65), it does not appear the Declaration compares the claimed invention to
the closest prior art. Second, neither Appellants nor Declarant provide any
explanation as to why Chiba's Example 9 and Appellants' Example 16 were
selected for this comparison other than one having a 2-layer porous structure
while the other has a 3-layer structure. Neither provides an explanation why
each selected example is representative of the full scope of the respective
inventions or what impact the number of forming each porous
semiconductor structure would have. Thus, the proferred comparison is
insufficient to distinguish the claimed invention from the porous
semiconductor structure disclosed by Chiba.
In addition, we agree the Examiner's finding that Chiba recognizes
the critical significance of a haze ratio with a lower limit of 60% by teaching
the haze ratio above this lower limit of 60% results in increased conversion
efficiency. Ans. 12; Chiba Figure 2, col. 5, 11. 23--45. Chiba provides
sufficient guidance to increase the total haze ratio above 60% in the near
infrared wavelength region. Ans. 12; Chiba Figure 2, col. 5, 11. 23--45.
Appellants have not adequately addressed this finding by the Examiner.
Appellants argue the data in Table 4 of the Specification show
unexpected results that not less than 60% of the total haze ratio can provide
remarkably high conversion efficiency compared with less than 60% of the
total haze ratio (comparison between inventive Examples 5-18 and 20-24
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Application 12/089 ,410
having at least three porous semiconductor layers and Comparative
Examples 2--4 having at least three porous semiconductor layers). App. Br.
16-17; Spec. Table 4.
The burden of showing unexpected results rests on the person who
asserts them. Appellants may meet their burden by establishing that the
difference between the claimed invention and the closest prior art is an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
First, Appellants rely on Comparative Examples 2--4, all 3-layer
porous semiconductor structures, for comparison with inventive Examples
5-18 and 20-24, which include porous semiconductor structures of three or
more layers. Spec. Table 4. It is not clear that Comparative Examples 2--4
are representative of the closest prior art (i.e., Chiba). Appellants have
provided no explanation of how these comparative examples relate to Chiba
or compare to Chiba in terms of suspensions used to form the layers for the
porous semiconductor structure. Thus, Appellants have not adequately
established that Comparative Examples 2--4 are representative of the prior
art cited by the Examiner. Appellants have not adequately established that
the proferred comparison in Table 4 is against the closest prior art relative to
what is being claimed.
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Second, the data relied upon by Appellants to demonstrate unexpected
results are not commensurate with the scope of the claims because inventive
Examples 5-18, and 20-24 are exemplary of a total haze ratio primarily
above 80%, with only a single inventive Example at 67%. In addition,
Appellants are relying on the parameter of high conversion efficiency to
establish the unexpected results. The language of independent claim 1 does
not include any limitations with respect to this parameter. Thus, Appellants
have not adequately explained why this group of inventive Examples is
representative of the entire scope of the subject matter of claim 1.
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims.
Claims 5, 6, 8, and 9
With respect to Appellants' arguments addressing the rejection of
claims 5, 6, 8, and 9 (App. Br. 20-21 ), we are unpersuaded by these
arguments for the reasons presented by the Examiner. Ans. 17-19. We note
that Appellants' focus in these arguments is on Chiba's dye used in the
layers of the porous semiconductor structure. App. Br. 20-21. These
arguments do not address the Examiner's reasoning for rejecting these
claims. Ans. 17-19.
As a final comment, we note that Chiba is Appellants' own prior art
and Appellants are in the best position to explain the reference and
distinguish the claimed invention from Chiba. Appellants have not
adequately done so.
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Application 12/089 ,410
Accordingly, we affirm the Examiner's prior art rejection of claims 1-
10 under 35 U.S.C. § 103(a) (Rejections (a)) for the reasons given above and
presented by the Examiner.
The Nonstatutory Obviousness-Type Double Patenting Rejection
(Rejection (b))
We REVERSE.
We refer to the Examiner's Final Action for a complete statement of
this rejection. Final Act. 7-8.
An analysis analogous to an obviousness analysis under 35 U.S.C.
§ 103(a) comes into play during the step of determining the obviousness of
the "difference" between the claimed invention and the patented invention.
See Studiengesellschaft Kahle mbH v. N. Petrochemical Co., 784 F.2d 351,
355 (Fed. Cir. 1986); In re Langi, 759 F.2d 887, 892-93 (Fed. Cir. 1985).
The Examiner may use the patent's Specification as a dictionary to
determine the meaning of terms in the patent's claim. In re Vogel, 422 F.2d
438, 441(CCPA1970). However, the Examiner cannot use the patent's
Specification as though it were prior art. General Foods Corp. v.
Studiengesellschaft Kahle mbH, 972 F.2d 1272, 1281 (Fed. Cir. 1992).
While as noted above the prior patent's specification has limited use as prior
art in a double patenting rejection, this does not necessarily disqualify the
prior patent as prior art for an anticipation or obviousness rejection based on
the same patent under 35 U.S.C. §§ 102 or 103. In the instant case, the
Examiner's § 103 rejection reasonably relied upon Chiba to stand 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. See In re
Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992).
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On the other hand, in rejecting the appealed claims over Chiba in the
obviousness-type double patenting rejection, the Examiner improperly relied
exclusively on Chiba's disclosure as prior art to address limitations not
present in Chiba's claims 1-9. Final Act. 7-8.
Accordingly, we reverse the Examiner's decision rejecting claims 1-
10 under the judicially created doctrine of obviousness-type double
patenting.
ORDER
The Examiner's prior art rejection of claims 1-10 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner's rejection of claims 1-10 on the ground of
nonstatutory obviousness-type double patenting is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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