Ex Parte Clevenger et al

Patent Trial and Appeal Board

Sep 12, 2016

12887121 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/887, 121
82509 7590
Kunzler Law Group
50 W. Broadway
10th Floor
FILING DATE
09/21/2010
09/14/2016
Salt Lake City, UT 84101
FIRST NAMED INVENTOR
Lawrence A. Clevenger
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.
DE920090036US 1 1886
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1755
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
docket@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LA WREN CE A. CLEVENGER, RAINER KRAUSE,
ZHENGWEN LI, GERD PFEIFFER, KEVIN PRETTYMAN,
BRIAN C. SAPP
Appeal2015-000199
Application 12/887, 121 1
Technology Center 1700
Before TERRY J. OWENS, RICHARD M. LEBOVITZ, and
JULIA HEANEY, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims drawn to methods of illuminating and
annealing a photovoltaic cell. Appellants appeal from the Examiner's final
rejection of the claims under 35 U.S.C. § 112 and 35 U.S.C. § 103. We have
jurisdiction under 35 U.S.C. § 134. The rejections are reversed.
STATEMENT OF CASE
The '121 Application describes a method of restoring photovoltaic
cell efficiency comprising steps of illuminating and annealing the cell. The
step of illuminating degrades the photovoltaic cell and the step of annealing
1 "The '121 Application."
Appeal2015-000199
Application 12/887,121
recovers the degraded performance. '121 Application, if 13. Annealing is
accomplished by heating the photovoltaic cell at a temperature above 90
degrees Celsius for a minimum of ten minutes. Id., iii! 6, 8.
Claims 1---6, 9, 10, and 25-28 are pending and stand finally rejected
by the Examiner as follows:
1. Claims 1---6, 9, 10, and 25-28 under 35 U.S.C. § 112, first
paragraph, for failing to meet the written description requirement. Final Rej.
3.
2. Claim 1---6, 9, 10, and 25-28 under 35 U.S.C. § 112, second
paragraph, for being indefinite. Final Rej. 6.
3. Claims 1---6, 9, 10, and 25-27 under 35 U.S.C. § 103(a) as obvious
in view of Guha et al., (US 4,555,586, issued Nov. 26, 1985; hereinafter
"Guha"); and Osawa, et al., (JP 59-211287 A, published Nov. 30, 1984;
hereinafter "Osawa"). Final Rej. 8.
4. Claim 28 under 35 U.S.C. § 103(a) as obvious in view of Guha,
Osawa, and King et al., (US 3,496,029, issued Feb. 17, 1970; hereinafter
"King"). Final Rej. 14.
Claim 1, the only independent claim on appeal, is reproduced below:
1. A method comprising:
illuminating, during a manufacturing process, a
photovoltaic cell to receive a time integrated irradiance, such
that the cumulative power of electromagnetic radiation received
by the photovoltaic cell is equivalent to at least 5 hours of solar
illumination; and
annealing, during the manufacturing process, the
photovoltaic cell at a temperature above 90 degrees Celsius for
a minimum of 10 minutes, wherein annealing the photovoltaic
cell further comprises illuminating the photovoltaic cell during
the annealing, the annealing in response to illuminating the
photovoltaic cell.
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Application 12/887,121
1. WRITTEN DESCRIPTION REJECTION
The Examiner rejected the claims as lacking a written description of
"annealing during the manufacturing process, the photovoltaic cell at a
temperature above 90 degrees Celsius for a minimum of 10 minutes wherein
annealing the photovoltaic cell further comprises illuminating the
photovoltaic cell during the annealing." Final Rej. 3. The Examiner stated
that there is "no description describing the illuminating and the annealing
steps to restore a photovoltaic cell during a manufacturing process in the
originally filed disclosure." Id. The Examiner found that the disclosure in
paragraphs 9, 7 4, and 7 6 of the '121 Application describes annealing and
illuminating of photovoltaic cells in a manufactured state, but not during the
manufacturing process. Id. The rejection turns on the proper interpretation
of "manufacturing process."
During patent examination, the "PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in
applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
In this case, the '121 Application describes "applying an aging or bum
in of the [photovoltaic] cell at the end of the manufacturing line." '121
Application, i-f 7 4. The Application also discloses that an aging chamber can
be provided "after production" where the "degraded performance can now
be recovered using thermal treatment during light exposure, to accelerate
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Application 12/887,121
aging." Id., if 75. In view of this disclosure, the broadest reasonable
interpretation of "manufacturing process" is one which includes illuminating
and annealing steps after the photovoltaic cell has been made, but before it
has been packaged for shipment to a customer. For this reason, Appellants'
construction that "recitation of illumination and annealing during a
manufacturing process refers to a manufacturing process prior to shipment to
a customer instead of illumination and annealing while the photovoltaic cell
is in use by a consumer" is supported by a preponderance of the evidence.
Appeal Br. 13.
"[A] claim interpretation that excludes a preferred embodiment from
the scope of the claim is rarely, if ever, correct." On-Line Techs., Inc. v.
Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).
This principle applies here because the disclosure in paragraphs 7 4 and 7 5 of
the '121 Application is the only guidance in how the illuminating and
annealing steps are conducted by the manufacturer. The Examiner's narrow
interpretation of "manufacturing process" to require illuminating and
annealing prior to completion of the photovoltaic cell excludes the only
direction in the Application on how to recover degraded performance during
photovoltaic manufacture and thus is not the broadest most reasonable
interpretation of this term.
The Examiner also stated that the written description is defective
because the originally filed Specification does not describe two illumination
steps as recited in claim 1. Final Rej. 4. We do not agree. Original claim 1
recites separate illuminating and annealing steps. Original claim 3, which
depends from claim 1, recites "wherein annealing the photovoltaic cell
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Application 12/887,121
further comprises illuminating the photovoltaic cell." Thus, claim 3 clearly
supports the description of two illuminating steps.
The Examiner also stated that the written description is deficient
because the '121 Application does not describe "annealing the photovoltaic
cell about 90 degrees Celsius for a minimum of 10 minutes." Final Rej. 4.
To satisfy the written description requirement, the inventor "must also
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In describing the
claimed invention, there is no requirement that the wording be identical to
that used in the specification as long as there is sufficient disclosure to show
one of skill in the art that the inventor "invented what is claimed." Union
Oil Co. of California v. Atlantic Ric/1field Co., 208 F.3d 989, 997 (Fed. Cir.
2000). Thus, so long as a person "of ordinary skill in the art would have
understood the inventor to have been in possession of the claimed invention
at the time of filing, even if every nuance of the claims is not explicitly
described in the specification, then the adequate written description
requirement is met." In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
As pointed out by Appellants, the '121 Application contains express
disclosure of illuminating during the annealing step. '121 Application i-fi-f 19,
78. While these disclosures perform annealing above 130 degrees Celsius,
the Application discloses annealing at temperatures above 90 degrees
Celsius in response to illuminating (i-f 8) and not all the illuminating while
annealing methods described in the Application disclose the annealing
temperature (i-fi-f 80, 81 ). The Application also states that the "described
embodiments are to be considered in all respects only as illustrative and not
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restrictive." Id., if 89. Original claim 3 expressly recites annealing at 90
degrees Celsius. Thus, this evidence establishes the inventors were in
possession of the recited limitation of annealing at 90 degrees Celsius while
illuminating.
The Examiner also found the claims 2, 3, and 26 lacked a written
description (Final Rej. 4--5), but it appears the rejection was based on the
same rationale as for claim 1 that we found deficient.
Claim 9
Claim 9 recites "wherein the photovoltaic cell is illuminated at the end
of a manufacturing process of the photovoltaic cell such that the
photovoltaic cell produces electricity when illuminated." The Examiner
stated there is no support for this claim. Answer 11. All this claim requires
is that a manufactured photovoltaic cell produces electricity after
illumination, its normal function. Original claim 9 has the same language.
It is not clear how the '121 Application would lack support for the specific
purpose for which the photovoltaic cell is manufactured.
Claims 25 and 26
With respect to claims 25 and 26, the Examiner finds the claims are
not supported by the original disclosure because the recited time and
temperature limitations are "combining random steps from different
methods." Answer 12-13. We do not agree. The temperature limitations
recited in claims 25 and 26 were part of original claims 2 and 6, each which
depends from claim 1.
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Summary
For the foregoing reasons, we reverse the written description rejection
of claims 1---6, 9, 10, and 25-28.
2. § 112 SECOND PARAGRAPH REJECTION
The Examiner rejected the claims under as indefinite under 35 U.S.C.
§ 112, second paragraph, because:
The meet [sic, metes] and bound of the manufacturing process
cannot be determined, e.g. what is the start and stop of the
"manufacturing process" in the claim. It is unclear exactly what
manufacturing process is being referred to, e.g. a manufacturing
process of a photovoltaic cell or a manufacturing process of
something else.
Final Rej. i-f 6.
We do not agree. First, for the reasons discussed above, we construed
manufacturing process to mean illuminating while annealing at any time
prior to shipment of a photovoltaic cell to a customer instead of illumination
and annealing while the photovoltaic cell is in use by a consumer.
Consequently, the claim scope is definite. Second, while the claim does not
expressly state that manufacturing process is of a photovoltaic cell, this
would be understood from the claim and the '121 Application since the
photovoltaic cell is the point of reference.
Claim 1 recites "illuminating, during a manufacturing process, a
photovoltaic cell to receive a time integrated irradiance, such that the
cumulative power of electromagnetic radiation received by the photovoltaic
cell is equivalent to at least 5 hours of solar illumination." The Examiner
states that this phrase is indefinite because the photovoltaic cell must be
"complete" while the claim reads on an incomplete cell. Answer 14. The
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Examiner also stated that the claim is indefinite because the illumination
value is open-ended and could read on any value. Id.
It is unclear why the state of manufacture of the photovoltaic cell
makes the claim indefinite. The claim simply calls for at least 5 hours of
solar illumination during the manufacturing process. As far as the value of
at least 5 hours, the skilled worker would understand that the claimed
process covers operable values of electromagnetic radiation during the
manufacturing process.
The Examiner rejected claims 25-28 as indefinite because they refer
to an "apparatus" and there is no apparatus in claim 1 from which they
depend. Answer 16. As indicated by Appellants, this is an obvious
typographical error which is readily overcome by making an appropriate
amendment upon return of this case to the Examiner.
The rejections under§ 112, second paragraph, are reversed.
3, 4. OBVIOUSNESS REJECTIONS
The Examiner found that Guha "discloses a method of evaluating
photodegradation in photovoltaic cells comprising" illuminating and then
annealing a photovoltaic cell. Final Rej. 8. The Examiner found that Guha
does not "does not specifically disclose the annealing the photovoltaic cell
comprising illuminating the photovoltaic cell during the annealing." Id., 9
(emphasis added). The Examiner also found that Guha "does not disclose
the evaluation comprising steps of illuminating and annealing above being
performed during a manufacturing process." Id. However, the Examiner
found that Guha teaches "discloses the photovoltaic cell is produced to use
the sunlight to anneal the photovoltaic cell" while it is operational. Id. The
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Examiner determined that it would have been obvious to one of ordinary
skill in the art to modify Guha by illuminating the photovoltaic cell at the
same time because Guha "explicitly suggests illuminating the photovoltaic
cell during the annealing or illuminating and annealing the photovoltaic cell
at the same time." Id., IO. The Examiner further determined it would have
been obvious to perform the annealing and illuminating steps during the
manufacturing process because "Osawa et al. teaches evaluating the product
(or photovoltaic cell) during the manufacturing process would efficiently
manufacture the product in good productivity and improved characteristic."
Id., 9.
We agree with Appellants that the Examiner did not provide an
adequate reason for determining that claim 1 would have been obvious to
one of ordinary skill in the art. Guha teaches evaluating photovoltaic
material during manufacture by first degrading samples with white light and
then annealing at 100°C, where the efficacy of each step is evaluated by
measuring photoconductivity. Guha, col. 12, 11. 34--40. The illumination is
not performed during annealing, but it is carried out as a subsequent separate
step. Guha also teaches that its photovoltaic cells can be annealed while the
cell is operational, e.g., on a rooftop in tropical or sub-tropical environment,
while exposed to sunlight. Id., col. 16, 11. 57---68. However, there is no
suggestion in Guha that this step be performed during the evaluation
process.
Osawa is a general teaching about evaluating a product during
manufacture, but it does not guide one of ordinary skill in the art on how
such evaluation and testing would be performed. Guha specifically teaches
evaluating photovoltaic material by degrading it with light, measuring
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photoconductivity, annealing the material to restore its efficiency, and then
measuring photoconductivity again. Id., col. 12, 11. 34--40. The step in
which illuminating and annealing are performed at the same time is not to
evaluate photoconductivity, but it is done by the consumer to anneal defects
when the cell is operational. Id. at col. 16, 11. 58-68. The Examiner did not
provide a reason for performing the annealing and illuminating steps carried
out during the operation of the photovoltaic cell in a manufacturing process
as an evaluation step, particularly when Guha teaches measuring the extent
of photoconductivity after illuminating and after annealing to evaluate the
efficacy of the photovoltaic material.
The obviousness rejection of independent claim 1, and dependent
claims 2---6, 9, 10, and 25-28, is reversed.
REVERSED
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