Ex Parte Haag et al

Patent Trials and Appeals Board

May 1, 2019

13572964 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/572,964 08/13/2012
134130 7590
Lieberman & Brandsdorfer
802 Still Creek Lane
Gaithersburg, MD 20878
05/01/2019
FIRST NAMED INVENTOR
Michael Haag
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.
DE920120023US 1 4394
EXAMINER
HORTON, DUJUAN A
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
05/01/2019 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 MICHAEL HAAG, RUEDIGER KELLMANN, and
MARKUS SCHMIDT
Appeal2018-003789
Application 13/572,964
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek relief from the Examiner's final rejection of
claims 1, 3, 6-12, 23-27, 29, and 30 under 35 U.S.C. § 103(a). Appeal
Br. 5, 9-28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify International Business Machines Corporation as the
real party in interest. Appeal Br. 3.
Appeal2018-003789
Application 13/572,964
STATEMENT OF THE CASE
Appellants' application is titled "Manufacture of a Solar Module."
Appellants describe their invention as comprising a method for
manufacturing a contact grid embedded in a photovoltaic cell, and a
photovoltaic cell produced by the process. Spec. ,-J 3. Claim 1 is illustrative
of the subject matter and is reproduced below:
A method comprising:
pre-forming a contact grid into first and second substrates
of a photovoltaic cell, including embedding a first optical
channel, with a first cross section, into a first side of the first
substrate, and a second optical channel, with a second cross
section, into a first side of the second substrate;
aligning an electrical contact within and in
communication with each optical channel, including:
aligning a first electrical contact, with a third cross
section, within and in communication with the first
optical channel, the first cross section of the first optical
channel and third cross section of the first electrical
contact are different, wherein the alignment of the first
electrical contact forms a first void within the first optical
channel, and the first void extending lineally
uninterrupted with respect to the first optical channel, and
continuously across oppositely disposed channel walls;
and
aligning a second electrical contact, with a fourth
cross section, within and in communication with the
second optical channel, the second cross section of the
second optical channel and fourth cross section of the
second electrical contact are different, wherein the
alignment of the-second electrical contact forms a second
void within the first optical channel, and the second void
extending lineally uninterrupted with respect to the
second optical channel, and continuously across
oppositely disposed channel walls;
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Application 13/572,964
securing a first side of an active layer to the first side of
the first substrate and a second side of the active layer to the
first side of the second substrate, including placing the first and
second electrical contacts in electrical communication with the
active layer.
OPINION
Claims 1, 3, 6--9, 11, 23-27, and 30
The Examiner rejects claims 1, 3, 6-9, 11, 23-27, and 30 as obvious
over Frolov2 in view ofNowlan. 3 Final Action 3-6. Appellants argue those
claims as a group. Appeal Br. 9-24. We select claim 1 as representative of
the group. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Frolov discloses every limitation of claim 1
except for first and second voids "extending lineally uninterrupted with
respect to the [first/second] optical channel, and continuously across
oppositely disposed channel walls," determines that Nowlan teaches that
feature, and concludes that it would have been obvious to substitute the first
and second voids of Frolov with the void of Nolan. Final Action 3-4.
Appellants argue that ( 1) the prior art does not teach all of the claim
limitations; (2) the Examiner does not provide a reasoned explanation
supporting a motivation to combine the asserted references, but instead
employs impermissible hindsight; and (3) the prior art teaches away from
Appellants' claims. Appeal Br. 10-24. We are not persuaded by
Appellants' arguments, which we address below in tum.
2 US 2009/0221111 Al (published Sept. 3, 2009).
3 US 5,076,857 (issued Dec. 21, 1991).
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Application 13/572,964
(1) The Prior Art Teaches Every Claim Limitation
Appellants first assert that the prior art does not teach that the void is
bound within the optical channel by the electrical contact. Appeal Br. 17. In
Appellants' view, such a feature is required by the claim language, which
states that the electrical contact is aligned "within and in communication
with each optical channel." Id. at 13.
We agree with the Examiner, however, that the feature of a void
"bound within the optical channel by the electrical contact" is not a
limitation of the claims under their broadest reasonable interpretation. See
Answer 8 ( explaining that the claims do not recite a requirement that the
void must "make contact or directly communicate with the grooves").
Significantly, Appellants also do not contest that key finding. See generally
Reply Br. Claim 1 requires "aligning an electrical contact within and in
communication with each optical channel ... wherein the alignment of the
first electrical contact forms a first void within the first optical channel."
Claim 1 further requires the first void extend "continuously across
oppositely disposed channel walls." Although the void must extend
continuously across oppositely disposed channel walls, the electrical contact
need only be within and in communication with the channel. The electrical
contact need not extend across to the channel walls.
Appellants further argue that Frolov does not teach a void that extends
lineally uninterrupted with respect to the optical channel and extends
continuously across oppositely disposed channel walls. Appeal Br. 17-18.
That argument improperly considers Frolov in isolation, and does not
address effectively the basis for the Examiner's rejection, which proposes a
substitution of the void taught by Nowlan for the voids employed in Frolov.
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Application 13/572,964
See Final Action 4-5; Answer 8; see also In re Keller, 642 F.2d 413, 426
(CCP A 1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references."). We agree with the Examiner that Nowlan teaches the
limitations that describe the characteristics of the void. Answer 8 ( citing
Nowlan, Fig. 2).
(2) The Examiner Adequately Supports a Motivation to
Combine Without Resorting to Impermissible Hindsight
Appellants submit that the Examiner's analysis of the motivation to
combine references is conclusory and lacks a reasoned explanation. Appeal
Br. 19-22; Reply Br. 2-5. We disagree. The Examiner makes unrebutted
factual findings that both Frolov and Nowlan disclose substantially similar
photovoltaic devices with orthogonal contact grids and substrates having
grooves, with the grooves formed in each of Frolov and Nolan for the same
purpose-namely, for the purpose of decreasing shading effects on the solar
cell. Answer 8-9 ( citing Frolov ,-J 50; Nowlan, Abstract, Figs. 1-3); Final
Action 3-5 (citing Frolov, Fig. 20). Moreover, both Frolov and Nowlan
teach the use of triangular grooves. Answer 8-9 (citing Frolov ,-J 50, Fig. 8;
Nowlan, Figs. 1-2); see also Frolov ,-J 50 (teaching that the grooves may be a
rectangular shape or an elongated shape, but that an elongated shape will be
preferred to minimize the shading effect). Those findings support the
Examiner's conclusion that Nowlan's groove, with its corresponding void, is
suitable for use in the substrate of Frolov. Answer 9; Final Action 4-5.
Appellants fault the Examiner for not explicitly stating that
substituting the voids of Frolov with the voids of Nowlan would have
achieved predictable results. Appeal Br. 21-22. The Examiner, however,
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Application 13/572,964
specifically finds that the substitution would have been carried out with a
reasonable expectation of success, given that both references pertain to
substrates comprising grooves meant to decrease shading effects on a solar
cell. Final Action 4-5. The Examiner's analysis adequately supports a
prima facie case of obviousness. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007) (explaining that "a rule of law equating
unpredictability to patentability ... cannot be the proper standard" because
"case law is clear that obviousness cannot be avoided ... so long as there
was a reasonable probability of success").
Appellants also point out that, in some embodiments, Frolov' s
conducting grid has the same cross-sectional shape as the grooves and,
accordingly, no voids are apparent in those embodiments because all internal
spaces are filled with electrically conductive material. Appeal Br. 20, 22;
Reply Br. 6. The Examiner's rejection, however, does not propose to
modify those embodiments, but instead, is based on a proposed modification
to an embodiment in which Frolov does illustrate voids in the grooves. See
Final Action 3-4 (citing Frolov, Fig. 20); see also In re Mills, 470 F.2d 649,
651 (CCPA 1972) ("All the disclosures in a reference must be evaluated,
including nonpreferred embodiments."). We agree that the Examiner's
rejection properly takes into account what is taught in the applied prior art,
without resorting to impermissible hindsight reconstruction. Answer 9.
(3) The Prior Art is Not Shown to Teach Away from the Invention
Appellants argue that the prior art teaches away from the claims
because, in Nowlan, the separation of the conducting grid from the facets is
critical. Appeal Br. 23-24 (citing Nowlan 4:66-5:9). As we discuss above,
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Application 13/572,964
we do not find Appellants' argument persuasive because we do not read the
claims to require direct contact between the optical channel and electrical
contact.
In addition, Appellants argue that the prior art teaches away from the
claimed invention because, in Frolov, the intended purpose is to fill the
voids. Reply Br. 3-4 (citing Frolov, claims 5-8, 20, ,i,i 15, 41, 43, Fig. 1).
Here again, however, Appellants focus on embodiments that do not form the
basis for the rejection. The Examiner relies on Figure 20 in Frolov, which is
an embodiment that illustrates voids. Appellants direct us to no disclosure
that represents a "clear discouragement" that would have dissuaded the
ordinarily skilled artisan from making the proposed combination based on
Figure 20. Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774
F.3d 968,977 (Fed. Cir. 2014) ("Yet simply because [only two of fifteen]
configurations are not preferred embodiments does not result in the [prior
art] patent teaching away from use of [those configurations], 'absent clear
discouragement of that combination."' ( quoting Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1356 (Fed. Cir. 2012))).
Claims 10 & 29
The Examiner rejects claims 10 and 29 as obvious over Frolov in view
of Nowlan, and further in view of Suga.4 Final Action 7. Appellants argue
that Suga does not teach or suggest forming a void (Appeal Br. 24-26), but
that argument improperly considers Suga in isolation, see Keller, 642 F.2d
at 426. As the Examiner properly relies on Frolov and Nowlan for the voids,
4 US 2010/0252107 Al (published Oct. 7, 2010).
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Application 13/572,964
we affirm the Examiner's rejection of claims 10 and 29 for the same reasons
discussed above.
Claim 12
The Examiner rejects claim 12 as obvious over Frolov in view of
Nowlan, and further in view ofVogeli5 and Heaps.6 Final Action 7-9.
Appellants argue that, similar to Nowlan, any potential void in Vogeli would
not be bound within the optical channel and that Heaps does not teach or
suggest a solar cell. Appeal Br. 27. As discussed above, we do not read the
claims to require the void to be bound within the optical channel by the
electrical contact. Further, Appellants do not dispute the Examiner's finding
that Heaps teaches a metal coating method analogous to the method of
forming the metal electrical contact grid of Frolov as modified in view of
Vogeli. Final Action 8; see Appeal Br. 26-28 (focusing on individual
teachings within applied prior art references, without taking account of what
the combined teachings would have fairly suggested to an ordinarily skilled
artisan, and nowhere refuting that Heaps discloses a metal coating method
analogous to the method employed in the proposed combination). We,
therefore, discern no reversible error in the Examiner's rejection of claim 12.
ORDER
The Examiner's decision to reject claims 1, 3, 6-12, 23-27, 29, and
3 0 is affirmed.
5 US 5,554,229 (issued Sept. 10, 1996).
6 US 4,128,680 (issued Dec. 5, 1978).
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Appeal2018-003789
Application 13/572,964
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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