Ex Parte Haag et al

Patent Trials and Appeals Board

May 31, 2019

14870121 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/870,121 09/30/2015
134130 7590
Lieberman & Brandsdorfer
802 Still Creek Lane
Gaithersburg, MD 20878
05/31/2019
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.
DE920120024US2 9169
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
05/31/2019 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
Appeal2018-001568
Application 14/870, 121
Technology Center 1700
Before GEORGIANNA W. BRADEN, MONTE T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1, 3, and 6-23, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
1 In explaining our Decision, we refer to the Specification filed
September 30, 2015 ("Spec."); Final Office Action dated February 10, 2017
("Final Act."); Advisory Action dated April 12, 2017 ("Adv. Act."); Appeal
Brief filed July 10, 2017 ("Appeal Br."); Examiner's Answer dated
September 25, 2017 ("Ans."); and Reply Brief filed November 27, 2017
("Reply Brief').
2 Appellant is the Applicant, International Business Machines Corporation
(Bib Data Sheet 1 ), which, according to the Appeal Brief is also the real
party in interest (Appeal Br. 3).
Appeal2018-001568
Application 14/870, 121
We REVERSE.
The Claimed Subject Matter
Appellant's disclosure relates to a solar cell and, in particular, a
method and system for increasing the efficiency of a solar cell by increasing
the thickness of a contact grid to reduce resistance in the cell. Spec. ,r,r 2, 6;
Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief ( Appeal
Br. 31) (key disputed claim language italicized and bolded):
1. A solar cell comprising:
a diode comprised of an active layer in communication
with a substrate;
a contact grid embedded in the substrate and comprised of
a conducting material in communication with the active layer;
and
a first solder layer of varying cross section and in
communication with the contact grid forming a resulting
structure, including:
two opposing surfaces, including a relatively planar
first surface in communication with the contact grid and a
second surface oppositely disposed from the first surface,
the second surface comprising at least two non-planar
segments, each of the non-planar segments having a first
measurement extending from the first surface to the
second surface, and a planar surf ace positioned between
the non-planar segments; and
a second measurement extending from the first surf
ace to the planar surface, wherein the first measurement is
greater than the second measurement.
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Appeal2018-001568
Application 14/870, 121
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Kawaguchi
Fukushima et al.
("Fukushima")
US 2010/0170568 Al July 8, 2010
US 2010/0288328 Al Nov. 18, 2010
The Re} ection
On appeal, the Examiner maintains (Ans. 2) the following rejection:
claims 1, 3, and 6-23 rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Kawaguchi in view of Fukushima (Ans. 3; Final Act. 9).
OPINION
The Examiner determines that the combination of Kawaguchi and
Fukushima suggests a solar cell satisfying all of the limitations of claim 1
and thus, concludes that the combination would have rendered claim 1
obvious. Ans. 3-7 (citing Kawaguchi, Figs. 1, 2, ,r,r 34, 65, 68; Fukushima,
Figs. 8-10, ,I 99).
Regarding the recitation "the second surface comprising at least two
non-planar segments," the Examiner relies on Fukushima for suggesting this
claim limitation. Id. at 5 (citing Fukushima, Figs. 8-10, ,r 99). In particular,
based on Fukushima's teachings regarding projections on the surface of a
conductor-connecting member (Fukushima ,r 99), the Examiner concludes
that
one having ordinary skill in the art wanting to form
Kawaguchi's solar cell in a manner which would be
advantageous for connecting the solar cell to an
interconnect in string formation, would readily
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Appeal2018-001568
Application 14/870, 121
understand that the projections disclosed by Fukushima,
formed along the front surface of the silver electrode
disclosed by Kawaguchi, would be beneficial in adhering
the solar cell to an interconnect ... to ensure sufficient
electrical connection and adhesion.
Id. at 5---6.
Appellant argues that the Examiner's rejection should be reversed
because the Examiner does not adequately explain why a person of ordinary
skill in the art would have been motivated to combine Kawaguchi and
Fukushima in the manner claimed. Appeal Br. 17-19; Reply Br. 2-5. In
particular, Appellant contends the Examiner's rejection is based on
conclusory statements, which do not support or provide sufficient
"motivation to modify Kawaguchi 's contact grid electrode to include
Fukushima 's projections as suggested by the Examiner." Appeal Br. 17.
The weight of the evidence supports Appellant's arguments. On the
record before us, the Examiner has not established by a preponderance of the
evidence that one of ordinary skill in the art would have had reason to
combine the teachings of Kawaguchi and Fukushima to arrive at Appellant's
claimed invention. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(holding that the examiner bears the initial burden of establishing a prima
facie case of obviousness).
As Appellant correctly points out (Appeal Br. 17-19), the Examiner
does not direct us to persuasive evidence or provide an adequate technical
reason explaining why one of ordinary skill would have modified
Kawaguchi's first electrode 11 to include Fukushima's projections 2 and
form the projections on the surface of the electrode in the manner claimed.
Although paragraph 99 of Fukushima describes a structure wherein
projections 2 on the surface of metal foil 1 of the conductor-connecting
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Appeal2018-001568
Application 14/870, 121
member are in contact with conductor 4, a preponderance of the evidence in
the present record does not establish that one of ordinary skill would have
had reason to modify Kawaguchi's electrode with Fukushima's projections
to create a second surface comprising at least two non-planar segments and a
planar surface positioned between the non-planar segments, as required by
the claim.
The Examiner also does not adequately explain why Figures 8-10 of
Fukushima would have led one of ordinary skill to modify Kawaguchi' s first
electrode 11 to include a second surface comprising at least two non-planar
segments and a planar surface positioned between the non-planar segments,
as would be required to arrive at the claimed invention. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring "reasoning with some
rational underpinning to support the legal conclusion of obviousness"); see
also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
("[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.") ( emphasis in
original).
The Examiner's assertion that forming Fukushima's projections along
the front surface of Kawaguchi' s electrode "would be beneficial in adhering
the solar cell to an interconnect ... to ensure sufficient electrical
connection" (Ans. 5-6) is conclusory and, without more, insufficient to
sustain the Examiner's rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (holding that rejections "cannot be sustained by mere conclusory
statements").
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Appeal2018-001568
Application 14/870, 121
The Examiner's assertion that one of ordinary skill would have been
"readily motivated to design Kawaguchi's silver electrode layer to include
Fukushima's projections" because such structure would be "configured
advantageously" for connecting to an interconnect in forming a solar string
array (Ans. 6) is not persuasive because it, too, is conclusory and the
Examiner does not identify persuasive evidence in the record to support it.
Kahn, 441 F.3d at 988.
Moreover, the Examiner does not provide any findings or discussion
regarding the technical feasibility of modifying Kawaguchi' s electrode with
Fukushima's projections to create a second surface comprising at least two
non-planar segments and a planar surface positioned between the non-planar
segments; the impact that would have on the operation of the Kawaguchi' s
solar battery cell; or why one of ordinary skill in the art would have had a
reasonable expectation of success in making such modification. For
example, the Examiner provides no discussion regarding what impact such a
modification would have on the capability of Kawaguchi' s first electrode's
capability to achieve high conversion efficiency without increasing the
interface resistance between the electrode and the semiconductor substrate,
which is a feature that Kawaguchi teaches is required for its device (see
Kawaguchi ,r,r 15, 26).
We, therefore, cannot sustain the Examiner's rejection and
determination that it would have been obvious to combine the teachings of
Kawaguchi and Fukushima to arrive at the claimed subject matter.
Accordingly, we reverse the Examiner's rejection of claims 1, 3, and
6-23 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of
Kawaguchi and Fukushima.
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Application 14/870, 121
DECISION
The Examiner's rejection of claims 1, 3, and 6-23 is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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