Ex Parte Hakuma et al

Patent Trial and Appeal Board

Aug 13, 2018

12993232 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/993,232 11/17/2010
25227 7590 08/15/2018
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE400
MCLEAN, VA 22102
FIRST NAMED INVENTOR
Hideki Hakuma
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.
350292004000 3904
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKI HAKUMA, YOSHIAKI TANAKA, and
SATORUKURIYAGAWA 1
Appeal2017-005627
Application 12/993,232
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY,
and DEBRA L. DENNETT, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5, 8, 9, and 11-16. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods for manufacturing
CIS-based thin film solar cells. E.g., Spec. ,r 1; Claim 1. Claim 1 is
reproduced below from page 10 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is Solar Frontier K.K.
App. Br. 2.
Appeal2017-005627
Application 12/993,232
1. A method for manufacturing a CIS-based thin film solar cell
compnsmg:
forming a backside electrode layer on a substrate;
forming a p-type CIS-based light absorbing layer on the
backside electrode layer; and
forming an n-type transparent and electrically conductive film
on the p-type CIS-based light absorbing layer,
wherein said forming the p-type CIS-based light absorbing
layer comprises: forming a metal precursor film by laminating
at least a first metal layer containing a I group element and a
second metal layer containing a III group element; and
thereafter selenizing and/ or sulfurizing said metal precursor
film using a gas containing a VI group element,
wherein during the formation of the metal precursor film
neither selenizing nor sulfurizing of the metal precursor film
occurs, and
wherein said forming the metal precursor film comprises;
forming the first metal layer by performing a first forming step
using a material comprising a I group element and an alkali
metal added to the material, and a second forming step using
the same material as the material in the first forming step but
substantially not containing the alkali metal, or
forming the second metal layer by performing a first forming
step using a material comprising a III group element and an
alkali metal added to the material, and a second forming step
using the same material as the material in the first forming step
but substantially not containing the alkali metal.
ANALYSIS
All pending claims stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Van Duren (WO 2007/101099 A2, published Sept. 7,
2
Appeal2017-005627
Application 12/993,232
2007). 2 The Appellants argue the claims as a group. We select claim 1 as
representative, and the remaining claims will stand or fall with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection. Accordingly, we affirm the rejection for reasons set forth below
and in the Examiner's Answer. See generally Ans. 2-12.
The Examiner finds that Van Duren teaches or suggests each step of
the method recited by claim 1. Ans. 3-7. With respect to the "forming the
first metal layer by performing a first forming step ... and a second forming
step ... " limitation of claim 1, the Examiner relies principally on columns
20-22 of Van Duren, which describe, inter alia, metal layers 115 and 116.
Ans. 4--7. The Examiner finds that Van Duren teaches that layer 115 may
comprise "a multi-nary alloy of copper and indium and gallium and
sodium," and that layer 116 may comprise "copper and indium and gallium."
Id. at 4. The Examiner further finds that Van Duren teaches that "a layer of
a sodium-containing material may be provided in contact with the precursor
layer," and that "sodium may be added to any of the precursor layers to
improve the quality of the resulting film." Id. The Examiner determines
that, in view of those disclosures, it would have been obvious to select, e.g.,
2 In the Answer, the rejection is denominated as a new ground of rejection
even though it is "substantially as previously presented" because the
rejection as stated in the Answer "include[ s] citation[ s] to additional
paragraphs" beyond what was previously cited. Ans. 2. In the Reply Brief,
the Appellants "choose[] to maintain appeal and rebut Examiner's new
arguments." Reply Br. 2.
3
Appeal2017-005627
Application 12/993,232
a copper-indium-gallium-sodium multi-nary alloy as layer 115 and, e.g., a
copper-indium-gallium composition as layer 116 because Van Duren
"suggests the selection of the specific components for each layer and
because it would have provided improved film quality of the component
layer 115." Id. at 4--5.
In the Appeal Brief, the Appellants first argue that "Van Duren's layer
117 is not formed by a two-step process." App. Br. 5. That argument is not
persuasive because the Examiner does not rely on layer 117 as being formed
by a two-step process, and claim 1 does not require both the first and the
second metal layers to be formed by a two-step process. The Examiner
relies on layers 115 and 116 as collectively corresponding to the first metal
layer of claim 1 that is formed by a first forming step and a second forming
step. See Ans. 4--7.
The Appellants also argue that Van Duren' s layers 115 and 116 do not
correspond to the claimed first metal layer because "Van Duren fails to
disclose the use of the same material" in both layer 115 and layer 116. App.
Br. 6. Relatedly, the Appellants argue that "nothing in Van Duren discloses
or suggests that optional layer 115 is made of the same material as precursor
layer 116 except for the addition of sodium." Id. at 7.
We disagree. Van Duren teaches several options for the composition
of layer 115, including, for example, "a group IB element, a group IIIA
element, a group VIA element, a group IA element (new style: group 1 ), a
binary and/or multi-nary alloy of any of the precedent elements, a solid
solution of any of the precedent elements," and then goes on to provide
specific examples such as copper, indium, gallium, and sodium. Van Duren
at 20:20-29. In the list of specific elements and compounds suitable for
4
Appeal2017-005627
Application 12/993,232
layer 115, copper, indium, and/or gallium appear frequently. See id. at
20:24--29. Additionally, Van Duren teaches that "sodium may also be used
with the precursor material to improve the qualities of the resulting film,"
and that "one or more layers of a sodium containing material may be formed
above and/or below the precursor layer 116." Id. at 22: 11-17. As a specific
example of a sodium-containing material, Van Duren discloses Cu-Ga-Na,
which is one of the same materials disclosed by the Specification. Compare
id. at 22:21, with Spec. Figs. 2A-2F.
Concerning layer 116, Van Duren teaches that it "contains one or
more group IB elements and one or more group IIIA elements. Preferably,
the one or more group IB elements include copper. The one or more group
IIIA elements may include indium and/or gallium." Van Duren at 20:30-33.
We agree with the Appellants that Van Duren describes a number of
different suitable elements and compounds as appropriate for its layers 115
and 116. See App. Br. 7; Reply Br. 5. However, we do not agree that the
number is so great as to render each individual combination nonobvious.
See id. at 8 ("Van Duren does not provide any direction on the selection of
the constituents .... "); Reply Br. 5. On the contrary, and as set forth above,
Van Duren teaches materials for layer 115 that fall within the scope of claim
1 's "first forming step" because ( 1) it teaches materials comprising a I group
element ( e.g., copper gallium), (2) it teaches that "sodium may also be
used," and (3) it teaches that "one or more layers of a sodium containing
material may be formed above and/or below the precursor layer 116," such
as in layer 115. Van Duren at 20:20-29, 22:11-14. As noted above, in the
list of specific elements and compounds appropriate for layer 115, copper,
indium, and/or gallium appear frequently, and "copper gallium" and "copper
5
Appeal2017-005627
Application 12/993,232
indium" are both expressly disclosed. See id. at 20:24--29 Thus, Van Duren
reasonably teaches or suggests materials that fall within the scope of the
"first forming step."
Van Duren also reasonably teaches or suggests materials that fall
within the scope of the "second forming step." As set forth above, Van
Duren specifically identifies copper (group IB element) combined with
indium and/or gallium (group IIIA elements) as materials for layer 116. See
id. at 20:30-33.
In combination, Van Duren reasonably suggests an embodiment in
which layer 115 is, e.g., Cu-Ga-Na (or Cu-In-Ga-Na, the example provided
by the Examiner), and in which layer 116 is Cu-Ga (or Cu-In-Ga, the
example provided by the Examiner and specifically suggested by Van Duren
at col. 20:30-33). Such a combination of layers 115 and 116, which is
reasonably suggested by Van Duren, falls within the scope of claim 1 's
requirement that the layer formed by the "second forming step" "us[ es] the
same material as the material in the first forming step but substantially not
containing the alkali metal." The fact that Van Duren also reasonably
suggests other combinations of materials for layers 115 and 116, some of
which would not fall within the scope of claim 1 (such as, for example,
combinations that have sodium in both layers 115 and 116, see App. Br. 8),
does not negate Van Duren' s teaching or suggestion of materials that do fall
within the scope of claim 1. See Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior art] discloses a multitude of
effective combinations does not render any particular formulation less
obvious."). Likewise, the fact that Van Duren does not explicitly state that
layers 115 and 116 should be the same material with the exception that layer
6
Appeal2017-005627
Application 12/993,232
115 also include sodium does not establish reversible error in the rejection
because, as set forth above, Van Duren reasonably suggests embodiments in
which layer 115 and layer 116 are the same material, and it specifically
teaches that sodium may be added to layers above or below layer 116,
including layer 115. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-
19 (2007) ("[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.").
On this record, we are not persuaded of reversible error in the
Examiner's rejection.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-5, 8, 9, and 11-
16.
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
7