Ex Parte Ishikawa et al

Patent Trial and Appeal Board

Aug 9, 2016

13501306 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/501,306 04/11/2012
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
08/09/2016
FIRST NAMED INVENTOR
Yuichi Ishikawa
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.
FPA-0002 3305
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
MAILDATE DELIVERY MODE
08/09/2016 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 YUICHI ISHIKAWA, KOJI TANOUE
and TAKATOSHI FUJINO
Appeal2015-003433
Application 13/501,306
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 4-6, and 16-18. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 reads (emphasis added to identify key limitation
in dispute):
1 The real party in interest is stated to be Dowa Holdings Co., Ltd.
(App. Br. 2).
Appeal2015-003433
Application 13/501,306
1. Chalcogen compound powder, represented as a general
formula: CualnbGa1-bSec (where 0.65:Sa:Sl.2, O:Sb:Sl, and
l .9:Sc:S2.4), having an average particle diameter (DsEM) of 1 to
80 nm measured by observation under an electron microscope,
and having a carbon content of 0.5% or less by mass.
The Examiner maintains the following rejections:
(a) claims 1, 4, 5, 16 and 17 rejected under 35 U.S.C. § 102(b) as
anticipated by Chun (Chun, Y-G. et al., "Synthesis of CuinGaSe2
nanoparticles by solvothermal route," Thin Solid Films, 2005, Vol. 480-481,
pages 46-49),
(b) claims 6 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable
over Chun and Yu (US 2010/0267189 Al, published October 21, 2010), and
(c) claims 1, 4-6 and 16-18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yu and Castro (Castro, S. L., et al., "Nanocrystalline
Chalcopyrite Materials (CuinS2 and CuinSe2) via Low-Temperature
Pyrolysis of Molecular Single-Source Precursors," Chem. Mater. 2003, 15,
3142-3147.).
For Rejections (a) and ( c ), Appellants essentially present arguments
only for independent claim 1. See Appeal Brief, generally. Further, for
Rejection (b ), Appellants rely on the arguments presented when discussing
claim 1 in addressing the separate rejection of claims 6 and 18 and do not
address or further distinguish the additionally cited secondary reference
based on the additional limitations of the dependent claims. Id. at 9.
Accordingly, we select independent claim 1 as representative of the claimed
subject matter before us on appeal. Claims 4-6 and 16-18 stand or fall with
claim 1. See 41.37 (c)(l)(iv)(2016).
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Application 13/501,306
Rejections (a) and (c)
ANALYSIS
The Prior Art Rejections
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 determination that the subject matter of
representative claim 1 is anticipated by the applied prior art (Rejection (a))
for the reasons presented by the Examiner. We add the following for
emphasis.
Independent claim 1 is directed to a chalcogen compound powder of a
specific CuinGaSe (CIGS) formula having a carbon content of 0.5% or less
by mass.
The Examiner found Chun discloses Cuino.sGao.sSe2 compound
containing no carbon that anticipates the subject matter of independent claim
1. Final Act. 3; Ans. 4; Chun 48 (equation (3)).
Appellants argue Chun's chalcogen compound is a formulation for the
surface of the nanoparticles and not the elemental composition of the powder
as claimed. App. Br. 6-7. Appellants additionally argue Chun does not
disclose a chalcogen compound having a carbon content of 0.5% or less by
mass. Id. at 7.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 4-5. As noted by the Examiner, Chun discloses making
a CIGS compound of the formula Cuino.sGao.sSe2 that meets the claimed
general CIGS formula. Ans. 4; Chun 48 (equation (3)). With respect to the
carbon content, Appellants direct us to no portion of Chun that would lead
one skilled in the art to understand Chun's CIGS compound of equation (3)
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Appeal2015-003433
Application 13/501,306
contains carbon. Thus, Appellants have not persuasively explained any
patentable distinction between the claimed chalcogen compound and the
chalcogen compound of the prior art. 2
Appellants further argue that Chun's chalcogen powder is made by a
different process than Appellants' and, thus, results in a different product.
App. Br. 5-6. In support of this, Appellants point to Table 1 of Chun and
argue the compound of Chun has a molar ratio of Se to (Ga+ In) that is
outside of the molar ratio for the claimed compounds. App. Br. 6-7; Chun
47.
We find this argument also unavailing. As noted by the Examiner, the
rejection relies on Chun's specific compound as described by equation (3)
and not the composition of Table 1. Ans. 4 Chun 47--48. Thus, the
Examiner is not relying on nanoparticles having only a surface comprising
an average atomic composition determined to be approximately at a ratio of 1
:0.5:0.5:2 for Cu/In/Ga/Se but, instead, the Examiner is relying on a
compound having the formula Cuino.sGao.sSe2 (that is, having an element
composition ratio shown in equation 3). App. Br. 7; Ans. 4; Chun 47--48.
With respect to the arguments directed to the process by which the
compound is made, Appellants' representative claim 1 is directed to a
product and the patentability of a product claim does not depend on the
process steps used to make the product. Cf In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985). Specifically, the Examiner found Chun discloses a CIGS
compound that anticipates Appellants' claimed CIGS compound. Final Act.
2 Moreover, since the atomic percentages for the chemical composition of
the CIGS nanoparticles presented in Table 1 of Chun add up to 100%, this is
evidence that Chun envisages a CIGS compound having no carbon.
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Application 13/501,306
3; Ans. 4; Chun 48 (equation (3)). Accordingly, the burden shifted to
Appellants to demonstrate that the claimed CIGS product differs from the
CIGS product of the prior art. Cf Thorpe, 777 F .2d at 698 (citing Best, 562
F.2d at 1255). However, Appellants have not proffered evidence showing
any difference between their CIGS product and the one of the prior art.
Accordingly, we sustain the Examiner's prior art rejections of claims
1, 4, 5, 16 and 17 under 35 U.S.C. § 102(b) (Rejection (a)) and of claims 6
and 18 under 35 U.S.C. § 103(a) (Rejection (b)) for the reasons presented by
the Examiner and given above.
Rejection (c)
We also AFFIRM for the reasons presented by the Examiner. We add
the following for emphasis.
We refer to the Examiner's Answer for the statement of the rejection.
Final Act. 4-5
Appellants' principal argument for this rejection is premised on Yu
and Castro making a CIGS compound using a method different from
Appellants' method. App. Br. 10-13.
We are unpersuaded. As discussed above, Appellants' representative
claim 1 is directed to a product and the patentability of a product claim does
not depend on the process by which the product is made. In this case, the
Examiner found the combined teachings of Yu and Castro disclose a CIGS
product that falls within Appellants' claimed general CIGS formula. Final
Act. 4-5; Yu ,-i,-i 25, 27, 74, 75; Castro 3144--47. Moreover, as
acknowledged by Appellants, Yu discloses the CIGS product as being
carbon-free, albeit with minimum carbon contamination. App. Br. 11; Yu ,-i
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Application 13/501,306
29. Thus, Appellants' claimed CIGS compound reasonably appears to be
substantially the same as the CIGS compound of the prior art. Accordingly,
it is Appellants' burden to demonstrate that the claimed CIGS compound
differs from the CIGS compound of the prior art. Again, Appellants have
not proffered evidence showing any structural difference between their
CIGS compound and the one of the prior art.
Accordingly, we sustain the Examiner's prior art rejection under 35
U.S.C. § 103(a) for the reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections under 35 U.S.C. §§ 102(b) and
10 3 (a) are affirmed.
TIME PERIOD
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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