Ex Parte Lu et al

Patent Trial and Appeal Board

Dec 27, 2016

12273623 (P.T.A.B. Dec. 27, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/273,623 11/19/2008 Songwei Lu 064155A2 8679
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
12/27/2016 EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
MAIL DATE DELIVERY MODE
12/27/2016 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 SONGWEI LU, CAROLINE S. HARRIS, JAMES McCAMY,
ILYA KOLTOVER, MEHRAN ARBAB, and CHERI M. BOYKIN
Appeal 2015-008049
Application 12/273,623
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY R. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
July 8, 2014 decision finally rejecting claims 12, 23, and 26—28 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm
1 Appellants identify the real party in interest as PPG Industries Ohio, Inc.
(Appeal Br. 2).
Appeal 2015-008049
Application 12/273,623
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a method of decreasing the sheet
resistance of a conductive coating for a solar cell (Spec. 17). Details of the
claimed invention may be seen in illustrative claim 12, which is reproduced
below from the Claims Appendix of the Appeal Brief:
12. A method of decreasing the sheet resistance of a conductive
coating for a solar cell, comprising the steps of:
forming a single layer first coating over at least a portion
of a substrate, the first coating comprising a mixture of 30
vol.% to 80 vol.% silica, 5 vol.% to 69 vol.% titania, and 1
vol.% to 15 vol.% phosphorous oxide, wherein the first coating
has a thickness in the range of 30 nm to 70 nm;
forming a single layer conductive coating over at least a
portion of the first coating, wherein the conductive coating
comprises fluorine doped tin oxide having a thickness in the
range of 350 nm to 420 nm; and
incorporating the coated substrate into a solar cell such
that the conductive coating is an electrode of the solar cell,
wherein said first coating provides said conductive
coating with a sheet resistance of less than 15 ohms per square,
and
wherein the first coating and the conductive coating are
deposited by chemical vapor deposition onto a float glass
ribbon in a molten tin bath where a temperature of the float
glass ribbon is less than 1300°F.
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Appeal 2015-008049
Application 12/273,623
REJECTIONS
I. Claims 12, 23, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Norimatsu2 in combination with Russo3 and optionally
Harris.4
II. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Harris in combination with Russo.
DISCUSSION
Appellants do not offer separate arguments in support of the
patentability of any of the claims (see Appeal Br. 4—8). Accordingly, we
will focus our analysis on the rejection of claim 12.5
Appellants make three basic arguments seeking reversal of the
rejection of claim 12 over Norimatsu in combination with Russo and Harris:
(1) Norimatsu does not teach or suggest decreasing the sheet resistance of a
conductive coating by altering the composition of the coating, (2) there is no
motivation to combine the cited references, and (3) unexpected results
support patentability.
According to Appellants, Norimatsu is not directed to a method of
decreasing sheet resistance by the use of a specific coating, but instead
merely identifies that resistance may be reduced by increasing the thickness
of the coating (Appeal Br. 5, citing Norimatsu 15:24—27). This argument is
not persuasive because the Examiner has provided an explanation of why a
2 Norimatsu et al., U.S. Patent No. 6,380,480 Bl, issued April 30, 2002.
3 Russo et al., EP 0 927 706 A2, published July 7, 1999.
4 Harris et al., U.S. Patent Pub. 2007/0184291 Al, published August 9, 2007.
5 The rejection of claim 26 is appealed solely on the basis of the alleged
showing of unexpected results (Appeal Br. 8), which is discussed below.
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Appeal 2015-008049
Application 12/273,623
person of skill in the art would have combined the references as needed to
make the recited coating, which would necessarily result in the decreased
sheet resistance (Ans. 9).
Appellants also argue that a person of skill in the art would not
reasonably have expected that Russo’s film could be successfully combined
with Norimatsu’s film (Appeal Br. 6—7). Appellants contend that the
rationale provided by the Examiner for combining the references — in order
to reduce the reflectance of Norimatsu’s coating —has nothing to do with
decreased sheet resistance and, therefore, one of skill in the art would not
have expected the proposed combination to reduce sheet resistance (Appeal
Br. 6). However, Appellants do not contest the Examiner’s findings and
reasoning which support the proffered reason to combine the references.
Moreover, the Examiner also provides an explanation of why one of
ordinary skill in the art would have reasonably expected Russo’s film to be
effective when used as Norimatsu’s undercoating, in particular because
Russo’s film contains silica, as does Norimatsu’s undercoating (Ans. 11).
With regard to Appellants’ allegations of unexpected results, the
showing is not sufficient to overcome the prima facie case of obviousness,
essentially for the reasons set forth in the Answer at pages 12—13. In
particular, the showing is not commensurate in scope with the claims, which
recite wide ranges of amounts of silica, titania, and phosphorous oxide, as
well as a thickness range. The data relied on Appellants as showing
unexpected results is based on a single composition (see Reply Br. 5), and
hence is not commensurate in scope with the claims. Moreover, as noted by
Appellants, while it is possible that showings which do not cover an entire
claimed range can be sufficient to overcome a prima facie case of
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Appeal 2015-008049
Application 12/273,623
obviousness, this requires that a skilled artisan could ascertain a trend on the
exemplified data that allows for its reasonable extension to the claimed
range. In this instance, Appellants assert that the exemplified data shows a
trend sufficient to overcome the prima facie case of obviousness (Reply Br.
6), but do not point to any evidence in support of this assertion which is,
therefore, unpersuasive.
CONCLUSION
We AFFIRM the rejection of claims 12, 23, 27, and 28 under
35 U.S.C. § 103(a) as being unpatentable over Norimatsu in combination with
Russo and optionally Harris.
We AFFIRM the rejection of claim 26 under 35 U.S.C. § 103(a) as
being unpatentable over Harris in combination with Russo.
AFFIRMED
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