Ex Parte Mellott et al

Board of Patent Appeals and Interferences

Aug 18, 2011

11514320 (B.P.A.I. Aug. 18, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/514,320 09/01/2006 Nathan P. Mellott 3691-1072 3458
23117 7590 08/18/2011
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
VETERE, ROBERT A
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
08/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NATHAN P. MELLOTT,
THOMAS J. TAYLOR, and
SCOTT V. THOMSEN
____________

Appeal 2010-006397
Application 11/514,320
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART and make a NEW GROUND OF
REJECTION.
Appellants claim a method of making a solar cell comprising
providing a photovoltaic layer, a glass substrate, and an anti-reflection
coating on the glass substrate, wherein flame pyrolysis is used to form the
anti-reflection coating such that the flame pyrolysis causes nanostructures
comprising peaks and valleys on an exterior surface of the anti-reflection
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coating, the peaks having an average elevation of from about 5-60 nm, and
there being an average gap distance from about 10-80 nm between adjacent
peaks or adjacent valleys (claim 1). In a narrower embodiment of this
method, the glass substrate comprises a particular composition and
possesses certain visible transmission and color value characteristics (claim
20). Appellants also claim a solar cell having the structural features recited
in method claims 1 and 20 (claim 21).
Representative claims 1, 20 and 21 read as follows:
1. A method of making a solar cell, the method comprising:

providing a photovoltaic layer and at least a glass substrate on a light
incident side of the photovoltaic layer;

providing an anti-reflection coating on the glass substrate, the anti-
reflection coating including at least one layer and being located on a light-
incident side of the glass substrate; and

wherein flame pyrolysis is used to form at least part of the anti-
reflection coating which is provided on the light-incident side of the glass
substrate of the solar cell such that the flame pyrolysis used to form the
anti-reflection coating causes nanostructures comprising peaks and valleys
on an exterior surface of the anti-reflection coating, the peaks having an
average elevation of from about 5-60nm relative to adjacent valleys, and
there being an average gap distance of from about 10-80nm between
adjacent peaks or adjacent valleys.

20. The method of claim 1, wherein the glass substrate comprises:
Ingredient wt. %
SiO2 67 – 75 %
Na2O 10 – 20 %
CaO 5 – 15 %
Total iron (expressed as Fe2O3) 0.001 to 0.06 %
Cerium oxide 0 to 0.30 %
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wherein the glass substrate by itself has a visible transmission of at
least 90%, a transmissive a* color value of -1.0 to +1.0 and a transmissive
b* color value of from 0 to +1.5.

21. A solar cell, comprising:

a photovoltaic layer and at least a glass substrate on a light incident
side of the photovoltaic layer;
an anti-reflection coating formed at least partially by flame pyrolysis
provided on the glass substrate, the anti-reflection coating including at
least one layer and being located on a light-incident side of the glass
substrate; and

wherein the glass substrate comprises:

Ingredient wt. %

SiO2 67 – 75 %
Na2O 10 -20 %
CaO 5 – 15 %
Total iron (expressed as Fe2O3) 0.001 to 0.06 %
Cerium oxide 0 to 0.30 %

wherein the glass substrate by itself has a visible transmission of at
least 90%, a transmissive a* color value of 01.0 to +1.0 and a transmissive
b* color value of from 0 to +1.5, and

wherein the flame pyrolysis used to form the anti-reflection coating
causes nanostructures comprising peaks and valleys on an exterior surface
of the anti-reflection coating, the peaks having an average elevation of
from about 5-60nm relative to adjacent valleys, and there being an average
gap distance of from about 10-80nm between adjacent peaks or adjacent
valleys.

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The prior art listed below is relied upon by the Examiner as evidence
of obviousness:
Pecoraro 4,792,536 Dec. 20, 1988
Anderson 5,891,556 Apr. 6, 1999
Hunt 6,013,318 Jan. 11, 2000
Nelson 6,165,598 Dec. 26, 2000
Sopko 6,436,541 B1 Aug. 20, 2002

Appellants' Admitted Prior Art (AAPA) described in paragraphs [0003]-
[0005] of the Specification.
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
(1) claims 1, 2, and 5-19 over Nelson in view of AAPA, Hunt, and
Sopko;
(2) claims 3 and 4 over Nelson, AAPA, Hunt, Sopko, and Anderson;
(3) claim 20 over Nelson, AAPA, Hunt, Sopko, and Pecoraro; and
(4) claim 21 over Nelson, AAPA, Pecoraro, and Sopko.

Rejection (1); the § 103 Rejection of Claims 1, 2, and 5-19
Because dependent claims 2 and 5-19 have not been separately
argued (see App. Br. 12-17), they will stand or fall with independent claim
1.
The Examiner concedes that the combination of Nelson and AAPA
"does not explicitly disclose utilizing flame pyrolysis" (Ans. para. bridging
3-4) but concludes that "it would have been obvious . . . to utilize Hunt's
flame pyrolysis technique to form Nelson/AAPA's color suppressed anti-
reflective glass" (id.). Moreover, it is the Examiner's determination that
the method resulting from this prior art combination corresponds to
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Appellants' method and accordingly that the resulting method would
inherently form the nanostructures defined by claim 1 (id. at 4, para.
bridging 8-9).
Appellants do not contest in the appeal record the Examiner's
combination of Nelson, AAPA, and Hunt or the Examiner's determination
that the method resulting from this combination corresponds to Appellants'
method (see App. Br.14-17). Instead, Appellants argue that "no objective
evidence or cogent technical reasoning whatsoever has been presented to
support the conclusion of inherency" (App. Br. 16).
We cannot agree. The Examiner's inherency position is
convincingly supported by the undisputed determination that the method
resulting from the prior art combination corresponds to Appellants'
method. That is, since the flame pyrolysis technique of the
Nelson/AAPA/Hunt combination indisputably corresponds to the flame
pyrolysis technique disclosed and claimed by Appellants, these two
indistinguishable techniques must necessarily and inherently perform the
same nanostructure-forming function.
The fact that Appellants have recognized another advantage (i.e.,
formation of the claim 1 nanostructures) which would flow naturally from
following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious. See Ex
parte Obiaya, 227 USPQ 58 (BPAI 1985).
The Examiner's inherency determination is additionally supported
by Appellants' Specification in two respects. First, we find nothing and
Appellants point to nothing in their Specification concerning manipulation
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of flame pyrolysis parameters in order to achieve the nanostructures
required by claim 1 (see, e.g., Spec. para. [0021]). This circumstance
reflects that these nanostructures are the result of practicing flame
pyrolysis generally rather than the manipulation of specific flame pyrolysis
parameters. Second, the Specification discloses examples of flame
pyrolysis techniques suitable for practicing Appellants' invention by
reference to certain U.S. patents including 5,652,021 (Spec. para. [0020]),
of which Hunt is a continuation (Hunt title page, item [63]). It follows that
at least one of the flame pyrolysis techniques disclosed in the Specification
as suitable for achieving the nanostructures of claim 1 is identical to the
flame pyrolysis technique taught by Hunt.
As an apparent alternative to the above inherency theory, the
Examiner seems to conclude that it would have been obvious, in view of
Sopko, to create the claim 1 nanostructures "in order to achieve the
predictable result of forming an anti-reflective coating with nanostructures
comprising peaks and valleys with the reasonable expectation of success"
(Ans. 4, penultimate sentence).
Contrary to the Examiner's apparent belief, such an obviousness
conclusion is not supported by Sopko. As correctly argued by Appellants,
"[a]lthough Sopko appears to teach 'surface roughness' for certain layers,
there is no teaching or suggestion that such roughness is a result of
nanostructures comprising peaks and valleys on an exterior surface of the
anti-reflection coating, with the peaks having an average elevation of from
about 5-60 nm relative to adjacent valleys, and there being an average gap
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distance of from about 10-80 nm between adjacent peaks or adjacent
valleys [as required by claim 1]" (App. Br. para. bridging 14-15).
Finally, Appellants argue that the Examiner's previously discussed
inherency position is contradicted by Sopko which, according to
Appellants, "suggests that its as-deposited layers need to be etched or
otherwise modified to obtain the roughness that it desires -- which
certainly is not the same as obtaining the specifically claimed
nanostructures as a necessary result of the flame pyrolysis process itself"
(Reply Br. para. bridging 4-5). As support for this argument, Appellants
refer to the disclosure at column 8, lines 15-33 of Sopko (id.).
This argument is unpersuasive. Sopko's disclosure at column 8,
lines 15-33, teaches etching or otherwise modifying second layer 29 which
is seemingly irrelevant to the first TCO layer 27 with a roughened as-
deposited surface according to the disclosure cited by the Examiner (Sopko
col. 8, ll. 34-50; Ans. 4). For this reason, the Sopko disclosure identified
by Appellants is not contrary to the Examiner's inherency position.
In light of the foregoing, we sustain the § 103 rejection of claims 1,
2, and 5-19 to the extent that the rejection is based on the above discussed
inherency theory of the Examiner.

Rejection (2); the § 103 Rejection of Claims 3 and 4
No additional arguments have been advanced by Appellants against
this rejection (App. Br. 17). Therefore, we sustain the rejection of
dependent claims 3 and 4 for the reasons discussed above.

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Rejection (3); the § 103 Rejection of Claim 20
The Examiner concludes that, in view of Pecoraro, it would have
been obvious to provide the Nelson/AAPA/Hunt combination with a glass
substrate having the composition required by claim 20. Further, the
Examiner determines that, in view of their compositional identity, the
resulting glass substrate would be expected to necessarily and inherently
possess the claimed visible transmission and color values of the claim 20
glass substrate (Ans. 6, para. bridging 9-10).
Appellants do not contest the Examiner's obviousness conclusion
(see App. Br. 17-18). As for the Examiner's inherency determination,
Appellants state that "myriad other factors may influence these values" (id.
at 18) and argue that "[t]he Final Office Action does not reconcile these
different possibilities, much less explain why the specifically claimed
values are to be 'expected'" (id.).
Contrary to Appellants' argument, the Examiner has reasonably
explained why the glass substrate of the prior art combination would be
expected to necessarily and inherently possess the visible transmission and
color values required by claim 20. As indicated above, this explanation is
based on the Examiner's undisputed determination that the glass substrates
resulting from the prior art combination and defined by claim 20 are
compositionally identical. Products of identical compositions cannot have
mutually exclusive properties. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). As for Appellants' statement that "myriad other factors may
influence these [claim 20] values" (App. Br. 18), no such "myriad other
factors" have been identified by Appellants.
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Under these circumstances, the appeal record convincingly supports
the Examiner's inherency determination under review. We sustain,
therefore, the § 103 rejection of claim 20.

Rejection (4); the § 103 Rejection of Claim 21
According to the Examiner, "[r]egarding the structural features [i.e.,
nanostructures] of the film [sic, anti-reflection coating] claimed by
applicant, it is axiomatic that one who performs the steps of a process must
necessarily produce all of its advantages and the mere recitation of a newly
discovered property that is inherently possessed by the steps in the prior art
does not cause a claim drawn to those steps to distinguish over the prior
art" (Ans. para. bridging 7-8).
The deficiency of this statement is that the Examiner has not
identified any disclosure in the applied prior art which corresponds to the
process recitation in claim 21 concerning use of flame pyrolysis to form
the claimed nanostructures. In the record before us, only Hunt has been
identified by the Examiner as containing such disclosure, and this
reference has not been applied in the rejection under consideration. For
these reasons, the record provides no support for a determination that the
prior art combination of this rejection would necessarily and inherently
result in an anti-reflection coating with the nanostructures required by
claim 21.
In addition, the Examiner concludes that "it would have been
obvious . . . to create an anti-reflective coating having nanostructures
comprising peaks and valleys (e.g. surface roughness) as taught by Sopko
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in Nelson/AAPA/Pecoraro in order to achieve the predictable result of
forming an anti-reflective coating with nanostructures comprising peaks
and valleys with the reasonable expectation of success" (Ans. sentence
bridging 7-8).
As indicated previously and correctly argued by Appellants (App.
Br. para. bridging 14-15, 19), Sopko contains no teaching or suggestion of
the nanostructures required by claim 21. As a consequence, the prior art
identified by the Examiner fails to establish a prima facie case of
obviousness for the claim 21 subject matter.
For the above stated reasons, we cannot sustain the § 103 rejection
of claim 21.

The New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we make a
new ground of rejection against claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Nelson in view of AAPA, Hunt, and Pecoraro.
For the reasons detailed above, the appeal record supports a
conclusion that it would have been prima facie obvious for one with
ordinary skill in this art to combine the here applied prior art in the manner
proposed by the Examiner in rejecting claims 1 and 20, thereby resulting in
a solar cell of the type defined by claim 21. Moreover, as previously
explained, Appellants have provided the record with no argument
contesting the Examiner's proposed combination of this prior art. Finally,
the record reasonably supports the earlier discussed determinations (1) that
the resulting anti-reflection coating formed by Hunt's flame pyrolysis
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would necessarily and inherently possess the nanostructures required by
claim 21 and (2) that the resulting glass substrate comprising Pecoraro's
composition would necessarily and inherently possess the visible
transmission and color values required by claim 21.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THIS DECISION, must exercise
one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(a) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

Conclusion
The decision of the Examiner is affirmed-in-part.

A new ground of rejection is made against claim 21.

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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