Ex Parte Palm et al

Patent Trial and Appeal Board

Jan 30, 2018

14357470 (P.T.A.B. Jan. 30, 2018)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/357,470 05/09/2014 Joerg Palm 434101US99PCT 7554
22850 7590 02/01/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOERG PALM, MATHIEU URIEN, GERARD RUITENBERG,
CHARLES LEYDER, ANDREAS HEISS, ERWAN MAHE,
and DELPHINE DUPUY
Appeal 2017-002485
Application 14/357,470
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1, 4—7, 16—20, 22, and 24, which constitute
1 In our Decision, we refer to the Specification filed May 9, 2014 (“Spec.”);
Final Office Action dated April 13, 2016, 2016 (“Final Act.”); Appeal Brief
dated May 12, 2016 (“Appeal Br.”); Examiner’s Answer dated November
28, 2016 (“Ans.”); and Reply Brief dated December 8, 2016 (“Reply Br.”).
2 Appellant is the Applicant, Saint-Gobain Glass France, which is identified
in the Appeal Brief as the real party in interest. Appeal Br. 2.
Appeal 2017-002485
Application 14/357,470
all the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The Claimed Invention
Appellant’s disclosure relates to molybdenum-based conducting
substrates used to manufacture thin-layer photovoltaic cells. Spec. 1, 25
(Abstract). Claim 1 is illustrative of the claimed subject matter on appeal
and is reproduced below from the Claims Appendix to the Appeal Brief
(Claims App’x i—ii) (key disputed claim language italicized and bolded):
1. A conducting substrate, comprising:
a carrier substrate; and
an electrode coating formed on the carrier substrate,
wherein the electrode coating comprises:
- a main molybdenum-comprising layer formed on
the carrier substrate;
- a selenization barrier layer formed on the main
molybdenum-comprising layer, wherein the selenization
barrier layer consists of a metal oxynitride of titanium,
molybdenum, zirconium, or tantalum, wherein the metal
oxynitride satisfies the relationship:
0 < 0/(0+N) < 1,
wherein O and N are atomic proportions of
oxygen and nitrogen, respectively, and
wherein the selenization barrier layer has a
thickness of less than or equal to 50 nm; and
- an upper layer comprising a metal M capable of
forming, after sulfurization and/or selenization, an
ohmic contact layer with a photoactive semiconducting
material formed on the selenization barrier layer,
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wherein the selenization barrier layer is in direct
contact with the main molybdenum-comprising layer and
the upper layer.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Fix et ah, US 2004/0144419 A1 July 29, 2004
(hereinafter “Fix”)
Hollars US 2005/0109392 A1 May 26, 2005
Malmstrom et al., US 2008/0251120 A1 Oct. 16, 2008
(hereinafter “Malmstrom”)
Zhang et al., US 2011/0247687 Al Oct. 13,2011
(hereinafter “Zhang”)
Barbosa et al., Properties ofMoNxOy thin films as a function of the
N/O ratio, Thin Solid Films 494, 201-06 (2006)
(hereinafter “Barbosa”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claim 24 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement (“Rejection 1”). Ans. 2; Final Act. 4.
2. Claims 1, 4, 6, 7, 16, 17, 20, and 24 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hollars in view of Zhang and
Malmstrom (“Rejection 2”). Ans. 5; Final Act. 7.
3. Claims 5,18, and 19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Hollars in view of Zhang and
Malmstrom as applied to claim 1 above, and further in view of Barbosa
(“Rejection 3”). Ans. 13; Final Act. 15.
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4. Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hollars in view of Zhang and Malmstrom as applied to
claim 1 above, and further in view of Fix (“Rejection 4”). Ans. 16; Final
Act. 18.
OPINION
Rejection 1
Claim 24 depends from claim 1 and adds the limitation “wherein the
upper layer consists of molybdenum.” Claims App’x (iii).
The Examiner rejects claim 24 for failing to comply with the written
description requirement. Ans. 2. In particular, the Examiner determines that
adequate written descriptive support is not provided in the Specification for
the recitation “wherein the upper layer consists of molybdenum.” Id. at 2.
The Examiner finds that although the Specification discloses the upper layer
being “molybdenum-based and/or tungsten-based” (Spec. 3—4), such
disclosure “does not provide for the upper layer consisting of molybdenum”
because the “upper layer is selenized or sulfurized” and thus, “cannot consist
of molybdenum” only. Id. at 2—3.
Appellant argues that the Examiner’s rejections should be reversed
because the recitation “wherein the upper layer consists of molybdenum” is
supported by the Specification. App. Br. 4—7; Reply Br. 2—7.
We agree with Appellant’s argument in this regard. On the record
before us, we find that the “wherein the upper layer consists of
molybdenum” recitation of claim 24 is adequately supported by the
Specification. See Spec. 2—5, 7—9.
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In particular, the Specification discloses “an upper layer based on a
metal M capable of forming, after sulfurization and/or selenization, an
ohmic contact layer with a photoactive semiconducting material” (Spec. 2,
11. 22—24) and the “upper layer based on a metal M is molybdenum-based
and/or tungsten-based” (Spec. 3,1. 34—Spec. 4,1. 1) (emphasis added).
The Specification further provides that:
It should be noted that the term “molybdenum-based” is
understood to mean a material composed of a substantial
amount of molybdenum, that is to say either a material
composed solely of molybdenum, or an alloy predominantly
comprising molybdenum, or a compound predominantly
comprising molybdenum [.]
Spec. 9,11. 12—16 (emphasis added). Thus, the Specification teaches that
the upper layer can be “composed solely of’ (i.e., “consist of’)
molybdenum.
Moreover, as Appellant correctly points out (Reply Br. 2—3), the
Examiner’s § 112 rejection of claim 24 is improper because it is based on
the Examiner’s erroneous construction of the term “upper layer.” In
particular, as discussed further below with respect to Rejection 2 and claim
1, although the claims recite an “upper layer” comprising a metal M that is
“capable of forming, after sulfurization and/or selenization, an ohmic
contact layer,” the claims do not recite or require that the claimed upper
layer is necessarily formed into a metal sulfide or metal selenide ohmic
contact layer, and cannot consist of molybdenum. See In re Am. Acad. Of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Thus, we are persuaded that the Specification, as filed, provides
sufficient written descriptive support for claim 24, such that the skilled
artisan would have understood that the upper layer consists of molybdenum,
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and that the inventors were in possession of and had actually invented the
conducting substrate having an upper layer as claimed. Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (“[T]he specification must describe an invention understandable to
that skilled artisan and show that the inventor actually invented the invention
claimed.”).
Accordingly, we reverse the Examiner’s rejection of claim 24 under
35 U.S.C. § 112 as failing to comply with the written description
requirement.
Rejection 2
The Examiner determines that the combination of Hollars, Zhang, and
Malmstrom suggests a conducting substrate satisfying all of the limitations
of claim 1 and thus, concludes the combination would have rendered the
claim obvious. Ans. 5—8 (citing Hollars, Fig. 6, 26, 55, 56; Zhang 120;
Malmstrom, Abstract, Fig. 3b, 1 55).
Appellant argues that the Examiner’s rejection of claim 1 should be
reversed because the cited art fails to disclose or suggest “an upper layer
comprising a metal M capable of forming, after sulfurization and/or
selenization, an ohmic contact layer,” as recited in the claim. App. Br. 16,
18; see also Reply Br. 2.
Appellant’s argument is persuasive because the Examiner has not
established by a preponderance of the evidence that the cited art teaches or
suggests “an upper layer comprising a metal M capable of forming, after
sulfurization and/or selenization, an ohmic contact layer,” as required by
claim 1. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that
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the examiner bears the initial burden of establishing a prima facie case of
obviousness).
We begin by considering the proper interpretation of the limitation
“an upper layer comprising a metal M capable of forming, after sulfurization
and/or selenization, an ohmic contact layer with a photoactive
semiconducting material formed on the selenization barrier layer” of claim
1. Claims App’x i—ii. The Examiner interprets “upper layer” as “an
intermediate layer which is processed so as to form an ohmic contact layer
including both metal ‘M’ and sulfur/selenide in the complete solar cell.”
Ans. 3. The Examiner construes the claimed “upper layer” as being
structurally the same as an already-formed ohmic contact layer, “whether
deposited as [a] metal selenide/sulfide or converted into a selenide/sulfide
after deposition.” Id. at 3.
In other words, the Examiner interprets the “upper layer” limitation of
claim 1 as an already-formed, ohmic contact layer necessarily comprising
metal selenide/sulfide, rather than a layer comprising a metal M “capable of
forming, after sulfurization and/or selenization, an ohmic contact layer.”
During prosecution, claims are given their broadest reasonable
interpretation consistent with the Specification. Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d at 1364. We are not persuaded that the Examiner’s
interpretation of “upper layer” constitutes the broadest reasonable
interpretation in light of the Specification and the language of the claims.
The Specification discloses that upper layer 12 is “based on a metal M
capable of forming, after sulfurization and/or selenization, an ohmic contact
layer with a photoactive semiconducting material.” Spec. 2,11. 22—24
(emphasis added); see also id. at 7,11. 31—32 (disclosing “an upper layer 12
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based on a metal M formed directly on the barrier layer to selenization 10”).
The Specification also makes clear that although the upper layer comprises a
metal M capable of forming an ohmic contact layer with a photoactive
semiconducting layer, any transformation of the upper layer into an ohmic
contact layer would occur, if at all, only after employing the steps of
sulfurization and/or sulfurization. Id. at 5,11. 29—32; see also id. at 6,11. 4—5
(disclosing that “the process comprises a stage of formation of a photoactive
layer, by selenization and/or sulfurization, on the said upper layer based on a
metal M”).
Moreover, as Appellant correctly points out (Reply Br. 2), although
the Specification discloses that “layer 12 is intended to be fully transformed,
by selenization and/or sulfurization, into Mo(S, Se)2” (Spec. 9,11. 19-20,
Fig. 1), claim 1 does not recite or require that the upper layer is necessarily
subjected to sulfurization and/or selenization or it necessarily comprise
metal sulfide or metal selenide.
In light of the Specification and the language of the claims, we
conclude that a person of ordinary skill in the art at the time of the invention
would have understood the limitation “an upper layer comprising a metal M
capable of forming, after sulfurization and/or selenization, an ohmic contact
layer” as recited in claim 1 to mean a layer capable of forming an ohmic
contact layer, and not necessarily an already-formed, ohmic contact layer
comprising metal selenide/sulfide.
Applying the proper interpretation of the limitation “upper layer”
discussed above, the Examiner has not established by a preponderance of the
evidence that the combination of Hollars, Zhang, and Malmstrom teaches or
suggests this limitation.
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The Examiner relies on Malmstrom for teaching the claimed upper
layer. Ans. 7—8 (citing Malmstrom, Abstract, | 55, Fig. 3b). Although the
cited portions of Malmstrom upon which the Examiner relies discuss a
“contact layer 313” that is “preferably made of MoSe2,” these passages do
not teach or suggest an electrode coating formed on a carrier substrate,
comprising “an upper layer comprising a metal M capable of forming, after
sulfurization and/or selenization, an ohmic contact layer,” as recited in the
claim. See Malmstrom, Abstract (disclosing that “the invention relates to the
use of a composite back contact... in Cu(In, Ga)Se2 (CIGs) based thin film
solar cells with thin absorber levels”); id. 155 (disclosing that contact layer
313 “fulfills the demand on improved electrical properties of the
absorber/back contact interface”).
The Examiner also does not identify or provide an adequate technical
explanation explaining why one of ordinary skill would have arrived at
Appellant’s claimed invention based on the teachings of the cited art.
The Examiner’s assertion that “Malmstrom discloses the contact layer
is used to ensure suitable electrical properties of the back contact with
respect to the absorber” (Ans. 8) is conclusory and, without more,
insufficient to sustain the Examiner’s rejection in this regard. See In re
Kahn, 441 F.3d at 988 (holding “rejections on obviousness grounds cannot
be sustained by mere conclusory statements”).
We, therefore, cannot sustain the Examiner’s determination that the
combination of Hollars, Zhang, and Malmstrom teaches or suggests all of
the limitations of claim 1.
Because claims 4, 6, 7, 16, 17, 20, and 24 depend from claim 1, we
also cannot sustain the Examiner’s rejection of these claims.
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Accordingly, we reverse the Examiner’s rejection of claims 1, 4, 6, 7,
16, 17, 20, and 24 under 35 U.S.C. § 103(a) as obvious over the combination
of Hollars, Zhang, and Malmstrom.
Rejections 3 and 4
The foregoing deficiencies in the Examiner’s analysis and conclusion
regarding Rejection 2 and the combination of Hollars, Zhang, and
Malmstrom are not remedied by the Examiner’s findings regarding the
additional references or combination of references cited in support of the
third and fourth grounds of rejection.
Accordingly, we also reverse the Examiner’s Rejections 3 and 4.
DECISION
The Examiner’s rejections of claims 1, 4—7, 16—20, 22, and 24 are
reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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