Ex Parte Shima

Board of Patent Appeals and Interferences

Apr 10, 2012

11412042 (B.P.A.I. Apr. 10, 2012)

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.
11/412,042 04/27/2006 Masaki Shima SAN.002.0009.NP 6978
58789 7590 04/10/2012
NDQ&MWATCHSTONE LLP
300 NEW JERSEY AVENUE, NW
FIFTH FLOOR
WASHINGTON, DC 20001
EXAMINER
CARLSON, KOURTNEY SALZMAN
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
04/10/2012 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 MASAKI SHIMA
____________

Appeal 2010-005099
Application 11/412,042
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-005099
Application 11/412,042

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Representative claim 1 reads as follows:
1. A stacked photovoltaic device, comprising:
a first power generating unit including a first semiconductor layer
which functions as a photoelectric conversion layer; and
a second power generating unit formed above the first power
generating unit, the second power generating unit including a second
semiconductor layer made of a substantially intrinsic non-crystalline
semiconductor which functions as a photoelectric conversion layer,
wherein a density of a main constituent element of the first
semiconductor layer of the first power generating unit is lower than a density
of a main constituent element of the second semiconductor layer of the
second power generating unit.

The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
Claims 1-3, 5, 6, 8, and 9 as being unpatentable over Tawada1, in
view of Remes2;
Claim 4 as unpatentable over Tawada and Remes further in view of
Sano3; and
Claim 7 as being unpatentable over Tawada and Remes, further in
view of Arya4.

1 JP 2000-58892 published February 25, 2002, as discussed in the
Background of the Invention section of Appellant’s Specification (Spec. 1,
2).
2 Remes, Z., M. Vanecek, P. Torres, U. Kroll, A. H. Mahan, and R. S.
Crandall, “Optical Determination of the Mass Density of Amorphous and
Microcrystalline Silicon Layers with Different Hydrogen Content”, Journal
of Non-Crystalline Solids 876-879 (1998).
3 US 6,399,873 issued June 4, 2002.
4 US 5,403,404 issued April 4, 1995.
Appeal 2010-005099
Application 11/412,042

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OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the
prior art the teachings of the invention in issue”)).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has not met the
burden in this case for substantially the reasons set forth by Appellant in the
Briefs. There is no dispute that Tawada does not teach that “a density of a
main constituent element of the first semiconductor layer of the first power
generating unit is lower than a density of a main constituent element of the
second semiconductor layer of the second power generating unit” as
required by claim 1 (Ans. 4). Appellant contends that, in order to cure this
deficiency, the Examiner has impermissibly selected various samples from
Table 1 of Remes to the exclusion of other samples in Table 1 to support the
Examiner’s position that the silicon density of the microcrystalline layer of
Tawada is, or should be made, lower than the silicon density of the
amorphous layer of Tawada (e.g., App. Br. 8 (explaining that the Examiner’s
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Application 11/412,042

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analysis of Remes is flawed on multiple levels such that the “entire premise
of the rejection is incorrect”; see also Reply Br. 4, further explaining that
contrary to the statement made in the Examiner’s Answer, the
microcrystalline layers D15, P13, P06, and P05 of Remes are not formed by
a CVD process)). Appellant also contends that there is no apparent reason to
modify Tawada based on the teachings of Remes (App. Br. 11; Reply Br. 5,
6).
A preponderance of the evidence supports Appellant’s assertions that
the Examiner’s rejection is based on an incorrect analysis of Remes, and
uses improper hindsight to modify Tawada and/or to exemplify that the
layers of Tawada inherently satisfy the claimed densities based on the
teachings of Remes. The Examiner’s rejection and response to argument
presented in the Answer does not adequately address the concerns raised by
the Appellant in their Briefs (Ans. generally).
Accordingly, the Examiner has not satisfied the initial burden of
presenting a prima facie case of obviousness, and we conclude that the
Examiner’s rejection is improperly based upon improper hindsight
reasoning. KSR, 550 U.S. at 42.
None of the other references applied in the rejections have been relied
upon by the Examiner to cure the deficiencies noted above.
For these reasons and those set out in the Briefs, we reverse the
Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED
Appeal 2010-005099
Application 11/412,042

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