Ex Parte Stathatos et al

Patent Trials and Appeals Board

Apr 30, 2019

13748393 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/748,393
67690 7590
Curran Patent Law
POBox4604
Wayne, NJ 07474
FILING DATE FIRST NAMED INVENTOR
01/23/2013 Elias Stathatos
05/02/2019
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.
10012-0005 7330
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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
following e-mail address(es):
kevin@curranpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ELIAS STATHATOS, NICHOLAS KANOPOULOS,
PANAGIOTIS LIANOS, YIANNIS KATSAGOUNOS, and
THEODORE MAKRIS 1
Appeal2018-006024
Application 13/748,393
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Brite Hellas AK
Appeal 2018-006024
Application 13/748,393
Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1-20. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth
below:
1. A method of forming a solar panel having a dye sensitized solar cell,
the method comprising:
forming a first portion, forming the first portion comprising:
providing a first conductive substrate having a first conductive surface
and a first non-conductive surface opposite the first conductive surface,
the first conductive substrate being substantially planar and uniform in
thickness;
forming a first negative conductive strip by inkjet printing on the first
conductive surface, the first negative conductive strip adapted to function as a
negative electrode of the solar cell;
dying the first negative conductive strip in a dying station having a
photosensitizing dye;
forming a second portion, forming the second portion comprising:
providing a second conductive substrate having a second conductive
surface and a second non-conductive surface opposite the second conductive
surface, the second conductive substrate being substantially planar and uniform
in thickness; wherein the second conductive substrate and the first conductive
substrate are substantially equivalent in their dimensions;
forming a first positive conductive strip by inkjet printing on the
second conductive surface, the first positive conductive strip adapted to function
as a positive electrode of the solar cell;
stacking the first portion and the second portion on top of each other, such
that the first conductive surface faces the second conductive surface, with the
first and second non-conductive surfaces facing outward; and
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Appeal 2018-006024
Application 13/748,393
disposing an electrolyte between the first and second conductive surfaces
after stacking the first portion and the second portion on top of each other.
The Examiner relies on the following prior art references as evidence of
unpatentability:
Lindquist US 6,657,119 B2
Choi US 2006/0016473 Al
Shioya US 2007/0228421 Al
Murata US 7,434,912 B2
Usui US 2009/0293953 Al
Lianos US 2011/0203644 Al
(hereafter "Lianos '644")
Goldstein US 2011/0232736 Al
Kim US 2012/0204952 Al
Mochizuki US 2013/0279001 Al
Lianos WO 2004/095481 Al
(hereafter "Lianos '481 ")
Mochizuki WO 2012/090987 Al
Dec. 2, 2003
Jan.26,2006
Oct. 4, 2007
Oct. 14, 2008
Dec. 3, 2009
Aug. 25, 2011
Sept. 29, 2011
Aug. 16, 2012
Oct. 24, 2013
Nov. 4, 2011
July 5, 2012
THE REJECTIONS
1. Claim 5 is rejected under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite.
2. Claims 1, 15, and 16 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos '481 in view of U sui and Shioya.
3. Claims 2, 3, 5, 6, and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lianos '644 in view of Lindquist.
4. Claims 4, 7, and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos-2 in view of Lindquist, and further in view of Choi.
5. Claims 10-12 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos '644 in view of Lindquist, and further in view
of Goldstein, and Murata.
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Application 13/748,393
6. Claims 10 and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos '644 in view of Lindquist, and further in view
of Mochizuki ("WO 2012/090987 with citations to English equivalent U.S. Pub.
No. 2013/0279001 Al") and Murata.
7. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Lianos '644 in view of Lindquist, and further in view of Murata.
8. Claims 16 and 17 were rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos '644 in view of U sui, and Shioya, and further in view of
Murata.
9. Claims 18-20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lianos '644 in view of U sui, and Shioya, and further in view
of Murata and Kim.
ANALYSIS
For purposes of this appeal, we address separately argued claims, and the
remaining claims stand or fall with the argued claims, consistent with 37 C.F.R.
§ 41.37(c)(l)(iv) (2017). Appellants' arguments are limited to the subject matter of
claim 1 (involving Rejection 2). On page 13 of the Appeal Brief, Appellants
indicate that Rejection 2 is dispositive for Rejections 3-9. Thus, our determination
with regard to Rejection 2 is determinative for Rejections 3-9.
Having considered the respective positions advanced by the Examiner and
Appellants in light of this appeal record, we affirm the Examiner's prior art
rejections based on the fact finding and reasoning set forth in the Answer and Final
Office Action, which we adopt as our own in its entirety. We highlight and address
specific findings and arguments below. However, we reverse the § l 12(b ), second
paragraph rejection (discussed below).
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Application 13/748,393
Rejection 1 (indefiniteness rejection)
It is the Examiner's position that claim 5' s recitation of "a dual-electrode strip
separation width" is indefinite because it is unclear as to what structure or separation
width is encompassed by the term "dual-electrode strip separation width" as it is
unclear as to what is required by a "dual-electrode strip". The Examiner states that
the Specification depicts a "negative strip separation width 1090" in Figure IA and a
"dual-electrode strip separation width 2010" in Figure lB. The Examiner states that
the negative strip separation width 1090 appears to be similar in shape, size, and
location as the dual electrode strip separation width 2010, and it is unclear if the
claimed term "dual-electrode strip separation width" is attempting to require a
particular structure in the Specification.
Appellants explain, referring to page 6 of the Specification, that the "Single-
Electrode Substrate Solar Panel 1000" is listed as having "a negative strip separation
width 1090" and "a positive strip separation width 1150," which appear in Figure 1
A, whereas the "Dual-Electrode Substrate Solar Panel 2000" is listed as having "a
dual-electrode strip separation width 2010," which appears in Figure lB. Appellants
submit that these naming conventions are not indefinite, as the Examiner mistakenly
alleges, but rather are used to clearly and concisely point out the claimed patterns of
the formed layers. Appellants state that reading the claim in view of Figure lB and
the Specification, it is clear that the "dual-electrode strip separation width 2010" is
depicted as the separation between the layer comprising the negative conductive
strip 1080 and the layer comprising the positive conductive strip 1140. Appellants
state that inasmuch as two opposing portions 1020 and 1030 are brought together
and stacked on top of each other, these separation widths are claimed to match for
proper alignment of the first and second portions. Therefore, Appellants submit that
claim 5 simply requires that forming of second negative conductive strip and
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Appeal 2018-006024
Application 13/748,393
forming of the second positive conductive strip result in the first positive and
second negative conductive strips being separated by the same amount as the first
negative and second positive conductive strips. We agree.
Appellants further explain that (in line with the Examiner's observations
distinguishing the reference numbers 1090 and 2010) the phrase "dual-electrode" is
clear from the Specification, wherein Figure IA is described as a "single-electrode"
embodiment, whereas Figure lB is described as a "dual-electrode" embodiment. The
distinctions between "single-electrode" and "dual-electrode" embodiments would be
unambiguous to a person of ordinary skill in the art upon reading the Specification,
especially in view of page 19, 11. 18-27; p. 20, lines 1-28; page 21, lines 1-28; and
page 22, lines 1-6 of the Specification. We agree.
We are persuaded by Appellants' stated position in the record and reverse
Rejection 1.
Rejections 2-9
We refer to the Examiner's stated position on pages 5-9 and 37-39 of the
Answer, which we adopt as our own.
Appellants argue, starting on page 13 of the Appeal Brief, that Lianos does
not teach the claimed "disposing an electrolyte between the first and second
conductive surfaces after stacking the first portion and the second portion on top of
each other" because the term "disposing" can only mean the initial introduction of
the electrolyte material. However, this argument is not persuasive for the reasons
provide by the Examiner in the record. Ans. 37-38. Therein, the Examiner explains
that the claimed phrase "disposing an electrolyte" is not limited to "only mean the
initial introduction of the electrolyte", and that nothing in the phrase "disposing an
electrolyte" implicitly requires only an initial introduction of electrolyte material.
We agree. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ("[T]his court counsels
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Application 13/748,393
the PTO to avoid the temptation to limit broad claim terms solely on the basis of
specification passages.").
The Examiner further adds that the Lianos reference(s) are cited to teach an
electrolyte (such as the gel electrolyte 3, Drawing 1) which is a completely
formed/arranged electrolyte layer spread out between the cited first and second
conductive surfaces, and does not even undergo gelatinization until "after the very
thin electrolyte layer is compress[ ed] between the first electrode and
second electrode". Ans. 38. The Examiner states that the cited electrolyte layer is
not completely disposed, or formed/arranged in full, until after the stacking and
squeezing of the cited first and second portions and then after gelatinization. We
agree.
Appellants next argues ( starting on page 15 of the Appeal Brief) that U sui
does not provide enabling disclosure on how to implement inkjet printing a colloidal
solution of titanium dioxide. However, this argument is not persuasive for the
reasons provided by the Examiner in the record. Ans. 38. Therein, the Examiner
states that one skilled in the art would have had a reasonable expectation of success
as Usui demonstrates colloidal Ti02 solutions can be deposited by inkjet printing on
similar electrodes as in the method of Lianos (see Usui ,-J,-J [0065--0067] disclosing
similar ITO and fluorine doped tin oxide on glass type electrodes, even for
photovoltaic cells).2 Cf In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (it is
applicant's burden to demonstrate non-enablement of a reference); discussed further
in In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) ("we now hold
that a prior art printed publication cited by an examiner is presumptively enabling").
2 We also note that on page 1 7 of the Appeal Brief, Appellants refer to the
Stathatos Declaration in support of the position that one skilled in the art would not
replace the blade stretching technique of Lianos with the inkjet printing ofUsui.
However, we agree with the Examiner for the reasons stated in the record that
sufficient motivation exists in so doing.
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Application 13/748,393
Appellants also argue ( starting on page 16 of the Appeal Brief) that since U sui
exemplifies thick films, U sui is different from the instant application which teaches
thin layers for transparent properties. This is not persuasive of error in the
Examiner's rejection, as the Examiner aptly replied that the thin layers for
transparent properties which Appellants mention are not claimed; and, regardless,
the inkjet technique suggested in Usui is not exclusively limited to thick films
(which is not disputed in the Reply Brief). Ans. 38.
With regard to the Reply Brief, Appellants sole argument is that they have
been granted two international applications. However, foreign patent office
determinations do not affect prosecution concerning United States patent law.
Rejection 1 is reversed.
Rejections 2-9 are affirmed.
DECISION
TIME PERIOD
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
ORDER
AFFIRMED
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