Ex Parte Stathatos et alDownload PDFPatent Trials and Appeals BoardApr 30, 201913748393 - (D) (P.T.A.B. Apr. 30, 2019) Copy Citation 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 2 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. 3 Appeal 2018-006024 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). 4 Appeal 2018-006024 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 5 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 6 Appeal 2018-006024 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. 7 Appeal 2018-006024 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 8 Copy with citationCopy as parenthetical citation