Ex Parte Tsuge

Board of Patent Appeals and Interferences

Feb 15, 2011

09788339 (B.P.A.I. Feb. 15, 2011)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/788,339 02/21/2001 Sadaji Tsuge TOR.011.0001.NP 1063
58789 7590 02/15/2011
NDQ&M WATCHSTONE LLP
300 NEW JERSEY AVENUE, NW
FIFTH FLOOR
WASHINGTON, DC 20001
EXAMINER
BARTON, JEFFREY THOMAS
ART UNIT PAPER NUMBER
1728
MAIL DATE DELIVERY MODE
02/15/2011 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 SADAJI TSUGE
________________

Appeal 2010-001094
Application 09/788,339
Technology Center 1700
________________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001094
Application 09/788,339

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 16, 18-20, and 22-24. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellant claims a solar cell module comprising a solar cell element
3, an incident light transmitting member 1 made of glass which is adhered
by resin 4, and a transparent resin film rear surface member 2 adhered by
resin 4, wherein the solar cell element comprises a semiconductor junction
31-32, the resin for adhering the incident light transmitting member contains
a sodium ion depositing from the incident light transmitting member, and the
solar cell element comprises a one conductive type crystalline
semiconductor substrate 31 between the semiconductor junction and the
resin containing the sodium ion so as to shield a diffusion of sodium ion to
the semiconductor junction (claim 16; Fig. 1).
Representative claim 16 reads as follows:
16. A solar cell module comprising:
a solar cell element;
an incident light transmitting member made of a glass
adhered at a light incidence side of the solar cell element by a
resin; and
a rear surface member comprising a transparent resin
film adhered at a rear surface side of the solar cell element by a
resin, wherein
the solar cell element comprises a semiconductor
junction so as to form an electric field and is sealed with each
of the resin adhering the light incidence side light transmitting
member and the rear surface member,
Appeal 2010-001094
Application 09/788,339

3
the resin for adhering the incident light transmitting
member at the light incidence side of the solar cell element
contains a sodium ion depositing from the incident light
transmitting member, and
the solar cell element comprises a one conductive type
crystalline semiconductor substrate between the semiconductor
junction and the resin containing the sodium ion so as to shield
a diffusion of sodium ion to the semiconductor junction; and
an anti-reflection layer between the one conductive type
semiconductor substrate and the resin containing the sodium
ion, said anti-reflection layer comprising a silicon dioxide layer.
The following references are relied upon by the Examiner as evidence
of obviousness:
Brandhorst, Jr. 4,131,486 Dec. 26, 1978
Mitsui et al. 4,649,088 Mar. 10, 1987
Spitzer 4,667,060 May 19, 1987
Sakata et al. JP 11307791 (as translated) Nov. 5, 1999
Yamagishi et al. 6,300,556 B1 Oct. 9, 2001
Mimura et al. 6,307,144 B1 Oct. 23, 2001

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 16, 18-20, 23, and 24 as unpatentable over JP 791 in view of
Yamagishi, Brandhorst, Spitzer, and Mitsui, with supporting evidence
provided by the Specification;
claims 16, 18-20, and 22 as unpatentable over Brandhorst in view of
Mimura and Mitsui, with supporting evidence provided by the Specification;
and
claims 16, 18-20, and 22 as unpatentable over Mimura in view of
Brandhorst and Mitsui, with supporting evidence provided by the
Specification.
Appeal 2010-001094
Application 09/788,339

4

We sustain each of these rejections based on the findings of fact,
conclusions of law, and rebuttals to argument which are well expressed by
the Examiner in the Answer. The following comments are added for
emphasis and clarification.
Because Appellant does not separately argue the dependent claims, we
focus on sole independent claim 16 in our disposition of this appeal.

The references applied in the rejections evidence that each of the
structural elements and arrangements required by claim 16 were individually
known in the prior art at the time of Appellant's invention. Further, the
Answer contains detailed and convincing rationale in support of the
Examiner's conclusion that it would have been obvious for one with ordinary
skill in this art to combine and arrange these prior art elements in the manner
claimed by Appellant. Finally, the Examiner has provided a sound basis in
fact and technical reasoning for finding that the solar cell module suggested
by the prior art of each rejection inherently would contain sodium ion in the
resin whose diffusion to the semiconductor junction would be shielded by a
conductive type crystalline semiconductor substrate as required by claim 16.
In this latter regard, we (like the Examiner) understand that the
applied references contain no teaching of the shielding function recited in
claim 16. However, the recognition of another advantage flowing naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the difference between the claimed invention and the
prior art would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58,
60 (BPAI 1985), aff’d. mem., 795 F.2d 1017 (Fed. Cir. 1986).
Appeal 2010-001094
Application 09/788,339

5
As correctly indicated in the Answer, Appellant's arguments in the
Appeal Brief against the rejection based on JP 791 as the primary reference
amount to general assertions that the rejection is improper without any
specific explanation of why the Examiner's obviousness rationale is
considered to be erroneous (Ans. 16-19). The Examiner also correctly
points out that Appellant in the Appeal Brief merely reiterates the JP 791
arguments against the rejections based on Brandhorst and Mimura as the
primary references and that such arguments are irrelevant to these rejections
(id. at 19-20). In addition, we observe that Appellant fails to recognize
and/or address the fact that the Examiner's rejections include an inherency
finding and that the Examiner refers to the Specification disclosure, not as
prior art, but as support for this inherency finding.
For these reasons, the Appeal Brief fails to reveal any error in any of
the Examiner's findings including the finding of inherency or any of the
Examiner's conclusions of law.
In the Reply Brief, Appellant presents for the first time arguments
which specifically dispute the Examiner's obviousness rationales for each of
the rejections on appeal. Appellant has not explained why these new
arguments were not presented in the Appeal Brief. Under regulations
governing appeals to the Board, any new argument not timely presented in
the Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See Ex parte Borden, No. 2008-004312, 93
USPQ2d 1473, 1474-77 (BPAI 2010) (informative). Appellant has provided
this record with no such showing. Accordingly, we will not consider the
new arguments in the Reply Brief.
Appeal 2010-001094
Application 09/788,339

6

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
bar

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