Ex Parte Van Duren et al

Board of Patent Appeals and Interferences

Sep 2, 2011

11395438 (B.P.A.I. Sep. 2, 2011)

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEROEN K. J. VAN DUREN,
MATTHEW R. ROBINSON, and BRIAN M. SAGER
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Appeal 2011-002662
Application 11/395,438
Technology Center 1700
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

Opinion for the Board entered by KIMLIN, Administrative Patent Judge.
Opinion dissenting entered by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3-26, 28, 31-37,
44, 47, 48, and 53-69. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method comprising:

forming a precursor layer on a substrate, wherein the precursor layer
comprises one or more discrete layers comprising:
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a) at least a first layer containing one or more group IB elements and
two or more different group IIIA elements;

b) at least a second layer containing elemental chalcogen particles;
and

heating the precursor layer to a temperature sufficient to melt the
chalcogen particles and to react the chalcogen particles with the one or more
group IB elements and group IIIA elements in the precursor layer to form a
film of a group IB-IIIA-chalcogenide compound;

wherein at least one set of the particles in the precursor layer prior to
heating are inter-metallic particles containing at least one group IB-IIIA
inter-metallic alloy phase.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Kapur 6,127,202 Oct. 3, 2000
Beck 6,518,086 B2 Feb. 11, 2003
Basol 2004/0219730 A1 Nov. 4, 2004
Eberspacher 6,821,559 B2 Nov. 23, 2004
Hollars 6,974,976 B2 Dec. 13, 2005

Richard J. Lewis Sr., Intermetallic Compound in, Hawley’s Condensed
Chemical Dictionary (14th ed., John Wiley & Sons, 2002).

The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1, 3-6, 8-14, 17-26, 28, 31, 35-37, 44, 47, 48, 53-56, 57-67
and 69 over Kapur in view of Eberspacher,
(b) claim 7 over Kapur in view of Eberspacher and Beck,
(c) claims 15, 16, and 68 over Kapur in view of Eberspacher and
Hollars, and
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(d) claims 32-34 over Kapur in view of Eberspacher and Basol.
Claim 1 is also provisionally rejected on the ground of non-statutory
obviousness-double patenting as being unpatentable over claim 1 of
application No. 11/361,523 in view of Kapur and Eberspacher. This
rejection is moot, however, in view of the abandonment of the application.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for the reasons set
forth in the Answer, and we add the following for emphasis only.
Kapur, like Appellants, teaches a method of heating a precursor layer
on a substrate to a temperature sufficient to melt chalcogen particles on the
precursor layer to form a film of a group IB-IIIA-chalcogenide compound.
Kapur uses oxides of the group IB and IIIA elements. While claim 1 on
appeal does not exclude oxide particles, we fully concur with the Examiner
that Eberspacher evidences the obviousness of depositing either oxide
precursor materials or pure elemental metals/alloy precursor particulate
materials for forming thin solar films such as CuInSe2 type layers.1 As
pointed out by the Examiner, Eberspacher
explicitly teaches that multinary metallic coating can be
predictably provided either by directly depositing multinary
metal particles (such as Cu11In9) or conversely layers of
multinary oxide particles can be deposited and subsequently

1 With the exception of claims 26-28, Appellants do not provide separate
arguments for the appealed claims. Accordingly, with the noted exception,
all the appealed claims stand or fall together with claim 1.
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reduced (similarly to the method described by Kapur) (see for
example, col 13 line 63 – col 14 line 20)
(Ans. 5). Eberspacher, like Kapur and Appellants, also teaches depositing
chalcogen on the multinary metal particles to ultimately provide a
chalcogenide layer.
Appellants contend that “no-where does Eberspacher even mention
inter-metallic phases or more specifically, inter-metallic particles” (Br. 6,
last para.). However, Appellants have not rebutted the Examiner’s finding
that Eberspacher teaches “an example of just such an [sic] multinary metallic
particulate alloy Cu11In9 which possesses a compositional ratio that places
that material in a region of its phase diagram other than that of the terminal
solid solution” (Ans. 14 citing col. 13, l. 62 – col. 14, l. 5). We agree with
the Examiner that Appellants’ Specification has not defined inter-metallic
phase materials in such a way that distinguishes materials within the scope
of the appealed claims from those fairly taught by Eberspacher. While the
Dissent states that Appellants’ Specification distinguishes Cu11In9 from the
intermetallic phase Cu1In2, Appellants have not demonstrated that Cu11In9 is
outside the scope of the claimed invention (see Spec. 00115). Indeed, the
Specification discloses that Cu11In9 is a precursor of the invention[00110].
We also do not subscribe to Appellants’ position that the combination
of Kapur and Eberspacher is improper because Kapur only discloses oxide
materials in the precursor layer. Based on the disclosure of Eberspacher, we
share the Examiner’s view that one of ordinary skill in the art would have
reasonably expected that the use of either oxide particles or non-oxide
particles of IB and IIIA elements would be effective in producing the thin
solar cells via particulate precursors. Appellants have not refuted the
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Examiner’s finding that “Eberspacher has explicitly taught that both oxide
precursors and inter-metallic precursors would predictably yield such IB-
IIIA-chalcogenide films” (Ans. 16, first para.).
As for the concentrations recited in claims 26-28, we agree with the
Examiner that it is generally a matter of obviousness for the skilled artisan to
determine the optimum concentrations of compositional components in the
absence of unexpected results, and Appellants have proffered no objective
evidence of such on this record.
Appellants have not presented separate arguments for the Examiner’s
§ 103 rejections citing Beck, Hollars, and Basol.
As a final point, we note that Appellants base no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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)(v).
AFFIRMED

APJ Initials:
ECK
PFK

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Application 11/395,438

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NAGUMO, Administrative Patent Judge, dissenting.
I respectfully dissent.
The supporting specification specifically distinguishes the alloy
Cu9In11 from the intermetallic phase Cu1In2. (Spec. 33 [00104]
through 34 [00106].) Thus, the Examiner’s belated finding (Ans. 5) that
Cu9In11, disclosed by Eberspacher (Eberspacher col. 13, l. 66), would have
been obvious and would satisfy the intermetallic limitation of claim 1, is
incorrect. The Examiner does not appear to have recognized that
intermetallic alloy phases are distinct, chemically and physically, from the
more common solid solution alloys.2
Moreover, beyond a general teaching that metal particles or metal
oxide particles can be deposited and then further treated, I am also unable to
locate substantial support in Eberspacher for the Examiner’s finding that
“Eberspacher teaches their[3] equivalence in predictably reacting with
chalcogen species to form Group IB-IIIA chalcogenide compound films”
(Ans. 5, ll. 14-15). As Appellants point out (Br. 8), Kapur expresses a goal
of using 100% oxides. A significant purpose is to obtain a fixed and
relatively uniform I/III ratio in preparatory film 25, “irrespective of the size
of the substrate or the thickness uniformity of the preparatory film 25.”
(Kapur col. 11, ll. 42-43.) This is important because, according to Kapur,

2 It should be noted that Appellants describe several inventions in the
Specification. Some, such as the ones described at page 35 [00108] through
page 36 [00110], are not covered by the appealed claims.
3 The Examiner evidently means that intermetallic particles are equivalent
to Kapur’s oxide particles (Ans. 5, ll. 12-13)—or, perhaps, to Kapur’s
reduced metal oxide particles.
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that ratio can be maintained upon reduction of the oxides to form the
precursor film 27, and in the subsequent reaction of the intermetallics and
metals with the chalcogen to form the final IB-IIIA-VIA compound film 29
(id. at ll. 43-45). Prior art methods of preparing Group IB-IIIA-VIA
compound films are said to be extremely sensitive to film growth techniques
and parameters (id. at col. 1, ll. 40-44), with undesirable binary phase
problems (id. at ll. 51-55) and phase separation problems (id. at col. 2,
ll. 60-65) making uniformity of the I/III ratio throughout the film difficult to
achieve (id. at col. 3, ll. 12-16). Kapur provides specific methods that are
said to provide improved compound films on large area substrates with good
composition control, uniformity, and superior electronic properties. (Id.
at col. 5, ll. 62-67.) Far more detailed teachings than are provided by
Eberspacher, or far more detailed explanations than are provided by the
Examiner, are needed, in my judgment, to establish the “equivalence” the
Examiner posits.
The Examiner concluded that Kapur itself is incapable of rendering
the claimed process obvious. Appellants have indicated, albeit with less
clarity than those, such as myself, who are not intimately familiar with the
technology, can recognize immediately, that there are significant gaps in the
Examiner’s rejection based on Kapur that the teachings of Eberspacher do
not fill. On the present record, I am unable to demonstrate that the Examiner
has made adequate findings to support the legal conclusion of obviousness,
or that the errors of the Examiner are harmless.
Accordingly, I would reverse.
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