Ex Parte ZeiraDownload PDFBoard of Patent Appeals and InterferencesAug 10, 201011109365 (B.P.A.I. Aug. 10, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte EITAN C. ZEIRA ____________ Appeal 2009-011116 Application 11/109,365 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, 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 2009-011116 Application 11/109,365 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-17. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appellant invention is directed to a photovoltaic device, such as a solar cell, and corresponding methods. Claim 1 is illustrative: 1. A device comprising: a first conductor ink; an electron acceptor ink contacting the first conductor ink; an electron donor ink contacting the electron acceptor ink; a second conductor ink contacting the electron donor ink; a collector ink contacting the second conductor ink; and a substrate, wherein the first conductor ink, electron acceptor ink, electron donor ink, second conductor ink and collector ink are arranged in a stack disposed on the substrate, and the device is configured as a photovoltaic device. Independent claim 13 is a method which requires providing an ink for each layer, and independent claim 15 is a method which requires “using a printing method” for each recited layer. The Examiner maintains, and Appellant appeals, the following rejections under 35 U.S.C. § 103(a): 1) Claims 1, 2, 5-8, and 10-16 as unpatentable over the combined prior art of Nelles2, Chiba3 and Li4. 2 U.S. Patent Publication 2002/0117201 A1 (2002). 3 U.S. Patent Publication 2002/0134426 A1 (2002). 4 U.S. Patent 6,372,154 B1 (2002). 2 Appeal 2009-011116 Application 11/109,365 2) Claims 3 and 4 as unpatentable over Nelles, Chiba, Li, and Glenn5. 3) Claim 9 as unpatentable over the combined prior art of Nelles, Chiba, Li, and Nakamura6. 4) Claim 17 as unpatentable over Nelles, Chiba, Li, and Kubota7. Appellant argues the claim rejected in the first rejection as a group, and do not offer any additional arguments specific to the second, third and fourth rejections (Br. 7-8). Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select independent claim 13 as the representative claim on which our discussion will focus. ISSUE Did the Examiner err in determining that the claimed device (and corresponding methods) would have been obvious over the combined prior art of Nelles, Chiba and Li because, as alleged by Appellant, the prior art teaches away from using an ink for each layer as required by claim 1? We answer this question in the negative. PRINCIPLES OF LAW Obviousness In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper 5 U.S. Patent 6,531,653 B1 (2003). 6 U.S. Patent 6,291,763 B1 (2001). 7 U.S. Patent Publication 2001/0015221 A1 (2001). 3 Appeal 2009-011116 Application 11/109,365 to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. A reference "teaches away" when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the Appellant’s invention; the degree of teaching away will of course depend on the particular facts. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).8 ANALYSIS with Factual Findings We adopt the factual findings and reasoning of the Examiner (Ans. 3- 10; Final Office Action pp. 2-7) and add the following primarily for emphasis. It is well established that the prior art as a whole must be considered. Appellant’s contention that there is no suggestion to combine the teachings of the references because Nelles teaches away from the use of a printing method (which would require an ink) for its semiconducting oxide layer (SOL) (generally App. Br.; Rep. Br.) is unavailing as all three references concern a photovoltaic device (e.g., solar cell) and collectively suggest that printing methods for the various layers of these cells were known. The Examiner’s position that thermal deposition methods and printing methods (that require an ink) were known alternatives for all of the various layers of a solar cell, and that the artisan was aware of the relative advantages of each of these alternatives, is reasonable (see, Ans. 9). Indeed, 8 See also Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state that it “should not” or “cannot” be used in combination with other features in the prior art.) 4 Appeal 2009-011116 Application 11/109,365 Appellant does not dispute the Examiner’s findings that Chiba teaches screen printing of a SOL electron layer in a solar cell (Ans. 9). Furthermore, while Nelles specifically teaches that its invention is one in which a “semiconducting oxide layer (SOL) is introduced by thermal deposition”, none of the independent claims even require a SOL, as aptly pointed out by the Examiner (Ans. 10). The Examiner’s findings exemplify that the use of ink via a printing method would have been nothing more than using a known technique in accordance with its known function for the predictable result of creating the various layers in a solar cell. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Accordingly, the evidence as a whole supports the Examiner’s conclusion of obviousness, and on the record before us, we sustain the § 103 rejections of claims 1-17 as maintained by the Examiner.9 DECISION We affirm the Examiner’s § 103 rejections. 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)(iv). AFFIRMED APJ Initials: 9 Only those arguments actually made by Appellant have been considered in this decision. Arguments which could have made but Appellant chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). 5 Appeal 2009-011116 Application 11/109,365 tc FISH & RICHARDSON PC P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 6 Copy with citationCopy as parenthetical citation