Ex Parte Zeira

Board of Patent Appeals and Interferences

Aug 10, 2010

11109365 (B.P.A.I. Aug. 10, 2010)

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