First Solar, Inc.

Patent Trials and Appeals Board

Apr 5, 2021

2020002811 (P.T.A.B. Apr. 5, 2021)

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.
15/682,718 08/22/2017 David Eaglesham 59504-US-CNT 7926
109944 7590 04/05/2021
MacMillan, Sobanski and Todd, LLC - FIRST SOLAR
One Maritime Plaza, 5th Floor
720 Water St.
Toledo, OH 43604
EXAMINER
MOWLA, GOLAM
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
04/05/2021 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):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID EAGLESHAM, AKHLESH GUPTA, and
PETER V. MEYERS1
____________

Appeal 2020-002811
Application 15/682,718
Technology Center 1700
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to photovoltaic devices. E.g.,
Spec. ¶ 2; Claim 1. Claim 1 is reproduced below from page 10 (Claims
Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as First
Solar, Inc. Appeal Br. 3.
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1. A photovoltaic device comprising:
a transparent conductive layer on a substrate;
a first semiconductor layer including a wide bandgap
semiconductor;
a second semiconductor layer having a surface, wherein the
second semiconductor layer includes a CdTe alloy wherein Te is
at least partially replaced by Se and wherein Cd is at least
partially replaced by Hg; and
an interfacial layer in contact with the second semiconductor
layer;
wherein the interfacial layer maintains a chemical potential of the
second semiconductor layer at a controlled level.
ANALYSIS
Claims 1 and 3–20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Munteanu2 and Dutta.3 The Appellant argues the claims
as a group. We select claim 1 as representative, and the remaining claims on
appeal will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Non-
Final Action dated March 1, 2019, and in the Examiner’s Answer.
The Examiner finds that Munteanu teaches a photovoltaic device
comprising each limitation of claim 1 except that Munteanu discloses a
second semiconductor layer of CdTe without specifying that “Te is at least

2 US 2008/0092946 A1, published Apr. 24, 2008.
3 US 2007/0034250 A1, published Feb. 15, 2007.
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partially replaced by Se and . . . Cd is at least partially replaced by Hg,” as
required by claim 1. Ans. 3–4. The Examiner finds, however, that “Dutta
explicitly discloses that CdHgSeTe is a well-known semiconductor material
that is used to form a semiconductor layer of a solar or photovoltaic cell.”
Id. at 4. The Examiner finds, and the Appellant does not dispute, that
Dutta’s CdHgSeTe constitutes a “semiconductor layer [that] includes a CdTe
alloy wherein Te is at least partially replaced by Se and wherein Cd is at
least partially replaced by Hg,” as recited by claim 1. Id. The Examiner
determines that it would have been obvious to substitute Dutta’s CdHgSeTe
for Munteanu’s CdTe “because selection of a known material based on its
suitability for its intended use support[s] a prima facie obviousness
determination.” Id.
The Appellant first argues that Munteanu discloses CdTe among “a
list of fifty materials that may be included as a semiconductor in a layer,”
and that Dutta discloses CdHgSeTe among “a list of more than 50
compositions.” Appeal Br. 5, 6.
That argument is not persuasive because the prior art’s disclosure of
“a multitude of effective combinations does not render any particular
formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989). In that regard, we observe that, although
Munteanu does not expressly disclose CdHgSeTe, it does disclose CdTe,
and it also discloses both HgTe (i.e., replacing Cd with Hg) and CdSe (i.e.,
replacing Te with Se). Munteanu ¶ 40. In addition to the fact that Dutta
expressly discloses the suitability of CdHgSeTe for use as a semiconductor
layer in photovoltaic devices, Dutta ¶ 19, the Examiner’s proposal is
effectively the combination of three different compositions (CdTe, HgTe,
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and CdSe), each independently taught by Munteanu as suitable for the same
purpose, in order to form another composition to be used for the very same
purpose. Such combinations typically do not result in nonobvious subject
matter. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima
facie obvious to combine two compositions each of which is taught by the
prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.”).
The Appellant also argues that the Examiner has not adequately
established a reason to combine Munteanu and Dutta, and that the proposed
combination would change Munteanu’s principle of operation because
Munteanu “touts the presence of semiconductor grains” whereas Dutta’s
semiconductor is allegedly “characterized by the substantial absence of grain
boundaries.” Appeal Br. 6–8.
Those arguments are not persuasive of reversible error in the
rejection. The Examiner is not proposing a change to the grain structure of
Munteanu; the Examiner is proposing the use of a known material
(CdHgSeTe) according to its established function (semiconductor layer in
photovoltaic device). The use of a known material according to its
established function typically does not result in nonobvious subject matter.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); see also id. at
416 (“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”). The
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Appellant does not persuasively argue that it would have been beyond the
ordinary level of skill in the art to make the proposed combination.
Moreover, even if the proposed modification did require a change to
Munteanu’s grain structure, the Appellant fails to show that such would
change the “principle of operation” of Munteanu. The Examiner finds that
Munteanu’s principle of operation “is to convert light to electricity,” which
would be the same when modified by Dutta. Ans. 15. The Appellant does
not persuasively dispute that finding in the Reply Brief.
We are not persuaded of reversible error in the Examiner’s rejection
of claim 1.4 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections . . . .”).
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. § References Affirmed Reversed
1, 3–20 103(a) Munteanu, Dutta 1, 3–20
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

4 We decline to consider the new arguments in the Reply Brief because they
are untimely. See Reply Br. 1–2 (raising arguments about the Examiner’s
specific findings concerning the structure of Munteanu); see also 37 C.F.R.
§ 41.41(b)(2).