GIGA SOLAR MATERIALS CORP.

Patent Trials and Appeals Board

Dec 14, 2020

2020001421 (P.T.A.B. Dec. 14, 2020)

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.
14/920,160 10/22/2015 CHIH-HSIEN YEH TSA1-PAU11US 3635
97066 7590 12/14/2020
Innovation Capital Law Group, LLP
19800 MacArthur Blvd.
Suite 280
Irvine, CA 92612
EXAMINER
TRAN, UYEN M
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
12/14/2020 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):
eofficeaction@appcoll.com
processing@icaplaw.com
vlin@icaplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIH-HSIEN YEH, PO-YANG SHIH, and
PI-YU HSIN
____________

Appeal 2020-001421
Application 14/920,160
Technology Center 1700
____________

Before CHRISTOPHER C. KENNEDY, JEFFREY R. SNAY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–11.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Giga Solar Materials Corp. as the real
party in interest. Appeal Brief filed August 23, 2019 (“Appeal Br.”) at 4.
2 Final Office Action entered February 1, 2019 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a conductive paste. Appeal Br. 2. Claim 1, the sole
pending independent claim, illustrates the subject matter on appeal, and
reads as follows:
1. A conductive paste comprising:
(a) about 85% to about 99.5% by weight of a conductive
metal based on a weight of solids;
(b) about 0.5% to about 15% by weight of a lead-free glass
frit containing tellurium-bismuth-selenium-lithium-oxide, based
on the weight of solids; and
(c) an organic vehicle;
wherein the weight of solids is the total weight of the
conductive metal (a) and the lead-free glass frit (b ), and
wherein the tellurium oxide is present in an amount of
about 55 wt.% to about 90 wt.%, and the selenium oxide is
present in an amount of about 0.1 wt.% to about 15 wt.% in the
lead-free glass frit, and
wherein the conductive paste does not contain silica.

Appeal Br. 19 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1–11 under 35 U.S.C.
§ 103 as unpatentable over Park (WO 2014/126293, published August 12,
2014) in view of Shu (CN 102476919 A, published May 30, 2012) in the
Examiner’s Answer entered November 8, 2019 (“Ans.”).3
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and

3 The Examiner withdrew the rejection of claims 1–8 under 35 U.S.C. § 103
as unpatentable over Park in view of Schulz, and the rejection of claims 9–
11 under 35 U.S.C. § 103 as unpatentable over Park in view of Schulz and
Carroll, in the Answer. Ans. 8–15.
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each of Appellant’s timely contentions,4 we affirm the Examiner’s rejection
of claims 1–11 under 35 U.S.C. § 103, for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to independent claim 1, and to
claim 3, which depends from claim 1. Appeal Br. 10–13. We, therefore,
select claim 1 as representative of claims 1, 2, and 4–11, and address claim 3
separately. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1, 2, and 4–11
Claim 1 requires the recited conductive paste to include a conductive
metal, a lead-free glass frit containing tellurium oxide, bismuth oxide,
selenium oxide, and lithium oxide, and an organic vehicle.
Park discloses a paste composition for fabricating solar cell electrodes
that includes a conductive metal powder, an organic vehicle, and a lead-free

4 We do not consider the arguments that Appellant presents at pages 5 to 6 of
the Reply Brief because Appellant does not show good cause for raising
these arguments for the first time in the Reply Brief. 37 C.F.R.
§ 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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glass frit comprising 5 to 20 wt% bismuth oxide, 55 to 80 wt% tellurium
oxide, 0.1 to 15 wt% zinc oxide, and 0.1 to 10 wt% lithium oxide. Park ¶¶
7, 17, 23, 36, 40. Park discloses that the glass frit may include at least one
additional metal oxide selected from tungsten oxide, phosphorous oxide,
silicon oxide, magnesium oxide, cerium oxide, strontium oxide,
molybdenum oxide, titanium oxide, tin oxide, indium oxide, vanadium
oxide, barium oxide, nickel oxide, copper oxide, sodium oxide, potassium
oxide, antimony oxide, germanium oxide, gallium oxide, calcium oxide,
arsenic oxide, cobalt oxide, zirconium oxide, manganese oxide, aluminum
oxide, and boron oxide. Park ¶¶ 34, 35. Park discloses that tungsten oxide
may be present in the glass frit in an amount of 0.1 wt% to 10 wt%, and the
one or more additional metal oxides may be present in the glass frit in an
amount of 0.1 to 5 wt %. Park ¶ 35.
The Examiner finds that Park does not disclose that the glass frit
described in the reference includes selenium oxide, and the Examiner relies
on Shu for suggesting inclusion of selenium oxide in Park’s glass frit. Final
Act. 5.
Shu discloses a conductive paste for fabricating solar cell electrodes
that includes a metal powder, an organic vehicle, and a lead-free glass frit
comprising 30 to 70 wt% bismuth oxide, 1 to 20 wt% titanium oxide, 5 to 40
wt% zinc oxide, 5 to 30 wt% antimony oxide, 0 to 30 wt% tellurium oxide, 0
to 10 wt% molybdenum oxide, and 0 to 15 wt% selenium oxide. Shu ¶¶ 7,
8, 18, 19, 32, 33. Shu discloses that the glass frit preferably comprises 5 to
20 wt% tellurium oxide, 1 to 8 wt% molybdenum oxide, and 1 to 10 wt%
selenium oxide. Shu ¶¶ 10, 11. Shu explains that including both
molybdenum oxide and selenium oxide in the glass frit allows the overall
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melting point of the frit to be controlled due to the low melting temperature
of molybdenum oxide and selenium oxide, which facilitates sintering the frit
to “enhance the effect of molten glass frit, thereby effectively improve[ing]
the photoelectric conversion efficiency” of solar cell electrodes produced
from conductive paste including the glass frit. Shu ¶¶ 3, 11, 23, 32.
Shu includes experimental examples that describe the preparation of
solar cells using conductive pastes that include glass powders (frit) having
differing compositions. Shu ¶¶ 37–40. The glass powders (glass frits) of
Shu’s Examples 2 and 5 did not contain molybdenum oxide and selenium
oxide, while the glass powder (glass frit) of Example 1 included both
molybdenum oxide and selenium oxide. Shu ¶ 40. Shu discloses that a solar
cell produced from the conductive paste of Example 1 exhibited “optimal
performance,” while solar cells produced from the conductive pastes of
Examples 2 and 5 exhibited sub-optimal performance, demonstrating “the
role of molybdenum oxide and selenium oxide, to help carry out sintering,
then then enhance the performance of solar cells.” Shu ¶ 44.
In view of these disclosures in Shu, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify Park’s
glass frit to include selenium oxide in an amount as disclosed in Shu because
doing so “would amount to nothing more than the use of a known element
for its intended use in a known environment to accomplish an entirely
expected result.” Final Act. 5.
Appellant argues that “a person having ordinary skill in the art would
not be motivated to take any teaching from Shu and attempt to use this
teaching in the glass frit of Park” because the composition of Park’s glass
frit differs from that of Shu’s glass frit, and Park does not disclose inclusion
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of selenium oxide in Park’s glass frit. Appeal Br. 10, 11. Appellant argues
that Park discloses a tellurium-based glass frit that includes 55 to 80 weight
percent tellurium oxide, while Shu discloses a bismuth-based glass frit that
includes 30 to 70 weight percent bismuth oxide, which, Appellant argues,
shows “the incompatibility of the teaching between Park and Shu.” Id.
Appellant argues that one of ordinary skill in the art would have been led
from Shu’s disclosures to include the essential components of Shu’s glass
frit in Park’s glass frit, rather than the optional selenium oxide component.
Appeal Br. 11.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Park and Shu both disclose conductive pastes used to fabricate solar
cell electrodes that include a metal powder, an organic vehicle, and a lead-
free glass frit. Although the composition of the glass frit disclosed in Park is
not identical to the composition of Shu’s glass frit, and although Park does
not disclose inclusion of selenium oxide in Park’s glass frit, Park and Shu’s
glass frits nonetheless have similar compositions (discussed above) and are
used for the same purpose. Although Shu discloses that selenium oxide is an
optional component of Shu’s glass frit as Appellant argues, Shu nonetheless
further discloses that the glass frit preferably includes selenium oxide, and
Shu describes and exemplifies significant advantages imparted by including
selenium oxide (and molybdenum oxide) in Shu’s glass frit. Appellant’s
arguments do not take into consideration these further disclosures in Shu,
and, therefore, what Shu’s disclosures as a whole reasonably would have
suggested to one of ordinary skill in the art. In re Mercier, 515 F.2d 1161,
1165 (CCPA 1975) (“[A]ll of the relevant teachings of the cited references
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must be considered in determining what they fairly teach to one having
ordinary skill in the art.”).
Shu discloses that including molybdenum oxide and selenium oxide in
a lead-free glass frit effectively improves the photoelectric conversion
efficiency of a solar cell electrode produced from conductive paste including
the glass frit, thus enhancing the performance of the solar cell. This
disclosure reasonably would have suggested including molybdenum oxide
and selenium oxide in Park’s glass frit to improve the photoelectric
conversion efficiency of a solar cell electrode fabricated from a conductive
paste including the glass frit, particularly in view of Park’s explicit
disclosure that molybdenum oxide may be included in Park’s glass frit.
Claim 1 does not exclude molybdenum oxide from the recited glass
frit due to the “comprising” transitional phrase recited in the claim. Gillette
Co. v. Energizer Holdings, Inc. 405 F.3d 1367, 1371-1372 (Fed. Cir. 2005)
(“The word ‘comprising’ transitioning from the preamble to the body signals
that the entire claim is presumptively open-ended.”); In re Baxter, 656 F.2d
679, 686-87 (CCPA 1981) (“As long as one of the monomers in the reaction
is [the claimed] propylene, any other monomer may be present, because the
term ‘comprises’ permits the inclusion of other steps, elements, or
materials.”). The combined disclosures of Park and Shu, therefore, would
have suggested a glass frit as recited in claim 1 to one of ordinary skill in the
art.
Appellant does not provide any objective evidence to support
Appellant’s argument that the teachings of Park and Shu are incompatible
due to compositional differences between Park and Shu’s glass frits. Such
unsupported attorney arguments, therefore, do not negate the suggestion
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stemming from the combined disclosures of Park and Shu to include
selenium oxide in Park’s glass frit. In re Schulze, 346 F.2d 600, 602 (CCPA
1965) (“Argument in the brief does not take the place of evidence in the
record.”); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043
(Fed. Cir. 2017) (“[a]ttorney argument is not evidence” and cannot rebut
other admitted evidence).
Appellant argues that “[t]he glass frit art is highly variable” and “is
not a predictable art.” Appeal Br. 11, 12. Appellant argues that “one skilled
in the art would understand that variations in the composition of a glass frit
results [sic] in substantial changes in its properties.” Appeal Br. 11.
Appellant argues that it is certainly not the case that an additive for a
bismuth-based glass frit as disclosed in Shu “would work in” a tellurium-
based glass frit as disclosed in Park “as can be seen from the numerous
results cited in the art of record, where different glass frits show different
properties.” Appeal Br. 11, 12 (citing Table 1 of Park).
Appellant, however, does not provide any persuasive objective
evidence to support the assertion that the glass frit art is “highly variable”
and “not predictable.” Even if modifying Park’s glass frit to include
selenium oxide as disclosed in Shu would have involved some degree of
unpredictability, it is well-settled that, even in unpredictable arts,
“[o]bviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.” In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (quoting In re O’Farrell,
853 F.2d 894, 903‒04 (Fed. Cir. 1988)).
Appellant’s arguments, in fact, are undermined by Park’s explicit
disclosure that the amounts of bismuth oxide, tellurium oxide, zinc oxide,
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and lithium oxide that are suitable for use in Park’s glass frit can vary
widely, and Park’s disclosure that at least one of 26 additional oxides can be
included in Park’s glass frit. Park ¶¶ 33–35. One of ordinary skill in the art
would have understood such disclosures in Park to implicitly indicate that
wide compositional variations in Park’s glass frit would not render the glass
frit unsuitable for use in fabricating a solar cell electrode, contrary to
Appellant’s arguments. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) ([A]n obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [an
examiner] can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”); see also In re Preda, 401 F. 2d
825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”).
Furthermore, even if variations in the composition of a glass frit result
in substantial changes in its properties as Appellant argues, we find no
evidence on the record before us demonstrating that inclusion of selenium
oxide (and molybdenum oxide) as disclosed in Shu in Park’s glass frit would
adversely affect the properties of Park’s glass frit such that it would no
longer be suitable for use in a conductive paste for fabricating a solar cell.
To the contrary, one of ordinary skill in the art reasonably would have
expected from Shu’s disclosure that including selenium oxide (and
molybdenum oxide) in a glass frit used to form a solar cell electrode
enhances the photoelectric conversion efficiency of the resulting electrode,
that molybdenum oxide and selenium oxide could be successfully included
in Park’s glass frit to improve the photoelectric conversion efficiency of a
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solar cell electrode fabricated using such a glass frit.
Although Appellant argues that “numerous results cited in the art of
record” indicate that “different glass frits show different properties,”
Appellant cites only Table 1 of Park to support this argument. Appellant
does not explain how or why the results presented in Park’s Table 1—even if
the results do show that different glass frits have different properties—
demonstrate that Park’s glass frit could not be successfully modified as
proposed in view of the relied-upon disclosures of Shu. On the record
before us, we find no objective evidence demonstrating that inclusion of
selenium oxide (and molybdenum oxide) as disclosed in Shu in Park’s glass
frit would not yield a glass frit that could be included in a conductive paste
for producing a solar cell exhibiting acceptable performance.
We, accordingly, sustain the Examiner’s rejection of claims 1, 2, and
4–11 under 35 U.S.C. § 103.
Claim 3
Claim 3 depends from claim 1 and recites that “the bismuth oxide is
present in an amount of about 0.1 wt.% to about 15 wt.%, and the lithium
oxide is present in an amount of about 0.1 wt.% to about 15 wt.% in the
lead-free glass frit.”
Appellant argues that “claim 3 further limits the amount of bismuth
oxide to be outside the range disclosed by Shu,” which “further supports the
conclusion discussed above with respect to claim 1—that one skilled in the
art would not be motivated to use any teaching of the bismuth-oxide based
glass frit of Shu in the tellurium-oxide based glass frit of Park.” Appeal Br.
13.
Park, however, discloses a glass frit comprising bismuth oxide in an
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amount of 5 to 20 wt%, which encompasses the range recited in claim 3. As
discussed above, Shu discloses that including molybdenum oxide and
selenium oxide in a glass frit effectively improves the photoelectric
conversion efficiency of a solar cell electrode produced from conductive
paste including the glass frit, which reasonably would have led one of
ordinary skill in the art to include molybdenum oxide and selenium oxide in
Park’s glass frit to improve the photoelectric conversion efficiency of a solar
cell electrode fabricated from a conductive paste including such a glass frit.
The combined disclosures of Park and Shu, therefore, would have suggested
a glass frit as recited in claim 3; consequently, Appellant’s arguments do not
identify reversible error in the Examiner’s rejection of claim 3 under 35
U.S.C. § 103, which we accordingly sustain.
CONCLUSION

Claims

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11 103 Park, Shu 1–11

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