GIGA SOLAR MATERIALS CORP.

Patent Trials and Appeals Board

Dec 22, 2020

2020000310 (P.T.A.B. Dec. 22, 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.
14/920,140 10/22/2015 CHIH-HSIEN YEH TSA1-PAU09US 5184
97066 7590 12/22/2020
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
12/22/2020 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 2020-000310
Application 14/920,140
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, and 4–9.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., Giga Solar Materials Corp. (Application Data Sheet
filed October 22, 2015 at 5), which is also identified as the real party in
interest (Appeal Brief filed June 13, 2019 (“Appeal Br.”), as revised
February 3, 2020, at 4).
2 See Appeal Br. 10–13; Reply Brief filed October 2, 2019 (“Reply Br.”) at
4–6; Final Office Action entered February 28, 2019 (“Final Act.”) at 3–6;
Examiner’s Answer entered August 28, 2019 (“Ans.”) at 4–7.
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I. BACKGROUND
The subject matter on appeal relates to a conductive paste and articles
having such a paste applied thereon (Specification filed October 22, 2015
(“Spec.”) at 1, ll. 5–7). Representative claim 1 is reproduced from the
Claims Appendix to the Appeal Brief, as follows:
1. A conductive paste for forming a front electrode in a solar
cell, the 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-lithium-oxide, based on
the weight of solids, wherein the tellurium oxide is present in an
amount of about 60 wt.% to about 90 wt.%, the bismuth oxide is
present in an amount of about 0.1 wt.% to about 20 wt.%, the
lithium oxide is present in an amount of about 0.1 wt.% to about
20 wt.% and aluminum oxide is present in an amount of about
0.5 wt.% to about 3 wt.%; 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 conductive paste is free from silica.
(Appeal Br. 15).
II. REJECTION ON APPEAL
Claims 1, 2, and 4–9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Park et al.3 (“Park”) (Ans. 4–7; Final Act. 3–6).

3 WO 2014/126293 A1, published March 20, 2013. The Examiner relies on
the corresponding published United States Application US 2016/0013331
A1, published January 14, 2016, as an English language translation (Ans. 4).
Therefore, our citations are to the published United States application.
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III. DISCUSSION
1. Grouping of Claims
The Appellant relies on the same arguments for all claims on appeal,
focusing only on independent claim 1 (Appeal Br. 10–13). Therefore,
claims 2 and 4–9 stand or fall with claim 1, which we select as
representative. 37 C.F.R. § 41.37(c)(1)(iv).
2. The Examiner’s Position
The Examiner’s findings and reasoning in support of the rejection are
found in the Answer at pages 4–7 and the Final Action at 3–4. We adopt
them as our own, except as discussed below. In re Cree, Inc., 818 F.3d 694,
698 n.2 (Fed. Cir. 2016); In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir.
1995).
3. The Appellant’s Contentions
The Appellant contends that no reasonable expectation of success in
using aluminum oxide, as specified in claim 1, exists because Park teaches
aluminum oxide as one oxide among a large number of oxides that includes
31 other oxides (Appeal Br. 10). According to the Appellant, the glass frit
composition art is not predictable, as evidenced by the results reported in the
current Specification and Park (Table 1) (Appeal Br. 10). Furthermore, the
Appellant argues that no motivation to select aluminum oxide exists (id. at
11 (citing, e.g., In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994)).
Additionally, the Appellant argues that no motivation to use aluminum oxide
in the more narrow range recited in claim 1 exists (Appeal Br. 12–13). As
for secondary considerations, the Appellant argues that Examples G2, G4,
G8, G10, and G13 discussed in the Specification (Tables 1 and 3) constitute
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evidence of unexpected results in terms of efficiency and resistance over the
examples disclosed in Park’s Table 1 (Appeal Br. 12).
4. Opinion
We have fully considered the Appellant’s arguments and proffered
evidence but find them insufficient to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Contrary to the Appellant’s belief, Baird is not controlling because:
Park discloses the incorporation of aluminum oxide as one of only a limited
number (32) of possible additional metal oxide choices; and Park does not
teach away from using aluminum oxide but, rather, names it as a suitable
choice (Park ¶ 36). Cf. Baird, 16 F.3d at 383 (a prior art “disclosure of
millions of compounds does not render obvious a claim to three compounds,
particularly when that disclosure indicates a preference leading away from
the claimed compounds” (emphases added)).
Instead, other precedents are more on point. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“[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.”); Id. at 421 (“When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp.”); Wm. Wrigley Jr. Co.
v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364–65 (Fed. Cir. 2012)
(explaining that a “strong case of obviousness” exists where the combination
of ingredients recited in the claims were based on selections from a finite
number of identified, predictable solutions); Merck & Co., Inc. v. Biocraft
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Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference]
discloses a multitude of effective combinations does not render any
particular formulation less obvious.”).
The Appellant’s attack on Park regarding the amount of aluminum
oxide that may be added is also without merit. Park teaches an aluminum
oxide amount of 0.1–5 wt.% relative to the total weight of the glass frit (Park
¶ 36), which does not substantially deviate from that recited in claim 1 (“an
amount of about 0.5 wt.% to about 3 wt.%”) (Appeal Br. 15). Cf. Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005) (“[The prior
art]’s disclosed range of concentration also does not exactly correspond to
[the Patentee]’s claimed range. [The prior art]’s disclosure nonetheless
discloses and anticipates [the Patentee]’s particular claimed ‘effective
amount’ ranges.”).
As for unexpected results, we agree with the Examiner (Ans. 6) that
the proffered showing is insufficient because Park’s examples (Park ¶¶ 51–
55) and Examples G2, G4, G8, G10, and G13 in the current Specification
(Spec. Tables 1–3) are not fairly comparative—i.e., back-to-back runs. In re
Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While we do not intend to slight
the alleged improvements, we do not feel it an unreasonable burden on
appellants to require comparative examples relied on for non-obviousness to
be truly comparative. The cause and effect sought to be proven is lost here
in the welter of unfixed variables.”).
In addition, consistent with the Examiner’s position, the Inventors’
Examples G2, G8, and G13 are outside the scope of claim 1 because the
compositions disclosed in these examples include silica, which is explicitly
excluded by the limitation “wherein the conductive paste is free from silica”
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(Appeal Br. 15).4 In this regard, the Appellant’s argument in the Reply Brief
(Reply Br. 4) that “[t]he language of claim 1 does not exclude the inclusion
of silica as one of the components of the lead-free glass frit (b)” is based on
an erroneous understanding of the claim as a whole because the glass frit (b)
component is part of the claimed conductive paste. Hence, Examples G4
and G10 are the only examples with compositions that fall within the scope
of claim 1, but they are not sufficiently comprehensive as to constitute a
showing that is commensurate in scope with claim 1. See, e.g., In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Harris needed to show results
covering the scope of the claimed range. Alternatively Harris needed to
narrow the claims.”).
Lastly, the alleged improvement in terms of efficiency (17.76% and
17.75% for Examples G4 and G8, respectively) over Park’s average of
16.67% (Appeal Br. 12) can hardly be said to be significant, let alone
unexpected. Harris, 409 F.3d at 1344 (“The 32–43% increase in stress-
rupture life . . . does not represent a ‘difference in kind’ that is required to
show unexpected results.”).
Therefore, we sustain the Examiner’s rejection as maintained against
claim 1.

IV. CONCLUSION
For these reasons, we uphold the Examiner’s rejection.

4 As the Appellant points out (Reply Br. 4), the Examiner errs (Ans. 6) in
finding that Examples G4 and G8 have LiO2 amounts (13.5 wt.% and 16.5
wt.%, respectively) outside the range recited in claim 1 (“about 0.1 wt.% to
about 20 wt.%”). The Examiner’s error, however, is harmless as it does not
affect the overall insufficiency of the proffered showing.
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V. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4–9 103  Park 1, 2, 4–9

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