International Business Machines Corporation

Patent Trials and Appeals Board

Jan 31, 2022

2021000579 (P.T.A.B. Jan. 31, 2022)

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. 14/870,121 09/30/2015 Michael Haag DE920120024US2 9169 82531 7590 01/31/2022 Lieberman & Brandsdorfer, LLC IBM - Austin 802 Still Creek Lane Gaithersburg, MD 20878 EXAMINER MARTIN, BETHANY LAMBRIGHT ART UNIT PAPER NUMBER 1721 MAIL DATE DELIVERY MODE 01/31/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL HAAG, RUEDIGER KELLMANN, and MARKUS SCHMIDT ____________ Appeal 2021-000579 Application 14/870,121 Technology Center 1700 ____________ Before JEFFREY T. SMITH, GEORGIANNA W. BRADEN, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to finally reject claims 1, 3, and 6-23, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 In explaining our Decision, we refer to the Specification filed September 30, 2015 (“Spec.”); Final Office Action dated February 28, 2020 (“Final Act.”); Advisory Action dated April 30, 2020 (“Adv. Act.”); Appeal Brief filed July 20, 2020 (“Appeal Br.”); Examiner’s Answer dated September 3, 2020 (“Ans.”); and Reply Brief filed October 28, 2020 (“Reply Brief”). 2 Appellant is the Applicant, International Business Machines Corporation (Bib Data Sheet 1), which, according to the Appeal Brief is also the real party in interest (Appeal Br. 3). Appeal 2021-000579 Application 14/870,121 2 We AFFIRM. The Claimed Subject Matter Appellant’s disclosure relates to a solar cell and, in particular, a method and system for increasing the efficiency of a solar cell by increasing the thickness of a contact grid to reduce resistance in the cell. Spec. ¶¶ 2, 6; Abstract. “The contact grid is further provided with at least one solder ball pre-formed in a mold and transferred from the mold to the contact grid.” Id. ¶ 6. “The melting of the solder ball softens the solder material such that the solder adheres to the contact grid, and increases the thickness of the contact grid to a second thickness.” Id. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (Appeal Br. 26) (disputed claim language italicized): 1. A solar cell comprising: a diode comprising an active layer in communication with a substrate; a contact grid embedded between the substrate and a first solder layer, the contact grid being comprised of a conducting material in communication with the active layer; and the first solder layer of varying cross-sectional thickness and in communication with the contact grid forming a resulting structure, including: a relatively planar first surface in communication with the contact grid and a second surface oppositely disposed from the first surface, the second surface comprising at least two non- planar segments and a planar segment positioned between the at least two non-planar segments, each of the non-planar segments having a first Appeal 2021-000579 Application 14/870,121 3 measurement extending from the first surf ace to the second surf ace, the planar segment having a second measurement extending from the first surface to the second surface, wherein the first measurement is greater than the second measurement. The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Ishikawa et al. US 2009/0194151 A1 Aug. 6, 2009 (“Ishikawa”) Fukushima et al. US 2010/0288328 A1 Nov. 18, 2010 (“Fukushima”) Tohoda US 2013/0074903 A1 Mar. 28, 2013 The Examiner’s Rejection On appeal, the Examiner maintains (Ans. 4) the following rejection: claims 1, 3, and 6-23 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tohoda, Ishikawa, and Fukushima (Ans. 4; Final Act. 9). OPINION We review the appealed rejections for error based upon the issues Appellant identifies and in light of the arguments and evidence produced thereon. Cf. 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) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that Appellant has identified reversible error, and we Appeal 2021-000579 Application 14/870,121 4 affirm the Examiner’s rejection of claims 1, 3, and 6-23 under 35 U.S.C. § 103 for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 13 In rejecting claim 1, the Examiner finds that “[t]he term ‘solder layer’ is considered a product-by-process limitation and will be given patentable weight only as it imparts structural requirements onto the resulting layer.” Final Act. 9. The Examiner explains that the claim term “solder layer” “does not include liquid metal but instead a solid metal layer which has been deposited as solder onto an electrode grid.” Id. at 2. The Examiner concludes: “In view of the instant disclosure and definition of the term, the ‘solder layer’ is structurally and functionally indistinct from a metal layer.” Id. at 3. The Examiner, accordingly, finds that printed silver layer 21 and 22 of Tohoda teaches or suggests this limitation. Id. at 9. Appellant argues that the Examiner reversibly erred in finding that the claim term is a product by process limitation. Appeal Br. 17. Appellant’s argument that “solder” and “solder layer” are nouns (Appeal Br. 17-18) is unpersuasive because whether a claim limitation is one of a product-by- process limitation does not depend on whether a claim term is a noun. In any event, Appellant seems to agree with the Examiner that “[t]he patentability of a product does not depend on its method of production” (In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“The patentability of a product does not depend on its method of production. If the product in a 3 Appellant argues against the rejection of claims 1, 6, 9, 14, 15, 18-20, and 23 as a group. See Appeal Br. 10. We select claim 1 as the representative claim for this ground of rejection. See id. Appeal 2021-000579 Application 14/870,121 5 product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”), because Appellant argues that the claim term “solder layer” is a structural limitation. Appeal Br. 17. As the Examiner points out, however, Appellant “fails to address what structure is required by the term ‘solder layer.’” Adv. Act. 2. Appellant cites In re Nordt Dev. Co., LLC, 881 F.3d 1371 (Fed. Cir. 2018), in support of Appellant’s argument. Appeal Br. 17. The specification in Nordt “connotes an integral structure” (Nordt, 881 F.3d at 1375), where “the structural nature of [the claim term at issue] can be gleaned from the plain claim language and the specification itself” (id. at 1376). To the contrary, the Specification in this case does not describe any particular structure imparted by the claim term “solder layer” other than the Examiner’s finding that it is structurally a metal layer. See Final Act. 2. The Examiner additionally construes the claim term “solder layer” to mean “a metal or metallic alloy used when melted to join metallic surfaces.” Final Act. 2. Appellant does not explicitly offer Appellant’s own interpretation and only argues that the Examiner’s interpretation that “solder layer” “should not be construed to mean a layer of solder, is misplaced.” Appeal Br. 14.4 Appellant instead argues that references such as Ishikawa 4 In the Reply Brief, Appellant discusses the Examiner’s claim construction for the first time. Reply Br. 3. Appellant, however, remains silent on Appellant’s own claim construction and only states that “the Examiner omits part of the very definition from Merriam-Webster upon which the Examiner replies.” Id. It is unclear if Appellant’s proposed construction is what Appellant considers “[t]he full definition of solder from www.merriam- Appeal 2021-000579 Application 14/870,121 6 and Fukushima show that an ordinary skilled artisan would not understand the conductive paste in Tohoda to be a solder layer. Id. at 15. Appellant argues that the prior art conductive paste “is made of a paste of insulating resin adhesive in which conductive particles are dispersed” and that Tohoda “does not refer to this paste as solder or a solder coating layer.” Id. at 10. Appellant’s arguments are unpersuasive for several reasons. From the outset, Appellant’s arguments do not address the Examiner’s finding that electrode 21 - which is a distinct structure from resin paste 12 - teaches the recited “solder layer” based on their structural identity. Compare Appeal Br. 10, with Final Act. 9 (finding that silver layer 21 and 22 of Tohoda teaches the recited “solder layer”). webster.com/dictionary/solder.” Id. In any event, Appellant does not distinguish the prior art structure based on any definition of the term “solder layer.” See, e.g., Appeal Br. 10-18; see, e.g., Reply Br. 3-9. Moreover, an argument raised for the first time in a Reply Brief can be considered waived if Appellant does not explain why it could not have been raised previously. 37 C.F.R. § 41.41(b)(2); see Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). A new argument advanced in such a manner has not afforded the Examiner an opportunity to respond to the new argument. In this case, Appellant does not explain why the argument regarding the Examiner’s claim construction could not have been raised in the opening brief and our decision therefore is based solely on the arguments timely raised in the opening brief. Appeal 2021-000579 Application 14/870,121 7 Appellant’s arguments are unpersuasive also because a prior art reference can teach a claimed invention even if it describes the claimed subject matter using different terms. See In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) (“[A]lthough appellants would have us hold that Hildebrandt fails as an anticipation because it does not contain a description of the subject matter of the appealed claims, ipsissimis verbis, we cannot countenance a result which so obviously exhalts [sic] form over substance.”). Additionally, Appellant’s arguments are unpersuasive because “apparatus claims cover what a device is, not what a device does.” Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellant’s arguments do not structurally distinguish the prior art, either under the Examiner’s claim construction or Appellant’s own (although Appellant declines to explicitly offer such a construction). See Appeal Br. 10 (arguing that the prior art “paste is not a solid metal (silver)” without structurally distinguishing the prior art). Appellant’s arguments regarding the term “solder” in references such as Ishikawa and Fukushima likewise do not provide structural limitations to the claim term. Appellant’s arguments that Tohoda teaches away from “the use of solder and ‘a solder coating layer’ by contrasting its conductive paste against solder and solder coating layers” (Appeal Br. 12) are unpersuasive. Tohoda states that “the bonding of the solar cell module and the wiring material with each other using the solder requires the solder to be melted” and “the solar cell might be damaged or deformed” due to the high temperature involved in the melting process. Tohoda ¶ 7 (cited in Appeal Br. 12). To the extent that Tohoda teaches the soldering process using heat may damage the solar cell, Appeal 2021-000579 Application 14/870,121 8 it does not teach away from the recited “solder layer” as a structure. See Hewlett-Packard Co., 909 F.2d at 1468 (holding that “apparatus claims cover what a device is, not what a device does.”). Tohoda “also describes a technique of electrically connecting an electrode of a solar cell with a wiring material including a conductive body coated with solder” and “a technique of achieving satisfactory electrical connection between the electrode of the solar cell and the wiring material by pressing and embedding the electrode of the solar cell in the solder coating layer.” Tohoda ¶ 10 (cited in Appeal Br. 12). Figure 5 of Tohoda illustrates a comparative embodiment that includes a solder coating layer. Id. ¶¶ 71-74 (cited in Appeal Br. 12). Appellant does not sufficiently explain why these paragraphs of Tohoda “criticize, discredit, or otherwise discourage” the recited “solder layer” as a structure of a metal layer and we are unpersuaded that these parts of Tohoda teach away from the recited structure. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that a reference does not teach away “because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Appellant next argues that the Examiner reversibly erred in finding that electrode 27a of Ishikawa teaches “a contact grid embedded between the substrate and a first solder layer” as recited in claim 1. Appeal Br. 18.5 Appellant argues, without elaboration, that “the combination of Tohoda and 5 Appellant argues that the Final Rejection is unclear as to whether the Examiner relies on electrode 27a or electrode 27b of Ishikawa for the teaching. Appeal Br. 18. The record before us, however, unambiguously shows that the Examiner cites “a metallic adhesion promoting layer between an electrode contact grid and the active layer of a cell (27a Fig. 2[)]” for the teaching. Final Act. 10. Appeal 2021-000579 Application 14/870,121 9 Ishikawa places the first electrode layer 27a directly in contact with a solder layer in a manner that Ishikawa teaches adversely affects adhesion and performance.” Id. at 20 (emphases removed). Appellant’s argument is unpersuasive because it does not adequately explain why the Examiner’s proposed combination would have such an adverse effect. In any event, Appellant’s argument is unsupported by evidence and such “[a]ttorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Appellant lastly argues that the Examiner reversibly erred in combining Tohoda with Fukushima. Appeal Br. 21. Appellant argues that “Tohoda’s alleged undulating contact grid is a conductive paste, whereas Fukushima’s alleged contact grid is a metal foil.” Id (emphases removed). Appellant argues that the Examiner’s proposed combination “involves transposing a shape used for a metal film to a layer made of an entirely different material, specifically the paste of Tohoda, which Fukushima distinguishes and criticizes in paragraph 0005[.]” Id (emphases removed). Appellant argues that “[t]he applied art is devoid of a teaching or suggestion of why a person of ordinary skill in the art would modify Tohoda’s projections to incorporate Fukushima’s projections.” Id. at 23 (emphases removed). Appellant’s arguments are not persuasive. From the outset, Appellant’s argument that Fukushima teaches away from an adhesive (Appeal Br.21; Reply Br. 8) is unpersuasive because the claim language does not recite such a structure. Appellant’s argument that neither Tohoda nor Fukushima teaches the Examiner’s proposed modification (Appeal Br. 23) is unpersuasive because “evidence of a motivation to combine need Appeal 2021-000579 Application 14/870,121 10 not be found in the prior art references themselves, but rather may be found in ‘the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.’” Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (citation omitted). Moreover, as the Examiner explains, “Tohoda and Fukushima both disclose textured electrodes for the exact same purpose” and a skilled artisan would have combined the teachings based on the knowledge that “the surface textures set forth in Tohoda, i.e., corrugation, may be replaced with any one of the textured surfaces set forth in Fukushima[.]” Final Act. 11. The issue of whether the contact grid in Tohoda and Fukushima uses the same or different material as Appellant argues, however, does not address the Examiner’s rationale that it is within the ordinary skill to use the prior art textures for their known functions. We find Appellant’s invention is no more the combination of familiar elements according to known functions, as shown by the Examiner, which yields predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We, thus, determine that the Examiner’s rationale for combining the references is based on articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See id. at 418. Claims 7, 8, 21, & 22 The sole argument that Appellant raises here is with respect to claim 7 which depends from claim 1 and additionally recites “second solder layer positioned in communication with the first solder layer.” Dependent claim 21 recites the same “second solder layer.” Appellant argues that the recited “second solder layer” is a structural limitation. Appeal Br. 24. Appeal 2021-000579 Application 14/870,121 11 Based on our analysis supra including the fact that Appellant does not structurally define the recited “solder layer” and that Appellant does not structurally distinguish the recited “solder layer,” we affirm the rejection of claims 7, 8, 21, and 22. Compare Appeal Br. 24 (arguing only that claims 7 and 21 are structural limitations without specifying what the structures are), with Final Act. 13-14 (finding “no structural distinction between the two layers of solder as they would melt and form a singular metal layer upon cooling”). Claims 10-13, 16 & 17 The sole argument that Appellant raises here is with respect to independent claim 10 which recites “solder” instead of “solder layer.” Appellant argues that Tohoda’s teaching of a paste teaches away from solder. Appeal Br. 24-25. Appellant does not argue that the “solder” recited in claim 10 is structurally different from the “solder layer” recited in claim 1. Based on our analysis supra, Appellant’s argument is unpersuasive. Accordingly, we affirm the Examiner’s rejection of claims 1, 3, and 6-23 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of Tohoda, Ishikawa, and Fukushima. DECISION SUMMARY In summary: Appeal 2021-000579 Application 14/870,121 12 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6-23 103 Tohoda, Ishikawa, Fukushima 1, 3, 6-23 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED