Joel Souza et al.

Patent Trials and Appeals Board

May 20, 2020

2019006155 (P.T.A.B. May. 20, 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.
13/103,490 05/09/2011 Joel P. de Souza YOR920100053US1 9398
33233 7590 05/20/2020
LAW OFFICE OF CHARLES W. PETERSON, JR. Yorktown
12793 Thacker Hill Ct.
Suite 1B
Oak Hill, VA 20171
EXAMINER
GOLDEN, ANDREW J
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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):
Bill@CWPeterson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOEL P. DE SOUZA, HAROLD JOHN HOVEL,
DANIEL INNS, JEEHWAN KIM, CHRISTIAN LAVOIE,
CONAL EUGENE MURRAY, DEVENDRA K. SADANA,
KATHERINE L. SAENGER, GHAVAM SHAHIDI, DAVOOD
SHAHRJERDI, and ZHEN ZHANG

____________

Appeal 2019-006155
Application 13/103,490
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 2–9, 11–13, 16–22, 25, and 28–34
under 35 U.S.C. § 103 as unpatentable over at least the combined prior art of
Watanabe (JP 2002-252358, published Sept. 6, 2002; as translated),
Brandhorst (US 4,131,486; issued Dec. 26, 1978), Thornton (Schottky-

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies International Business Machines
Corporation as the real party in interest (Appeal Br. 2).
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Barrier Elevation by Ion Implantation and Implant Segregation, in 17
ELECTRONICS LETTERS 485 (1981)), and Qiu et al. (A Comparative Study of
Two Different Schemes to Dopant Segregation at NiSi/Si and PtSi/Si
Interfaces for Schottky Barrier Height Lowering, 55 IEEE TRANSACTION ON
ELECTRON DEVICES 396 (2008)).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 25 is illustrative of the subject matter on appeal:
25. A method of forming a Schottky barrier solar cell,
comprising:
providing a semiconductor wafer with a lightly-doped
absorber;
forming at least one of a p-doped region and a high work
function region on a surface of the lightly-doped absorber; and
forming at least one of a n-doped region and a low work
function region abutting the lightly-doped absorber surface and
being spaced apart from the at least one of p-doped region or high
work function region, a Schottky barrier junction being formed
at least at one of the abutted regions;

2 The additional reference of Atanackovic (US 2009/0038669 A1; published
Feb. 12, 2009) was applied to independent claim 20 and all claims
dependent thereon, and is listed in the Summary Table located at the end of
this Decision. The additional references of Kaye (US 3,359,137; issued Dec.
19, 1967), Jiun-Hua Guo & Jeffrey E. Cotter (Laser-Grooved Backside
Contact Solar Cells With 680-mV Open-circuit Voltage, IEEE Transactions
on Electron Devices, vol. 51, (2004)), and Borland (US 2010/0037942 A1;
published Feb. 18, 2010) were applied to various dependent claims and are
also listed in the Summary Table. A discussion of these references is not
necessary for disposition of this Appeal.
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driving in a dopant to the surface of lightly-doped absorber
at said Schottky barrier junction, driving in said dopant
comprising:
implanting dopant into at least one of said low work
function region and said high work function region; and
annealing said lightly-doped absorber in a drive-in anneal,
said implanted dopant diffusing to the abutted absorber surface,
the drive-in anneal forming a dopant-segregated interface at said
respective absorber surface, said dopant-segregated interface
adjusting the Schottky barrier potential difference to at least 0.2
volts, wherein the Schottky barrier solar cell includes at least one
work function region with said dopant-segregated interface.

Independent claims 20 and 32 are likewise directed to a “method of
forming a Schottky barrier solar cell” comprising steps similar to those of
claim 25, with claim 20 reciting an additional “passivating” step3 (Appeal
Brief Claims Appendix 15, 17). Appellant argues the claims as a group,
focusing on limitations common to independent claims 20, 25, and 32, and
they do not present additional arguments for any claim (Appeal Br. 6–11).
For convenience, our discussion refers to claim 25. We have considered the
Appellant’s arguments to the extent applicable to each ground of rejection.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the

3 Atanackovic is relied upon in the rejection of claim 20 for the obviousness
of such a passivating step (e.g., Final Act. 8). A discussion of this reference
is not necessary for disposition of this Appeal.
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Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant does not present any arguments directed to the Examiner’s
findings and reasoning with respect to Watanabe’s method of forming a
Schottky barrier solar cell, or Bradhorst’s lightly doped absorber step, or
Atanackovic’s passivating step, or Thornton’s silicon induced dopant
segregation (SIDS) step for driving the dopant down to form a dopant
segregated interface at a solar cell Schottky barrier (e.g., Appeal Br. 7, 8,
11). Rather, Appellant’s main contention is since Thornton uses a silicon
induced dopant segregation (SIDS), it would not have been obvious to
modify further with Qiu’s exemplified alternative method using silicide as a
diffusion source (SADS) (Appeal Br. 9 (Appellant states “SIDS and SADS
are alternatives and not combinable methods.”)). Appellant contends that
replacing SIDS as taught by Thornton with SADS as taught by Qiu changes
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the principle of operation of Thornton and, therefore, is non-obvious
(Appeal Br. 9; Reply Br. 4). Appellant also argues that Qiu teaches away
from replacing SIDS with SADS and that SADS uses two separate steps,
silicidation and dopant incorporation, which one would view as
disadvantageous over a SIDS single step (Appeal Br. 10). Appellant’s
arguments are not persuasive of reversible error for reasons presented by the
Examiner (Ans. 35–44).
It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact).
One of ordinary skill in the art would have inferred and readily
appreciated that a known SADS technique, such as explicitly taught in Qiu
to be an alternative to the SIDS technique of Thornton, may be useful in
making the Schottkey barrier solar cell of Watanabe/Brandhorst (or
Watanabe/Brandhorst/Atanackovic) (e.g., Ans. 40-44). Indeed, as pointed
out by the Examiner, Qiu discusses that SADS has a benefit in that it
“addresses the adverse effect of dopant on silicidation [SIDS] by separating
silicidation from dopant incorporation” (Qiu, Abstract p. 396; also see the
Conclusion p. 402; e.g., Ans. 37, 38). Thus, an artisan of ordinary skill
would have weighed the advantages and disadvantages of these two known
dopant techniques, SIDS as taught in Thornton and the alternative SADS
(and SIDS) taught in Qiu. “The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
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modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8
(Fed. Cir. 2000).
Furthermore, contrary to Appellant’s argument that SIDS and SADS
cannot be combined (Appeal Br. 8, 9), Qiu teaches that SIDS and SADS
could be combined (Qiu, p. 402, bottom left column; Ans. 40).
Likewise, Appellant’s arguments that Qiu impermissibly changes the
principle of operation of Thornton (Appeal Br. 4; Reply Br. 2) are also
unpersuasive for the reasons given above, mainly that SIDS and SADS are
known (alternative) methods and the use of either one (or both) would have
been within the ordinary skill in the art. That is, the arguments fail to
account for “the inferences and creative steps that a person of ordinary skill
in the art would employ.” See KSR, 550 U.S. at 418.
Thus, Appellant has not shown reversible error in the Examiner’s
obviousness determination of the claimed method. See KSR, 550 U.S. at 417
(the predictable use of known prior art elements or steps performing the
same functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted).
Accordingly, we sustain the Examiner’s rejections of independent
claim 25, as well independent claims 20 and 32, and all claims dependent
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thereon, noting that no claims are separately argued, even those separately
rejected (Appeal Br. generally).

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
25, 30–34 103 Watanabe,
Brandhorst,
Thornton, Qiu
25, 30–34
2–9, 13, 16,
18–20, 22,
28, 29
103 Watanabe,
Brandhorst,
Atanackovic,
Thornton, Qiu
2–9, 13, 16,
18–20, 22,
28, 29

214 103 Watanabe,
Brandhorst,
Atanackovic,
Thornton, Kaye,
Qiu
21
11, 17 103 Watanabe,
Brandhorst,
Atanackovic,
Thornton, Qiu,
Guo
11, 17
12 103 Watanabe,
Brandhorst,
Atanackovic,
Thornton, Qiu,
Borland
12

4 Although the Examiner refers to claims 10 and 21 in this rejection (Ans.
16; Final Act. 17), claim 10 apparently was earlier cancelled, as the
Examiner does not list it (on the cover sheet of the Final Act.), and the
Appellant does not list it (Appeal Br. 6) nor include it in the Claims
Appendix.
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
Overall
Outcome

2–9, 11–13,
16–22, 25,
28–34

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)(1)(iv).

AFFIRMED