Songwei Lu

Patent Trials and Appeals Board

Aug 7, 2019

13678631 - (D) (P.T.A.B. Aug. 7, 2019)

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.
13/678,631 11/16/2012 Songwei Lu 07004940A1 8457
144411 7590 08/07/2019
Vitro Flat Glass LLC
Legal - IP
400 Guys Run Road
Cheswick, PA 15024
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
08/07/2019 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):
patents@webblaw.com
vitroip@vitro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SONGWEI LU
____________

Appeal 2018-005831
Application 13/678,631
Technology Center 1700
____________

Before CATHERINE Q. TIMM, GEORGIANNA W. BRADEN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–5 and 7–14.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant is the Applicant, Vitro S.A.B. de C.V., which, according to the
Appeal Brief, is also the real party in interest. Appeal Brief filed February
23, 2018 (“App. Br.”), 3.
2 Claims 15–18 stand withdrawn from consideration. Final Office Action
entered July 13, 2017 (“Final Act.”), 1.
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STATEMENT OF THE CASE
Appellant claims a solar cell. App. Br. 4–5. Independent claims 1
and 13 illustrate the subject matter on appeal, and are reproduced below with
contested language italicized:
1. A solar cell, comprising:
a first substrate having a first surface and a second
surface;
a haze coating over at least a portion of the first surface,
the haze coating comprising an oxide coating incorporating
nanoparticles, wherein the nanoparticles comprise titania;
a first conductive layer over at least a portion of the
second surface;
a semiconductor layer over the first conductive layer; and
a second conductive layer over at least a portion of the
semiconductor layer.

13. A solar cell, comprising:
a first float glass substrate having a tin side and an air
side;
a haze coating over at least a portion of the tin side, the
haze coating comprising silica incorporating nanoparticles,
wherein the nanoparticles comprise titania;
a first conductive layer over at least a portion of the air
side, the first conductive layer comprising oxides of one or
more of Sn and In;
a semiconductor layer over the first conductive layer, the
semiconductor layer comprising a material selected from the
group consisting of monocrystalline silicon, polycrystalline
silicon, amorphous silicon, cadmium telluride, and copper
indium selenide/sulfide; and
a second conductive layer over at least a portion of the
semiconductor layer, the second conductive layer comprising
oxides of one or more of Sn and In.

App. Br. 14–16 (Claims Appendix) (emphasis added).

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The Examiner maintains the following rejections in the Examiner’s
Answer entered March 19, 2018:
I. Claims 1, 2, 5, and 7–10 under 35 U.S.C. § 103(a) as
unpatentable over Fukawa3 in view of Remington4;
II. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Fukawa in view of Remington, Cho,5 and Ye6;
III. Claims 3, 4, and 11 under 35 U.S.C. § 103(a) as unpatentable
over Fukawa in view of Remington and Hirata7; and
IV. Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable
over Fukawa in view of Remington and Hirata.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–5 and 7–14 under 35 U.S.C. § 103(a), 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

3 Fukawa et al., US 2006/0065299 A1, published Mach. 30, 2006
(“Fukawa”).
4 Remington, Jr., US 2009/0233084 A1, published September 17, 2009
(“Remington”).
5 Cho et al., US 2008/0088932 A1, published April 17, 2008 (“Cho”).
6 Ye, US 6,106,892, iss. Aug. 22, 2000.
7 Hirata et al., EP 1 189 288 A1, published March 20, 2002 (“Hirata”).
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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.”)).
Rejection I: claims 1, 2, 5, and 7–10 under 35 U.S.C. § 103(a)
as unpatentable over Fukawa in view of Remington
Appellant presents arguments for claim 1 only, and thus, in effect,
argues claims 1, 2, 5, and 7–10 as a group. App. Br. 7–11. We accordingly
select claim 1 as representative, and decide the appeal as to claims 1, 2, 5,
and 7–10 based on claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Fukawa discloses solar cell 10 that comprises, in the following order,
substrate 2 having a top surface incident to light (first surface) and a bottom
surface opposite the top surface (second surface), titanium oxide layer 3,
silicon oxide layer 4, tin oxide layer 5 (first conductive layer), first
photoelectric conversion layer 6 (semiconductor layer), second photoelectric
conversion layer 7, and electrode layer 8 (second conductive layer). Fukawa
¶¶ 1, 7, 79, 80; Fig. 2.
Appellant does not dispute the Examiner’s finding that solar cell 10
disclosed in Fukawa includes all the features of the solar cell recited in claim
1, except that solar cell 10 does not have a haze coating over at least a
portion of the top surface (first surface) of substrate 2 comprising an oxide
coating incorporating nanoparticles comprising titania. Compare Final Act.
3 (citing Fukawa ¶¶ 60, 66, 82, and Figs. 1 and 2), with App. Br. 7–11. The
Examiner relies on Remington to address this feature missing from
Fukawa’s solar cell 10. Final Act. 3–4.
Remington discloses an anti-reflective coating comprising a silicon
oxide matrix in which titanium oxide nanoparticles are embedded.
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Remington ¶ 1. Remington discloses applying the coating to a glass
substrate, and indicates that the coating increases the transmission of visible
light into the substrate by at least about 3.0% to 3.5% when applied to one
side of the substrate. Remington ¶ 1, 17.
In view of these disclosures in Remington, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art at the time
of Appellant’s invention to modify Fukawa’s solar cell 10 by adding an anti-
reflective coating comprising a silicon oxide matrix in which titanium oxide
nanoparticles are embedded, as disclosed in Remington, to the top surface
(first surface) of Fukawa’s substrate 2, to increase light transmission into
solar cell 10. Final Act. 3–4.
Appellant argues that, like the coating disclosed in Remington,
titanium oxide layer 3 and silicon oxide layer 4 of Fukawa’s solar cell 10
“are antireflective coatings.” App. Br. 9–10. Appellant argues that although
Remington discloses that the anti-reflective coating described in the
reference can be used in a solar cell, Remington “does not specify where in
the solar cell this coating should be placed.” App. Br. 8. Appellant argues
that “[b]y combining Fukawa and Remington,” one of ordinary skill in the
art would not have arrived at the solar cell of claim 1, but, instead, would
have replaced Fukawa’s silicon oxide layer with Remington’s silicon oxide
coating including nanoparticles, because Fukawa’s layer 4 is also a silicon
oxide layer, “just without nanoparticles.” App. Br. 10. Appellant argues
that the Examiner does not explain why one of ordinary skill in the art would
have added Remington’s anti-reflective coating to Fukawa’s solar cell 10
rather than replacing Fukawa’s silicon oxide layer with Remington’s
coating, and why one of ordinary skill in the art would have placed
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Remington’s coating on the opposite side of Fukawa’s photoelectric
conversion layers 6–8. App. Br. 11.
The Examiner responds by explaining that because light can reflect
from opposing surfaces of a glass substrate, it can be advantageous to apply
anti-reflective coatings to both such surfaces, which Appellant does not
dispute. Compare Ans. 8, with Reply Br. 2–4. The Examiner also finds that
Remington discloses that anti-reflective coatings can be applied to opposing
surfaces of a substrate. Ans. 8 (citing Remington ¶ 39). In view of this
disclosure in Remington, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention to modify Fukawa’s solar cell 10 by applying an anti-reflective
coating to the top, light-incident surface of substrate 2, to “reduce reflection
of light from that surface of the glass.” Ans. 8–9.
Appellant argues that “[w]hile Remington states that the opposing
substrate’s surface may be coated, it does not state what the coating [can
be].” Reply Br. 3. Appellant argues that the “mere fact” that an anti-
reflective coating could be applied to opposing surfaces of a substrate “is not
enough to explain why one would do this,” because the “prior art cited in
this rejection does not show two anti-reflective coatings on opposing sides of
a glass substrate.” Reply Br. 2–4. Appellant argues that the Examiner’s
rejection is, therefore, based on improper “hindsight reasoning.” Id.
The disclosure in Remington relied on by the Examiner, however, that
“the opposing surface of the substrate also may be coated” must be read in
the context of the reference as a whole, particularly taking into consideration
the disclosures in the paragraph preceding this statement. The preceding
paragraph—paragraph 38 of Remington—describes Remington’s Figure 4,
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which is a “flowchart illustrating a process for applying an nano-particle
loaded metal oxide (e.g., anti-reflective or AR) coating to a glass substrate
using combustion deposition in accordance with an example embodiment.”
Paragraph 38 indicates that in step S400 of the exemplary process show in
Figure 4 “a substrate (e.g., a glass substrate) having at least one surface to be
coated is provided.” (Emphasis added). Paragraph 38 further indicates that
step S402 shown in Figure 4 involves forming a reagent mixture, step S404
shown in Figure 4 involves introducing a precursor and a nano-particle
inclusive solution or colloid to be combusted by a burner, step S406 shown
in Figure 4 involves combusting the reagent mixture and the precursor and
nano-particle inclusive solution to form combusted materials, and step S408
shown in Figure 4 involves positioning the substrate so that it is heated
sufficiently to allow the first and second combusted materials to produce
small nucleation particle size distributions and nano-particle size
distributions, which form an anti-reflective coating on the substrate.
Importantly, paragraph 39 then states, “[a]lso, optionally, in one or more
steps not shown, the opposing surface of the substrate also may be coated.”
Contrary to Appellant’s arguments, one of ordinary skill in the art
reading paragraphs 38 and 39 of Remington together, rather than considering
paragraph 39 in isolation, would have understood that paragraph 38
describes application of an anti-reflective coating to a first surface of a glass
substrate, and paragraph 39 indicates that the same anti-reflective coating
may also be applied to the opposing surface of the substrate. This disclosure
in Remington, coupled with the Examiner’s uncontroverted finding that
applying an anti-reflective coating to opposing surfaces of a glass substrate
can be advantageous because light can reflect from both surfaces, reasonably
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would have led one of ordinary skill in the art to apply an anti-reflective
coating as disclosed in Remington to the top surface (first surface) of
substrate 2 of Fukawa’s solar cell 10, to reduce or prevent light from
reflecting from this surface, even if titanium oxide layer 3 and silicon oxide
layer 4 of Fukawa’s solar cell 10 are antireflective coatings, as Appellant
asserts.
Because Remington discloses application of anti-reflective coatings to
opposing sides of a glass substrate, the Examiner’s rejection is not based on
improper hindsight reasoning as Appellant argues. Appellant’s arguments
are, therefore, unpersuasive of reversible error in the Examiner’s rejection of
claim 1, and we accordingly sustain the Examiner’s rejection of claims 1, 2,
5, and 7–10 under 35 U.S.C. § 103(a).
Rejections II and III: claims 3, 4, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Fukawa in view of Remington and additional references
To address these rejections, Appellant relies on the arguments
Appellant presents for claim 1 (discussed above), and argues that the claims
subject to these grounds of rejection are patentable “for the same reasons
that claim 1 is patentable over the combination of Fukawa and Remington.”
App. Br. 12. Because we are unpersuaded of reversible error in the
Examiner’s rejection of claim 1 for the reasons discussed above, Appellant’s
position as to these rejections is also unpersuasive of reversible error.
Rejection IV: claims 13 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Fukawa in view of Remington and Hirata
Appellant argues claims 13 and 14 together on the basis of
independent claim 13, to which we accordingly limit our discussion. Reply
Br. 4–5.
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Similar to the rejection of claim 1 discussed above, the Examiner
relies on Fukawa’s disclosure of solar cell 10 that comprises, in the
following order, substrate 2 having a top surface incident to light (first
surface) and a bottom surface opposite the top surface (second surface),
titanium oxide layer 3, silicon oxide layer 4, tin oxide layer 5 (first
conductive layer), first photoelectric conversion layer 6 (semiconductor
layer), second photoelectric conversion layer 7, and electrode layer 8
(second conductive layer). Final Act. 7; Fukawa ¶¶ 1, 7, 79, 80; Fig. 3.
The Examiner also relies on Remington’s disclosure of applying an
anti-reflective coating comprising a silicon oxide matrix in which titanium
oxide nanoparticles are embedded to opposing surfaces of a glass substrate
(discussed above). Final Act. 8; Remington ¶¶ 1, 38, 39.
The Examiner finds that Hirata discloses a photoelectric conversion
device (solar cell) that comprises antireflection film 1 containing fine
particles and a binder, glass sheet 2, underlying film 3, transparent
conductive film 4 formed of tin oxide (first conductive layer), photoelectric
conversion unit 5 (semiconductor layer), photoelectric conversion unit 6, and
back electrode 7 (second conductive layer), “stacked in this order from the
light incident side.” Final Act. 8; Ans. 9–10; Hirata ¶¶ 20, 21, 34, Fig. 2.
Hirata discloses that underlying film 3 may have a two-layer structure that
includes a high refractive index film formed of, for example, titanium oxide,
and a low refractive index film formed of, for example, silicon oxide, with
the high refractive index film positioned next to glass sheet 2. Hirata ¶¶ 36–
38, Fig. 2. Appellant does not dispute the Examiner’s finding that the
titanium oxide and silicon oxide layers of Hirata’s underlying film 3 form an
anti-reflective coating. Compare Ans. 9–10, with Reply Br. 4–5. Nor does
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Appellant dispute the Examiner’s finding that Hirata, therefore, discloses
anti-reflective coatings applied to opposing surfaces of a glass substrate—
antireflection film 1 and underlying film 3 positioned on opposing surfaces
of glass sheet 2. Compare Ans. 9–10, with Reply Br. 4–5; Hirata Fig. 2.
The Examiner notes the correspondence between the layers of
Hirata’s photoelectric conversion device (solar cell) and Fukawa’s solar cell
10, particularly between glass sheet 2, high refractive index titanium oxide
layer and low refractive index silicon oxide layer of underlying film 3, and
tin oxide film 4, of Hirata’s photoelectric conversion device (solar cell), and
substrate 2, titanium oxide layer 3, silicon oxide layer 4, and tin oxide layer
5, of Fukawa’s solar cell 10. Ans. 9. The Examiner provides the following
drawing to illustrate this correspondence, which includes an annotated copy
of Fukawa’s Figure 2 next to an annotated copy of Hirata’s Figure 1:

Id. The above drawing depicts the solar cell illustrated in Figure 2 of
Fukawa and the photoelectric conversion device (solar cell) illustrated in
Figure 1 of Hirata.
In view of the similarity between Fukawa’s solar cell 10 and Hirata’s
photoelectric conversion device (solar cell), and in view of Remington’s
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disclosure of applying an anti-reflective coating to opposing surfaces of a
glass substrate, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of Appellant’s invention to modify
Fukawa’s solar cell 10 to include an anti-reflective coating comprising a
silicon oxide matrix in which titanium oxide nanoparticles are embedded, as
disclosed in Remington, on the top, light-incident surface (first surface) of
Fukawa’s substrate 2, as disclosed in Hirata (antireflection film 1). Final
Act. 8; Ans. 9–10.
Appellant argues that although Hirata’s underlying film 3 may have a
multi-layer structure including a high refractive index material and a low
refractive index material, its primary function is to prevent the diffusion of
alkaline components from the glass sheet. Reply Br. 5. Appellant argues
that “when thinking about Hirata, one of ordinary skill in the art would be
primarily concerned that the underlying film 3 provides a barrier layer
between the glass and the fluorine doped tin oxide.” Id (citing Hirata ¶ 36).
Appellant’s arguments, however, do not take into consideration the
entirety of Hirata’s disclosures relating to underlying film 3. Hirata
discloses that “underlying film 3 is often provided to prevent the diffusion of
alkaline component from a glass sheet and to adjust the optical
characteristics of the glass sheet with a transparent conductive film.” Hirata
¶ 36 (emphasis added). Hirata goes on to explain that the “underlying film
is formed so that the glass sheet with a transparent conductive film has a
light transmittance of 75% or more in the wavelength region of 800 to 900
nm with the underlying film interposed between the glass sheet and the
transparent conductive film.” Id.
Hirata thus discloses that underlying film 3 not only prevents
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diffusion of alkaline components from glass sheet 2, but also adjusts the
optical characteristics of the sheet by affecting the sheet’s light
transmittance. Because Appellant’s arguments ignore this latter function of
underlying film 3, Appellant’s arguments are unpersuasive of reversible
error in the Examiner’s conclusion that the combined disclosures of Fukawa,
Remington, and Hirata would have suggested modifying Fukawa’s solar cell
10 to include an anti-reflective coating comprising a silicon oxide matrix in
which titanium oxide nanoparticles are embedded, as disclosed in
Remington, on the top, light-incident surface (first surface) of Fukawa’s
substrate 2, as disclosed in Hirata (antireflection film 1). In re Mercier, 515
F.2d 1161, 1165 (CCPA 1975) (“[A]ll of the relevant teachings of the cited
references must be considered in determining what they fairly teach to one
having ordinary skill in the art.”).
We, therefore, sustain the Examiner’s rejection of claims 13 and 14
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejections of claims 1–5 and 7–14 under
35 U.S.C. § 103(a).
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