SUMITOMO CHEMICAL COMPANY, LIMITED

Patent Trials and Appeals Board

Oct 15, 2021

2020005561 (P.T.A.B. Oct. 15, 2021)

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.
15/767,875 04/12/2018 Giovanni FERRARA Q239249 1070
23373 7590 10/15/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
BARTON, JEFFREY THOMAS
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
10/15/2021 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIOVANNI FERRARA and TAKAHIRO SEIKE
Appeal 2020-005561
Application 15/767,875
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant, which refers to “applicant” as defined in 37 C.F.R. § 1.42,
identifies the real party in interest as Sumitomo Chemical Company,
Limited. Appeal Br. 3.
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Application 15/767,875

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CLAIMED SUBJECT MATTER
The claims are directed to an organic photoelectric conversion
element with a getter material-containing electrode in which the getter
material resides at least partly in interstitial spaces within the electrode.
Claim 1, reproduced below with the limitations of most interest italicized, is
illustrative of the claimed subject matter:
1. An organic photoelectric conversion element
comprising:
a layered structure comprising a pair of electrodes
comprising a first electrode and a second electrode; and
an active layer provided between the pair of electrodes,
wherein,
at least one electrode of the pair of electrodes is a getter
material-containing electrode,
wherein the getter material-containing electrode
comprises a conductive material layer having interstitial spaces
and at least one kind of getter material,
wherein the interstitial spaces are permeated by a first
harmful substance contained in the layered structure, and the
getter material is capable of reacting with the first harmful
substance and is contained in at least a part of the interstitial
spaces.
Appeal Br. 16 (Claims Appendix) (emphasis added).
REJECTIONS
Claims 1–11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Sumitomo (JP 2011-119684, published June 6, 2016 (as translated) in
view of Elevam (JP 06-050230, published July 8, 1994 (as translated)).
Final Act. 3.
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Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Sumitomo in view of Elevam, and further in view of Giannantonio et al. (US
2008/0226902 A1, published Sept. 18, 2008). Final Act. 8.
Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sumitomo in view of Elevam, and further in view of Chen
et al. (US 2010/0301375 A1, published Dec. 2, 2010). Final Act. 9.

OPINION
Rejection of Claims 1–11 as Obvious over Sumitomo and Elevam
In arguing against the rejection of claims 1–11 under 35 U.S.C. § 103
as being unpatentable over Sumitomo in view of Elevam, Appellant does not
argue any claim apart from the others. Appeal Br. 7–12. We select claim 1 as
representative for resolving the issues on appeal.
After reviewing the Examiner’s rejection and Appellant’s arguments,
we determine that the following issues arise:
1. Has Appellant identified a reversible error in the Examiner’s
finding that Elevam is within the scope of the prior art one of ordinary skill
in the art should be charged with knowing, i.e., is Elevam analogous art?
2. If Elevam is analogous art, has Appellant identified a reversible
error in the Examiner’s finding of a reason to substitute Sumitomo’s
conductive layer and getter-layer combination with Elevam’s electrode,
which is a porous sintered compact containing getter material in the pores?
3. Lastly, has Appellant identified a reversible error in the Examiner’s
determination that Appellant’s comparison of Examples 1 and 2 to
Comparative Examiner’s 1–3 are not probative of unexpected results?
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After weighing the evidence for each of the above questions, we
determine that Appellant has not identified a reversible error.
Non-Analogous Art
Elevam is directed to an electrode used within a fluorescent lamp.
Elevam ¶ 1. There is no dispute that Elevam’s fluorescent lamp is in a
different field of endeavor from Appellant’s organic photoelectric
conversion element. Compare Elevam ¶ 1, with Spec. ¶ 2. The Examiner
finds that, even though Elevam is in a different field, it would have been of
interest to the ordinary artisan because it would have been reasonably
pertinent to the problem with which Appellant was involved, i.e., using a
getter material to absorb harmful substances such as water and oxygen. Final
Act. 5.
A preponderance of the evidence supports the Examiner’s finding.
Elevam, like Appellant, uses a getter material to absorb impurities like water
and oxygen. Elevam ¶¶ 9, 17. Elevam places the getter material either on the
surface of a discharge electrode or includes the getter material in a porous
sintered electrode. Elevam ¶¶ 9, 17. Either way, the getter material serves
the same purpose as the getter material of Appellant, i.e., it serves to absorb
impurities like water and oxygen in the device in which it is placed.
References teaching various electrode structures including getters that
absorb impurities, such as Elevam, would have logically commended
themselves to the attention of an artisan seeking to absorb impurities in other
devices that include electrodes, such as Appellant’s device.
The Examiner’s finding is consistent with the law. As stated by our
reviewing court,
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[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Under the second test,
“[a] reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)). The Examiner has applied the second test.
As pointed out by the Examiner (Ans. 14–15), Appellant does not
address the finding of the Examiner, but instead focuses on the technical
fields of Elevam and Sumitomo and the reasons for combining the teachings
of those references. Appeal Br. 10–11; Reply Br. 7–9. As we state above, the
Examiner has applied the second analogous art test, which focuses on the
problems addressed, not the technical field. We agree with the Examiner that
those arguments fail to identify a reversible error in the Examiner’s finding
that Elevam is analogous art.
Reason to Combine
Appellant further contends that “a person having ordinary skill in the
art would not have had any reason from the teachings of Sumitomo and
Elevam—and certainly would not have had any motivation—to combine the
electrode disclosed in Elevam with the invention of Sumitomo.” Appeal Br.
12. We disagree.
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As found by the Examiner (Final Act. 3–4), Sumitomo teaches an
organic photoelectric conversion element 100 with an electrode 6 covered
with a getter layer 7. Sumitomo, Fig. 1, ¶ 71. The getter layer 7 functions to
adsorb oxygen and water in the organic photoelectric conversion element
100. Id.
As further found by the Examiner, Elevam teaches an electrode, albeit
in fluorescent lamp rather than an organic photoelectric conversion device,
where the getter material performs the same function of absorbing oxygen
and water as Sumitomo’s getter material. Final Act. 4–5. Elevam’s device
has either an electrode covered with a getter layer (Elevam, Fig. 1) or a
porous electrode with getter material within it (Elevam, Fig. 4).
The Examiner’s obviousness conclusion is based, at least in part, on
the similarity in effect of the getter material in Elevam’s device as in
Sumitomo’s device. See Final Act. 5 (“Elevam teaches that the porous
structure (33) with the getter material (34) in the holes can acquire the same
effect of adsorbing water and oxygen.”). This reasoning supports the
conclusion of obvious. When a claim is to a combination that “‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. 398, 417 (2007),
quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976). Thus, we agree
with the Examiner that replacing Sumitomo’s combination electrode and
getter layer with Elevam’s porous electrode containing getter material would
have been obvious as it would have been expected to likewise perform the
electrode function and adsorb water and oxygen. Given Elevam, in fact,
discloses a getter-layer embodiment similar to the getter layer of Sumitomo
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as an alternative to the porous electrode containing getter material, Elevam
further supports the Examiner’s finding of a suggestion to make the
substitution.
Appellant points out that Elevam discusses a problem of generated
particle and powder drop off. Appeal Br. 11–12. That fact does not negate
the fact that the prior art provides evidence that Elevam’s porous
electrode/getter configuration would have been expected to perform the
function of absorbing water and oxygen and, thus, would have been obvious
to use in place of Sumitomo’s electrode and getter-layer combination, which
performs the same function.
Unexpected Results
With regard to Appellant’s arguments regarding further advantages
and unexpected results (Appeal Br. 9–10), we agree with the Examiner’s
determination that the results are not commensurate in scope with the
breadth of the claims. Ans. 13. Further, the comparative examples either
contain no getter or a getter layer on the cover glass. Spec. ¶¶ 93–95. Thus,
the comparison is not to the closest prior art, Sumitomo. Sumitomo includes
a getter layer in contact with the electrode. Sumitomo ¶ 6.
Summary
Because Appellant has not identified a reversible error in the
Examiner’s finding that Elevam is analogous art, the Examiner’s finding of a
suggestion to combine the teachings of Sumitomo and Elevam, or provided
adequate evidence supporting a determination of unexpected results based
on the totality of the evidence, we sustain the Examiner’s rejection of claims
1–11 over Sumitomo in view of Elevam.

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Rejection of Claim 12
To reject claim 12, which requires the getter material comprise
calcium (Ca), the Examiner adds Giannantonio. Final Act. 8. Giannantonio
discloses a list of getter materials that includes both calcium-based
compounds and materials taught by Sumitomo as getter materials.
Giannantonio ¶¶ 42–44. Thus, the Examiner bases the obviousness
conclusion on a finding that the various getter materials are known
alternatives for absorbing impurities such as water and oxygen. Final Act. 8.
Appellant acknowledges that Giannantonio discloses that calcium
works as a getter material, but contends that “Giannantonio does not disclose
that a getter material containing calcium can increase the light transmission
of the electrode by reacting with the harmful substances” and, “[t]herefore,
Giannantonio would not have provided a person having ordinary skill in the
art with a reason or motivation to modify the already modified Sumitomo.”
Appeal Br. 13.
Appellant’s contention is unavailing because the prior art need not
disclose the additional advantage of increasing light transmission. Boston
Scientific v. Cordis, 554 F.3d 982, 991 (Fed. Cir. 2009). “As long as some
motivation or suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992). Sumitomo teaches including a getter
material in contact with the electrode to increase the life span of a
photoelectric conversion device. Sumitomo ¶¶ 3–6. Thus, Sumitomo
provides a reason for including getter material and the prior art—both
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Elevam (¶ 18) and Giannantonio—provide evidence that calcium-containing
compounds were known getter materials.
Appellant further contends that “since calcium gives a remarkable
advantageous effect also in terms of light transparency of the electrode, it
would not have been prima facie obvious to a person having ordinary skill in
the art to use calcium as the getter material in a porous electrode.” Appeal
Br. 13. Again, the prior art need not disclose the additional advantage. And
to the extent Appellant is arguing that they obtain an unexpected result, we
again point out that they do not present a comparison to a device with a
getter layer in contact with the electrode as taught by Sumitomo, the closest
prior art. Nor, as pointed out by the Examiner (Ans. 22), is the data
commensurate in scope with the claims.

Rejection of Claims 13 and 14
To reject claims 13 and 14, the Examiner relies on Sumitomo and
Elevam, and adds Chen. Final Act. 9. Appellant’s only new argument is that
“the above-noted remarkable advantageous effects obtained by the present
claimed invention are not predicted by Sumitomo, Elevam or Chen.” Appeal
Br. 14. But for the reasons we stated above, we do not find that argument
persuasive.

CONCLUSION
The Examiner’s decision to reject claims 1–14 is affirmed.

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Application 15/767,875

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11 103 Sumitomo, Elevam 1–11
12 103 Sumitomo,
Elevam,
Giannantonio
12
13, 14 103 Sumitomo,
Elevam, Chen
13, 14
Overall
Outcome
1–14

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