DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Summary
This is the response to the Amendment/Request for Reconsideration filed on 12/23/2025.
Claims 1, 4, 6-7 and 20-21 remain pending in the application.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 4, 6-7 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (Adv. Energy Mater. 2015, 5, 1401952) in view of Werner at al. (US 2009/0179189).
Addressing claims 1 and 4, Song discloses an organic photovoltaic device comprising one or more layers comprising one or more organic and/or organometallic compounds (the device comprising DBP:C70 compounds on page 3 of 6 and in table 2), wherein one or more of these layers is an active layer (active layer made of DBP:C70) that has a root-mean-square surface roughness ranging from about 5 nm to about 10 nm (the claimed range would have been obvious to one of ordinary skill in the art based on the teaching of Song for the following reasons:
Firstly, the application does not provide any unexpected results associated with the claimed range of root-mean-square surface roughness ranging from about 5 nm to about 10 nm. In fact, it appears that the preferred root-mean-square surface roughness is about 4 nm as stated in paragraph [0023] of the specification. Indeed, Fig. 1 and paragraph [0028] of current application disclose the lone example where the DBP:C70 active layer formed by OVPD has a roughness of RMS = 4.1 ± 0.2 nm, which is exactly the same as that of Song (RMS = 4.1 ± 0.2 nm in page 1 of 6).
Secondly, the difference between the claimed range of RMS and that disclosed by Song is merely 0.7 nm, which is a minute value, and absent evidence of unexpected result associated with the claimed range, the MPEP establishes that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close” (MPEP 2144.05, section I). In other words, the claimed range of RMS would have been obvious to one of ordinary skill in the art based on the closeness of the RMS value disclosed by Song and that of the claimed range absent evidence of unexpected results.
Thirdly, the RMS value of 4.1 ± 0.2 disclosed by Song falls within the range of “about 5 nm” (emphasis added), which further establishes the case of prima facie case of obviousness.
Fourthly, Song discloses that “the rougher, nanocrystalline surfaces of the DBP:C70 active layers grown by OVPD effectively pin the overlying amorphous Bphen, thereby preventing morphological changes. Hence, OPVs grown by OVPD have the highest PCE = 6.7% ± 0.2%, and experience little change in Voc, PCE or device yield when similarly aged” (emphasis added). In other words, the roughness of the underlying DBP:C70 active layers affect the photovoltaic conversion efficiency as well as maintaining stable Voc, PCE or device yield of the OPVs over an extended period of time. Therefore, absent evidence of unexpected results, one would have arrived at the claimed range of root-mean-square surface roughness from about 5 nm to about 10 nm when perform routine experimentation with the surface roughness of Song’s active layer in order to optimize the photovoltaic conversion efficiency and stability of Voc, PCE and device yield of the OPVs over an extended period of time.
In conclusion, the claimed range of root-mean-square surface roughness would have been obvious based on Song’s teaching due to the absent of unexpected results associated with the claimed range, the closeness of the RMS values disclosed by Song in relation to the claimed range and routine experimentation for optimizing the photovoltaic conversion efficiency and stability of Voc, PCE and device yield of the OPVs over an extended period of time); and
another of these layers is a blocking layer (Bphen layer disclosed in Experimental section),
wherein the active layer (active layer made of DBP:C70) has a nanocrystalline morphology that is deposited by organic vapor phase deposition (second paragraph in the left column of page 5 of 6) and the blocking layer is deposited onto the active layer by VTE such that the nanocrystalline morphology pins a morphology of the blocking layer (second paragraph in the left column of page 5 of 6) and the organic vapor phase deposition results in a buffer layer (Bphen layer; the Bphen layer disclosed by Song is the structural equivalence to the claimed blocking layer and the buffer layer when the blocking layer and buffer layer are read in light of the specification; paragraph [0021] of current application discloses Bphen as the blocking layer and also as cathode buffer layer; paragraph [0026] of current application further states that Bphen is a buffer layer; therefore, the Bphen layer disclosed by Song is the structural equivalence to the claimed blocking layer and buffer layer) having a surface roughness greater than 1.2 nm (RMS = 1.2 ± 0.2, page 1 second paragraph in the left column of Song, which includes a value that is greater than 1.2, the RMS of the Bphen layer increases to 2.2 ± 0.4 nm, which also falls within the claimed range; Song further discloses that the roughness of the underlying active layer also affects the morphology of the overlying Bphen layer; therefore, absent evidence of unexpected results, one would have arrived at the claimed surface roughness of greater than 1.2 nm when perform routine experimentation with the surface roughness of the underlying active layer in order to optimize the photovoltaic conversion efficiency and stability of Voc, PCE and device yield of the OPVs over an extended period of time).
Song further discloses OVPD has many advantages over VTE, including effective control of the film morphology, high material utilization efficiency, scalability for uniform growth over the substrate and enhanced device lifetime (first paragraph of page 1 of 6).
Song is silent regarding the blocking layer is deposited by organic vapor phase deposition.
Werner discloses a method of depositing an electron-transport layer made of Bphen by either VTE or OVPD [0055].
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the organic photovoltaic device of Song substituting the known VTE process of forming the Bphen layer with the known OVPD process disclosed by Werner in order to obtain the predictable result of forming a Bphen layer on an underlying substrate (Rationale B, KSR decision, MPEP 2143). Additionally, the OVPD process for forming the Bphen layer offers advantages over the VTE process, such as effective control of the film morphology, high material utilization efficiency, scalability for uniform growth over the substrate and enhanced device lifetime (Song, first paragraph of page 1 of 6).
Addressing claims 6-7, Song discloses the layer deposited by organic vapor phase deposition comprises DBP:C70 compounds that satisfy the claimed limitations.
Addressing claims 20-21, the limitations of current claims are drawn to the properties of the organic photovoltaic device that do not structurally differentiate the claimed photovoltaic device from that of the prior art for the following reasons. With respect to the limitation “a higher yield of at least 90%”, it appears that the claimed property, according to the originally filed disclosure, was tabulated from multiple devices, which does not structurally differentiate the claimed singular photovoltaic device from that of the prior art since a single photovoltaic device in and of itself does not have the claimed higher yield property. Specifically, paragraph [0024] states “the as-grown yield of VTE-grown devices was >90% and reduced to <70% after aging”, paragraph [0025] states “OVPD-grown active layer devices experienced little change in Voc or PCE from an initial value … these devices maintained a yield of >90% throughout an aging process and paragraph [0026] further states that the decrease in yield associated with VTE-grown devices is due to morphological degradation and electrically short thin-film devices. Moreover, Song discloses in page 1 first paragraph of the right column that the OPVs grown by OVPD experience little change in device yield during the aging process, which indicates a higher yield of at least 90%. The device of Song is a PVPD-grown active layer device, which has the yield of greater than 90% that is maintained throughout an aging process as claimed according to the Applicants’ own disclosure in paragraph [0025]. Therefore, the limitations “a higher yield of at least 90%” and the higher yield is maintained throughout an aging process do not structurally differentiate the claimed photovoltaic device from that of the prior art.
Response to Arguments
Applicant's arguments filed 12/23/2025 regarding the 35 USC 103 rejection of claims 1, 4, 6-7 and 20-21 as being unpatentable over Song in view of Werner have been fully considered but they are not persuasive for the following reasons:
With respect to the Applicants’ first argument that the Office has put the cart before the horse by asserting that “the application does not provide any unexpected results associated with the claimed range of root-mean-square surface roughness” because the Office fails to establish a prima facie case of obvious. The argument is acknowledged. It is reiterated that the statement “the application does not provide any unexpected results associated with the claimed range of root-mean-square surface roughness” is factually correct and establishes the basis for prima facie case of obviousness as discussed in the second, third and fourth points in the rejection above. It is noted that the Applicants have not provided any evidence to show that the claimed range of root-mean-square surface roughness is associated with any unexpected results.
With respect to the Applicants’ second argument that the difference between the lower point of the claimed range of 5 nm to the value 4.3 nm disclosed by Song is not a “minute value” because it is an increase of over 16%. The Applicants’ math is acknowledged however the difference is still only 0.7 nm, which is a minute value. Furthermore, the Applicants have not provided any evidence to show that the difference in 0.7 nm would result in any unexpected results.
With respect to the Applicants’ third argument that the RMS value of 4.1 ± 0.2 nm of Song does not fall within the range of “about 5 nm” because, according to the Applicants, about 5 nm would be understood, at best, to range from 4.5 to 5.4 nm. The assertion is acknowledged; however, section 2144.05 of the MPEP entitled “ Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions” establishes that In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%), which negates the Applicants’ argument because the patentability of the claimed range does not necessarily has to follow conventional rounding scenarios, especially when the claimed range is not shown to be associated with any unexpected results.
With respect to the Applicants’ fourth argument that nothing in Song teaches or suggests a surface roughness parameter for the Bphen layer, nor does it specify an optimum deposition method for Bphen or blocking layers in general and as a result, parameters for routine experimentation alleged by the Office are not present in Song. The argument is not persuasive because the parameters for the routine experimentation is done to the surface roughness of the active layer, which is the surface roughness range under discussion, and not to the Bphen layer as asserted by the Applicants. It is argued that Song provides evidence that motivates one to perform routine experimentation with the surface roughness of the active layer because the surface roughness of the active layer affects the surface roughness of the overlying Bphen layer by pinning the overlying Bphen layer to prevent morphological changes that would affect the aforementioned properties of the photovoltaic device. Therefore, absent unexpected results associated with the claimed range, one would have arrived at the claimed range of root-mean-square surface roughness from about 5 nm to about 10 nm when perform routine experimentation with the surface roughness of Song’s active layer in order to optimize the photovoltaic conversion efficiency and stability of Voc, PCE and device yield of the OPVs over an extended period of time.
For the reasons above, Examiner maintains the position that claims 1, 4, 6-7 and 20-21 are unpatentable over the disclosure of Song in view of Werner.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BACH T DINH/Primary Examiner, Art Unit 1726 01/12/2026