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 RCE filed on 05/15/2026.
Claims 1-9 remain pending in the application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/15/2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 7 and 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Miyazaki et al. (US 2015/0136221).
Addressing claims 1 and 9, Miyazaki discloses a photoelectric conversion element (solar cell element) and a method for manufacturing a photoelectric conversion element, comprising:
forming a photoelectric conversion portion having an electrode layer (9a or 9b) configured to perform photoelectric conversion (inherent function of the photoelectric conversion portion),
forming a first infrared emission layer (layer 13 adjacent to the passivation layer 6 in combination with the third oxide layer 31; layer 13 includes a composite of zirconium oxide or hafnium oxide with aluminum oxide, which are materials that have infrared emissivity; additionally, layer 31 is made of either zirconium oxide or hafnium oxide [0036], which are also materials that have infrared emissivity; therefore, collectively the combination of layer 13 and 31 corresponds to the claimed first infrared emission layer) in direct contact with the electrode layer (Miyazaki implicitly discloses that the electrode layer 9a or 9b is in direct contact with the first infrared emission layer 13+31 because paragraph [0018] discloses that the protective layer 13 and repetitive structure 30, which includes layer 31, are interposed between the second passivation layer and the antireflective layer 7; fig. 3 shows the electrode layer 9a or 9b extends through the antireflective layer 7 and the passivation layer 6 to form direct contact with the upper surface of the layer 3 which implies that the electrode layer 9a or 9b extends through and is in direct contact with the protective layer 13 and layer 31 of the repetitive structure positioned between the passivation layer 6 and the antireflective layer 7) using a first material selected from hafnium oxide or zirconium oxide [0036], and
forming a second infrared emission layer (the combination of the interface layer 13 and layer 32) on and in direct contact with the first infrared emission layer (fig. 5, [0036]) using a second material selected from at least one of SiO2 and Al2O3 (layer 13 includes aluminum oxide and layer 32 is made of aluminum oxide, which has infrared emissivity; therefore, the combination of the layer 13 and 32 corresponds to the claimed second infrared emission layer).
Addressing claim 2, layer 5 in fig. 3 is the claimed substrate on which the photoelectric conversion portion is formed.
Addressing claim 3, paragraphs [0021-0022] disclose the photoelectric conversion portion includes a semiconductor substrate (2 or 3).
Addressing claim 5, fig. 5 shows the first infrared emission layer (13+31) is stacked films in which two or more types of the first material are stacked (layers 13 and 31 both include hafnium oxide material, the claim does not require the types from two layers to be different).
Addressing claim 7, fig. 5 shows the second infrared emission layer (13+32) is stacked films in which layers including two types of the second material are stacked (layers 13 and 32 both include aluminum oxide material, the claim does not require the types from two layers to be different).
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) 1-2, 4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimazaki (US 2006/0243320) in view of Terakado (EP0087217). Further evidence is provided by Sun et al.
Addressing claims 1 and 9, Shimazaki discloses a photoelectric conversion element (1, figs. 1-2) and a method for manufacturing a photoelectric conversion element, comprising:
a photoelectric conversion portion (thin-film solar cell 3) having an electrode layer 14 and configured to perform photoelectric conversion (it is the inherent function of the solar cell);
a first infrared emission layer (SiO2 layer 6) that is formed on and is in direct contact with the electrode layer 14 (layer 5 is optional, which implies the SiO2 layer 6 is formed on and is in direct contact with the electrode layer 14 of the photoelectric conversion portion 3), and
a second infrared emission layer Al2O3 7 that is formed on and in direct contact with the first infrared emission layer.
Shimazaki is silent regarding the first infrared emission layer includes the claimed materials.
Terakado discloses metal oxides such as ZrO2 or SiO2 are used as infrared radiative layer (page 10 lines 5-6).
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 first infrared emission layer of Shimazaki by substituting the known SiO2 infrared radiative material with the known ZrO2 infrared radiative material of Terakado in order to obtain the predictable result of forming an infrared emissivity enhancing coating for releasing heat from the solar cell to maintain desired cell efficiency (Rationale B, KSR decision, MPEP 2143). Furthermore, the selection of a known material based on its suitability for its intended use supported a prima facie case of obviousness (MPEP 2144.07); in instant situation, the selection of the known ZrO2 material, in place of the known infrared radiative SiO2 material, based on its suitability for its intended use as an infrared radiative layer as shown by Terakado would have been obvious to one of ordinary skill in the art.
Addressing claim 2, fig. 2 of Shimazaki shows the photoelectric conversion portion 3 is formed on a substrate 2.
Addressing claim 4, paragraph [0036] of Shimazaki discloses the first infrared emission layer has a thickness between 1000 to 3000 nm that falls within the claimed range.
Addressing claim 6, paragraph [0036] of Shimazaki discloses the second infrared emission layer has a thickness from 100 to 500 nm, which falls within the claimed range.
Addressing claims 7-8, fig. 2 of Shimazaki discloses the second infrared emission layer 7-11 is stacked films in which layers including two types of the second material are stacked (layer 11 made of SiO2 and layer 7 made of Al2O3). A thickness of layer 7 is 100 to 500 nm and layer 11 has a thickness of 50 nm to 300 nm [0036] that overlaps the claimed range with end points fall within the claimed range.
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
With regard to the 35 USC 102 rejection of claims 1-3, 5, 7 and 9 as being anticipated by Miyazaki, the Applicants argued that Miyazaki does not disclose the limitation “a first infrared emission layer that is formed on and is in direct contact with the electrode layer”. The argument is not persuasive because Miyazaki discloses the layers that constitute the claimed first infrared emission layer is interposed between the passivation layer 6 and the antireflective layer 7. The electrode 9a or 9b of the photoelectric conversion portion extends through and is in direct contact with the antireflective layer 7 and the passivation layer 6 in order to make contact with the upper surface of the layer 3; therefore, it is implicitly disclosed by Miyazaki that the electrode 9a or 9b of the photoelectric conversion portion extends through and is in direct contact with the first infrared emission layer disposed between the antireflective layer 7 and the passivation layer 6. Therefore, the limitations of claims 1-3, 5, 7 and 9 are anticipated by Miyazaki.
With regard to the 35 USC 103 rejection of claims 1-2, 4, 6 and 9 as being unpatentable over the disclosure of Shimazaki and Terakado, the Applicants argued that Shimazaki and Terakado do not disclose the limitation “a first infrared emission layer that is formed on and is in direct contact with the electrode layer”. The argument is not persuasive because Shimazaki discloses ethe first infrared emission layer 6 is in direct contact with the electrode layer 14 since the layer 5 is optional.
The Applicants further argued that a person having ordinary skill in the art would have no motivation to substitute the single “infrared radiative layer 11” of Terakado with any of the “four layers” of Shimazaki. The argument is not persuasive because it does not address the content of the rejection. The rejection does not call for substituting the single infrared radiative layer of Terakado with any of the four layers of Shimazaki. The modification in the rejection simply calls for substituting the known SiO2 layer of the infrared radiative layer of Shimazaki with the known ZrO2 infrared radiative material of Terakado to obtain the predictable result of forming an infrared emissivity enhancing coating for releasing heat from the solar cell to maintain desired cell efficiency.
The Applicants further argued that the assertion that “one of ordinary skill in the art would have found it obvious to modify the first infrared emission layer of Shimazaki by substituting the known SiO2 infrared radiative material with the known ZrO2 infrared radiative material of Terakado” constitutes impermissible hindsight bias. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In instant situation, the motivation for substituting the known SiO2 infrared radiative material with the known ZrO2 infrared radiative material is taught by the cited references and is not taken from the Applicants’ own disclosure. Therefore, the motivation is not impermissible hindsight bias.
The Applicants further argued that the proposed substitution would not achieve “high emissivity of 80%” as stated in paragraph [0071] of the specification. The argument is not persuasive because it is not pertained to the claimed subject matter. Furthermore, paragraph [0013] of Shimazaki discloses the infrared emissivity of about 75% or more, which encompasses the high emissivity of 80%.
For the reasons above, Examiner maintains the position that claims 1-2, 4, 6 and 9 are unpatentable over the disclosure of Shimazaki and Terakado.
Conclusion
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/BACH T DINH/Primary Examiner, Art Unit 1726 08/19/2026
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