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 .
Response to Amendment
The amendment filed 12/15/2025 does not place the application in condition for allowance.
The previous rejections under 112(b) and 112(d) are withdrawn due to Applicant’s amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, 6, 8, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Flexible self-powered integrated sensing system with 3D periodic ordered black phosphorus@MXene thin-films” to Zhang (of record), and further in view of WO2021/130461A1 to Ben Dkhil (machine translation relied upon herein, both reference and translation of record) and US 2022/0093997 to Lotsch (of record).
Regarding claims 1-3, 5, 6, and 8, Zhang teaches a light energy storage device comprising a photovoltaic module and a thin film supercapacitor (SC) for the storage of an electric energy generated by the OPV module, the device comprising
At least a first and second substrates (“Flexible PET substrate” and “Encapsulation PET film” of Fig. 1, respectively; 2. Results and Discussion)
One photovoltaic module (“Solar cell”) comprising, on a surface of the first substrate, one cell (left column of p. 3 recites “flexible solar cell array”; also see Materials on p. 9)
A thin film SC (“Supercapacitor”, see inset of Fig. 1; also see Fig. 3a) printed on the surface of the first substrate (”Synthesis of MXene/BP-Film-Based Micro-Supercapacitors” on p. 10)
A control means (“Pressure sensor”, see inset of Fig. 1), the control means being fixed on the same surface and substrate as the thin film SC (“Synthesis of the MXene/BP-Film-Based Flexible Pressure Sensors”)
One conductive (rectangular interconnect not specifically labeled in Fig. 1, “copper (Cu) foil” in “Materials”, “Synthesis of Sustainably Self-Powered Integrated Device”; “copper electrodes” in left column of p. 3, p. 9; “conductive” interpreted according to point 5 on paragraph [0024] of the instant specification) linking the photovoltaic module, the thin film SC and the control means, and allowing the transfer of electrical energy generated by the photovoltaic module to the thin film SC
Wherein the second substrate covers the thin film SC and the control means.
The limitation that the thin film SC was formed by digital ink printing and that the conductive was printed by inkjet printing are product-by-process limitations. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP §2113.I.
While the photovoltaic module is described as an array, Zhang does not specifically teach the structure of the photovoltaic module and photovoltaic cell. Ben Dkhil teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the photovoltaic module as an organic photovoltaic (OPV) module comprising an OPV cell because the module of their invention is stable and has a high conversion efficiency (p. 4, 5 of translation). Ben Dkhil’s OPV module comprises an OPV cell comprising
A transparent conductive cathode layer (210 of Fig. 2) covering the surface of the analogous first substrate (20) (see “EXAMPLES” on p. 7, 8 of translation)
a first interfacial metallic oxide-based nanoparticle layer (211) covering the cathode (210)
a photovoltaic active layer (212) covering the first interfacial layer (211)
a second interfacial layer (213) comprising a polymer blend of poly(3,4-ethylenedioxythiophen) and sodium (polystyrene sulfonate), the second interfacial layer constituting the anode and covering the photovoltaic active layer (212), the second interfacial layer being continuous, having an organic fibrous structure and an average thickness of between 100 nm and 400 nm (p. 12, top p. 14 of translation).
The limitation each of the layers of the OPV cell are printed by inkjet printing is a product-by-process limitation, given weight as described above. Regardless, inkjet printing is the method taught by Ben Dkhil.
Zhang clearly teaches that the control means is electrically connected to the thin film SC and OPV module through copper electrodes and wires (“Synthesis of Sustainably Self-Powered Integrated Device”), but the reference does not specifically teach that the control means is fixed with a conductive glue. Lotsch teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to fix wired electrical devices using conductive glue (¶0117, 0251). The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Per claim 2, modified-Zhang teaches the limitations of claim 1. Lotsch teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to choose a silver-based glue as the conductive glue, as it would have merely required the choice of a known material for its art recognized purpose (Ibid.). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Per claim 3, modified-Zhang teaches the limitations of claim 1. The at least a first and a second substrates are identical or different (Ibid.).
Per claim 5, modified-Zhang teaches the limitations of claim 1. The light energy storage device of modified-Zhang comprises an OPV module, each OPV module comprises one or several OPV cells (Fig. 2 of Ben Dkhil, and relevant text).
Per claim 6, modified-Zhang teaches the limitations of claim 1. The light energy storage device of modified-Zhang comprises an OPV module, a thin film SC, and a control means on the same surface of the first substrate (Ibid.). The limitation that these elements are printed is a product-by-process limitation, and is given weight as described above. Regardless, at least some of these elements are explicitly recited as being printed.
Per claim 8, modified-Zhang teaches the limitations of claim 1. The light energy storage device of modified-Zhang comprises the conductive, allowing the transfer of the electric energy generated by the OPV module to the thin film SC, on the same substrate surface as the OPV module and on the same substrate surface as the thin film SC and the control means (Ibid.). The limitation that the conductive is printed is a product-by-process limitation, and is given weight as described above.
Regarding claim 13, the combination of references teach the light energy storage device according to claim 1. Fig. 5 shows that the light energy storage device is part of an apparatus, including a data output device. Fig. 4 specifically shows results achieved from the data output device (see also the text of p. 7-9). Thus the apparatus comprises a device using the electric energy generated by the OPV module and/or the electric energy stored in the thin film SC to output data for analysis.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, Ben Dkhil, and Lotsch as applied to claim 1 above, and further in view of US 2016/0147100 to Van Oosten (of record).
Regarding claim 4, modified-Zhang teaches the limitations of claim 1. Zhang does not teach that the light energy storage device further comprises an external barrier glue which holds together the substrates positioned above and below of the OPV module. Van Oosten teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to include an external barrier glue (3 of Fig. 2) between the substrates in order to seal the module against moisture (¶0037, 0056, 0058).
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Applicant argues on p. 9 of the Remarks that a skilled artisan would not combine the teachings of Zhang and Ben Dkhil because the solar cell used in Zhang’s embodiment has an open-circuit potential of 2.1 V, different than that of the inventive solar module of Ben Dkhil. Zhang’s reference is drawn to a particular light energy storage device, focused on the capacitor and control means. Zhang even contemplates that organic photovoltaic modules can be used in such devices (right column of p. 1). Zhang does not exclude or teach against other types of modules from being used in the device of that invention. Ben Dkhil teaches a distinct advantage can be achieve by the inventive solar module, and therefore a person having ordinary skill in the art would be motivated to combine the two references to achieve the recited advantage. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues at the bottom of p. 10 that Ben Dkhil fails to teach or suggest the requirement of an organic fibrous structure in combination with the specific thickness range and continuity. Fig. 2 of Ben Dkhil clearly teaches a solar cell (within box 21 for instance) that has a continuous second interfacial layer (213) that is continuous from right to left (MPEP §2125). Page 12 of the translation of Ben Dkhil clearly teaches that the second interfacial layer (213) has a thickness between 100 and 400 nm (middle of page). The top of page 14 of the translation also clearly teaches that the second interfacial layer (213) has an “organic fibrous amorphous crystalline structure”, which very clearly reads on the organic fibrous structure. The office action does not treat those structural characteristics as inherent, as they are very clearly recited by the reference. While Applicant may have achieved functional advantages in their claimed device, the combination of references teaches the claimed structure. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Applicant alleges on p. 11-12 that the combination of references does not teach the claimed structure; however, as is evidenced in the rejection above, the combination of references does in fact teach all of the claimed limitations. Applicant does not specifically point out what limitations are lacking in the prior art. While Applicant may have achieved certain advantages, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60. MPEP §2145.II.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan S Cannon whose telephone number is (571)270-7186. The examiner can normally be reached M-F, 8:30am-5:30pm PST.
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Ryan S. Cannon
Primary Examiner
Art Unit 1726
/RYAN S CANNON/Primary Examiner, Art Unit 1726