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 .
Status of claims
The amendment to claims filed on 1/26/2026 is acknowledged. Claim 1 is amended. Currently, claims 1-7, 9, and 11-15 are pending in the application with claims 12-15 being withdrawn from consideration.
Previous rejection is modified to address the above amendment and to clarify the examiner’s position.
Claims 1-7, 9 and 11 are rejected, since Applicant’s arguments and declaration are not persuasive to overcome the rejection. See the response to arguments below.
Response to Arguments
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive.
Declaration under 37 C.F.R. 1.132 of Akihiro Maruyama:
Applicant argues Kim discloses the formula X-MPc-(R)n with options among others of gallium for M, and hydroxy for X, but does not disclose any method for producing. Applicant points to a statement of Yao, which is cited in Kim but not cited by the Examiner, that “TiOPcs were prepared by the traditional methods”. Based on this statement of Yao, a reference that is not cited by the Examiner for teaching hydroxygallium phthalocyanine, Applicant prepares a hydroxygallium phthalocyanine from GaCl3 precursor. Applicant then compares the hydroxygallium phthalocyanine crystals produced by a method using GaCl3 having different X-ray peaks from hydroxygallium phthalocyanine disclosed and claimed.
Applicant’s declaration is not persuasive for the following reasons:
First of all, the claimed invention is a photoconversion element, not method of making hydroxygallium phthalocyanine nor solely hydroxygallium phthalocyanine.
Secondly, Yao is not cited and Yao’s teaching of a method for making TiOPcs is not relied upon for teaching hydroxygallium phthalocyanine. It is noted that the claimed invention is not a method of making TiOPcs.
Thirdly, Kim discloses the hydroxygallium phthalocyanine (or GaOHP)
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(see Fig. 9 of Kim), or hydroxygallium phthalocyanine in the form having no impurities.
Fourthly, Applicant appears to compare hydroxygallium phthalocyanine having a form of chlorine containing hydroxygallium phthalocyanine since GaCl3 is being used as the precursor and being purified.
Evidentiary reference to Nukada (US Patent 5,556,967) shows purified chlorine-containing hydroxygallium phthalocyanine having substantially the same Bragg angles as Applicant’s XRD Pattern 1: Follow-Up Test in fig. 2 (see fig. 2; col. 3, lines 6-8 of Nukada et al.; also see example 9). As such, Applicant does not compare the type/form of hydroxygallium phthalocyanine (GaOHP) disclosed by Kim to Applicant’s claimed type/form of hydroxygallium phthalocyanine exhibiting peaks at 7.4o±0.3o and 28.2o±0.3o of Bragg angles, but compares a method of making TiOPcs to provide a hydroxygallium phthalocyanine form of chlorine containing hydroxygallium phthalocyanine to hydroxygallium phthalocyanine exhibiting peaks at 7.4o±0.3o and 28.2o±0.3o of Bragg angles.
Fifthly, it is burden on Applicant to establish results are unexpected and significant, and evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See MPEP 716.02(a)-(f). The closest prior art to Applicant’s claimed invention, e.g. photoelectric conversion element, is Yang. The closest prior art regarding a hydroxygallium phthalocyanine (or intrinsic hydroxygallium phthalocyanine – or hydroxygallium phthalocyanine with no impurities) exhibiting peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles) to be Yamada (US 2013/005270) which describes a hydroxygallium phthalocyanine exhibiting peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles as claimed. In this case, Applicant does not even compare the claimed invention with the closest prior art, e.g. Yang or Yamada, but compares a method of producing TiOPcs from Yao - a reference that is not cited by the Examiner and does not represent the examiner’s position whatsoever - with a method of producing hydroxygallium phthalocyanine disclosed by Applicant.
Sixthly, Applicant does not provide any explanation why the hydroxygallium phthalocyanine of Kim does not exhibit the peaks as evidenced by Yamada, or the hydroxygallium phthalocyanine of Kim is not the same as the hydroxygallium phthalocyanine exhibiting peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles as evidenced by Yamada.
Seventhly, Yamada discloses the hydroxygallium phthalocyanine used for charge conducting in photoelectric conversion element exhibiting peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles. That is Yamada discloses hydroxygallium (GaOH) phthalocyanine form (P) – GaOHP form - as disclosed by Kim that is used in charge transporting in a photoelectric conversion element, exhibits peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles.
Eighthly, Applicant explicitly claims hydroxygallium phthalocyanine with a diameter of 300nm or less will exhibit the peaks (see claims 1 and 3). In other words, Applicant claims the peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles is the properties/characteristics of the hydroxygallium phthalocyanine with a diameter of 300nm or less.
Ninthly, Yang discloses the particle size of the phthalocyanine to be ~100nm or ~20nm, and Kim discloses using hydroxygallium phthalocyanine. As such, modified Yang discloses the hydroxygallium phthalocyanine having a size of ~100nm or ~20nm, and Applicant explicitly discloses hydroxygallium phthalocyanine having a size of 100nm or 20 nm display the properties and characteristics of having peaks 7.4o±0.3o and 28.2o±0.3o of Bragg angles (see table 1 of Applicant’s disclosure).
Accordingly, Applicant’s declaration is not persuasive to overcome the rejection for the reasons above.
Applicant’s arguments:
Applicant argues Yang describes a perovskite solar cell using copper phthalocyanine with octamethyl-substituted function group as the hole transport material; and alleges Kim does not teach hydroxygallium phthalocyanine crystal that have the XRD peaks as claimed, because Kim teaches the electrolyte comprising phthalocyanine compound X-MPc(R)n but does not mention hydroxygallium phthalocyanine with any specific crystalline form according to Maruyama Declaration.
The examiner replies that not only Kim discloses hydroxygallium phthalocyanine by describing the M is gallium, X is none and R is hydroxy group in words; but also explicitly exemplifies and shows hydroxygallium phthalocyanine (GaOHP) in fig. 9.
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It is noted that electrolyte is a hole transporting material (see the concept described in paragraph [0016] of Kim, also see [0036] of evidentiary reference to Zeira, US 2005/0247340).
Applicant then points to Maruyama Declaration, and argues the form of hydroxygallium phthalocyanine being produced by a method of making TiOPcs disclosed by Yao, a reference that is not cited by the examiner for teaching hydroxygallium phthalocyanine and that is not represent the examiner’s position, displaying different Bragg angles from the claimed Bragg angles.
The examiner replies that the declaration is not persuasive to overcome the rejection as explained above.
The previous prior art rejection is modified to address the amendment and clarify the examiner’s position. See the rejection below.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (“A Facile Molecularly Engineer Copper (II) Phthalocyanine as Hole Transport Material for Planar Perovskite Solar Cells with Enhanced Performance and Stability”) in view of Kim et al. (US 2008/0072960) as evidenced by Yamada et al. (US 2013/0052570).
Regarding claim 1, Yang et al. discloses a photoelectric conversion element comprising:
a first electrode (see Au electrode, fig. 1 and “2.3. Perovskite solar cell fabrication and characterization”);
a second electrode (see FTO electrode, fig. 1 and “2.3. Perovskite solar cell fabrication and characterization”);
a photoelectric conversion layer (see perovskite) disposed between the first electrode (Au) and the second electrode (FTO, see fig. 1 also see “2.3. Perovskite solar cell fabrication and characterization”), and containing an organic-inorganic perovskite compound (or CH3NH3PbI3, see page 323); and
a particle layer (or hole transport layer of phthalocyanine of CuPc or CuMe2Pc) disposed between the photoelectric conversion layer (perovskite) and the first electrode (Au, see fig. 1 and “2.3. Perovskite solar cell fabrication and characterization”), and including phthalocyanine compound-based particles (or grains) that mainly contain a phthalocyanine compound having a size of ~100nm or ~20nm (see page 328).
Yang et al. teaches using CuPc or phthalocyanine which includes Cu as a coordinating metal. Yang et al. does not disclose using a hydroxygallium phthalocyanine crystal, or phthalocyanine with Ga as the coordinating metal, exhibiting peaks at 7.4o ± 0.3o and 28.2o ± 0.3o of Bragg angles 2q in an X-ray diffraction spectrum using CuKa ray as claimed.
Kim et al. discloses using hydroxygallium phthalocyanine (see GaOHP in fig. 9 or M of gallium and X of -OH) as an equivalent phthalocyanine compound to improve the performance of the solar cell (see [0024-0033]). Hydroxygallium phthalocyanine of GaOHP, or plain hydroxygallium phthalocyanine, that is used for charge transporting in a photoelectric conversion element, exhibits peaks 7.5o and 28.3o of a Bragg angles 2q in an X-ray diffraction spectrum (see [0098] and [0225] of evidentiary reference to Yamada, US 2013/0052570), 7.5o is peak at 7.4o± 0.3o and 28.3o is a peak at 28.2o ± 0.3o. In other words, evidentiary reference to Yamada discloses peaks 7.5o and 28.3o of a Bragg angles 2q in an X-ray diffraction spectrum is a characteristic/property of the plain form of hydroxygallium phthalocyanine.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photoelectric conversion element of Yang et al. by using hydroxygallium phthalocyanine particles as taught by Kim et al. as evidenced by Yamada et al. to have peaks at 7.4o ± 0.3o and 28.2o ± 0.3o of Bragg angles 2q in an X-ray diffraction spectrum using CuKa ray, because Kim et al. discloses hydroxygallium phthalocyanine are one among other phthalocyanines that is used to improve the performance of the solar cell and such modification would involve nothing more than a mere selection of functional equivalent phthalocyanine recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Such modification would involve nothing more than use of known material for its intended use in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Modified Yang et al. discloses using the same phthalocyanine as claimed, hydroxygallium phthalocyanine, with particles size of ~100nm or ~20nm. Therefore, the hydroxygallium phthalocyanine crystal of modified Yang et al. will display the same characteristic/property of crystals peaks at 7.4o ± 0.3o and 28.2o ± 0.3o of Bragg angles 2q in an X-ray diffraction spectrum using CuKa ray as claimed, particularly in view of Applicant’s claims and disclosure (see table 1 and claims 1 and 3). Same material will display the same property/characteristic. See MPEP 2112. Furthermore, hydroxygallium phthalocyanine exhibits peaks at 7.4o± 0.3o and 28.2o ± 0.3o of a Bragg angles 2q in an X-ray diffraction spectrum (see [0098] and [0225] of evidentiary reference to Yamada et al., US 2013/0052570).
Regarding claim 5, modified Yang et al. discloses a photoelectric conversion element as in claim 1 above, wherein Yang et al. teaches using the phthalocyanine compound particles as the hole transport material (see abstract and page 323), or the particles contain the phthalocyanine compound in an amount of 100% by mass. As such, modified Yang et al. discloses the particle layer (or the phthalocyanine layer) including the particles (or the crystalline phthalocyanine with grain size) and a charge transport material (or phthalocyanine itself is the charge transport material) as claimed.
Regarding claims 6-7, modified Yang et al. discloses a photoelectric conversion element as in claim 1 above, wherein Yang et al. teaches the phthalocyanine layer has a thickness of 60nm (see “2.3. Perovskite solar cell fabrication and characterization”). 60nm is right within the claimed range of from 20 to 800 nm as claimed in claim 6, and also right within the claimed range of from 50 to 400nm as claimed in claim 7.
Regarding claim 9, modified Yang et al. discloses all the structural limitations of the photoelectric conversion element using the same phthalocyanine as claimed, e.g. hydroxygallium phthalocyanine. Therefore, the hydroxygallium phthalocyanine of modified Yang et al. will display the same property/characteristic as claimed in the instant claim, e.g. having a peak from 20 to 50 nm in a crystalline particle size distribution measured using small- angle X-ray scattering, and a half width of the peak is 50 nm or less. See MPEP 2112.
Claim(s) 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over modified Yang et al. as applied to claim 1 above, in view of Kamino et al. (US 2018/0174761).
Regarding claim 2, modified Yang et al. discloses a photoelectric conversion element as in claim 1 above, wherein an average particle diameter of the particles is 20nm and 100nm (see claim 1 above).
Modified Yang et al. does not disclose a surface roughness of the photoelectric conversion layer such that the average particle diameter of the particles is smaller than a maximum height Rz of a surface roughness of the photoelectric conversion layer.
Kamino et al. discloses the photoelectric conversion layer of perovskite having a roughness preferably from 500nm to 20mm, and more preferably in the range of 1mm to 10mm ([0019]) for light trapping and antireflection (see [0011] and [0155]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photoelectric conversion element of modified Yang et al. by forming the photoelectric conversion layer of perovskite to have a roughness preferably from 500nm to 20mm, and more preferably in the range of 1mm to 10mm for light trapping and antireflection as taught by Kamino et al. In such modification, the average diameter of the particles of ~100nm and ~20nm is smaller than a maximum height or a surface roughness of 500nm to 20mm or 1mm to 10mm of the photoelectric conversion layer.
Regarding claim 11, modified Yang et al. discloses a photoelectric conversion element as in claim 1 above, wherein the photoelectric conversion element is a perovskite cell (see fig. 1).
Modified Yang et al. does not explicitly disclose photoelectric conversion module comprising a plurality of the photoelectric conversion elements of claim 1.
Kamino et al. discloses a photoelectric conversion module comprising a plurality of photoelectric conversion elements of perovskite subcells (see 110 and 220 in fig. 6c).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have formed a photoelectric conversion module comprising a plurality of photoelectric conversion elements as taught by Kamino et al., because Kamino et al. teaches having plurality of photoelectric conversion elements would form a tandem device ([0065]) to maximizes photon energy extraction and optimize harvesting of the solar spectrum (see [0009]).
Claim(s) 3-4 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over modified Yang et al. (“A Facile Molecularly Engineer Copper (II) Phthalocyanine as Hole Transport Material for Planar Perovskite Solar Cells with Enhanced Performance and Stability”) as applied to claim 1 above, and further in view Yamada et al. (US 2006/0292465).
Regarding claims 3-4, modified Yang et al. discloses a photoelectric conversion element as in claim 1 above, wherein Yang et al. discloses the grain size of the phthalocyanine to be ~100nm and ~20nm (see page 328 of Yang et al.).
Modified Yang et al. does not explicitly disclose an average particle diameter of the phthalocyanine particles to be 300nm or less as claimed in claim 3, or 20nm or more as claimed in claim 4.
Yamada et al. teaches using phthalocyanine including gallium (or hydroxy gallium phthalocyanine having an absorption maximum value from 810 to 839 nm in an optical absorption spectrum with particle diameter of 0.10 mm or less ([0064]). 0.10 mm or less is 100nm or less.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photoelectric conversion element of modified Yang et al. by using GaOHP (hydroxy gallium phthalocyanine) having average particle diameter of 100nm or less to provide an absorption maximum value from 810 to 839nm in an optical absorption spectrum, e.g. not compete with the perovskite absorber, as taught by Yamada et al.
In addition, it would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of 300nm or less and 20nm or more in the ranges of less than 50nm disclosed by Gregg and 100nm or less disclosed by Yamada et al., because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Alternatively, claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over modified Yang et al. as applied to claim 1 above, and further in view of Honda et al. (US 2019/0305168).
Regarding claim 11, modified Yang et al. discloses a photoelectric conversion element as in claim 1 above, wherein the photoelectric conversion element is a perovskite cell (see fig. 1).
Modified Yang et al. does not explicitly disclose photoelectric conversion module comprising a plurality of the photoelectric conversion elements of claim 1.
Honda et al. discloses a photoelectric conversion module comprising a plurality of photoelectric conversion elements (see figs. 7-9) for higher power generation output (see [0282-0288]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have formed a photoelectric conversion module comprising a plurality of photoelectric conversion elements for higher power generation output as taught by Honda et al.
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 THANH-TRUC TRINH whose telephone number is (571)272-6594. The examiner can normally be reached 9:00am - 6:00pm.
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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