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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 4, 5, 8, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibasaki et al. (US 2018/0083150) in view of Kim et al. (KR 2014-0109546; see English machine translation) in view of Jemaa et al. (“Structural, optical and electrical investigations on Nb doped TiO2 radio-frequency sputtered thin films from a powder target”).
Regarding claims 1, 4, and 5, Shibasaki discloses a bifacial thin film solar cell (see Figure 13; it is disclosed the CIGS thin film solar cell is a top cell that lets light through; [0044]) including:
a rear transparent electrode (first electrode 2) stacked on a transparent substrate (glass; [0024]);
a rear passivation layer (second insulating film 8) stacked on the rear transparent electrode (see Figure 13);
a conductive thin film (dot region 4) pattern formed in some regions on the rear passivation layer (see Figure 13), wherein the conductive thin film pattern has a dot shape or a linear shape (dot region; [0032]), and a plurality of conductive thin film patterns are arranged on the rear passivation layer to be spaced apart from each other (see Figure 9),
the conductive thin film pattern is formed of molybdenum (Mo) ([0034]),
and a total area of the plurality of conductive thin film patterns does not exceed 20% of the area of the rear passivation layer (it is disclosed the aperture ratio is less than 99% or preferably 80 to 99.95%; [0033]);
a light-absorbing layer (3) stacked on the front surface of the rear passivation layer including the conductive thin film pattern (see Figure 13), wherein the light-absorbing layer is formed of CIGS (Cu(In1-x, Gax)(Se,S)2) ([0028]);
a buffer layer (5) stacked on the light-absorbing layer (see Figure 13); and
a front transparent electrode (second electrode 6) stacked on the buffer layer (see Figure 13).
While Shibasaki further discloses the rear passivation layer is formed of an oxide film or a nitride film such as AlOx, SiOx, MgO, (Al, Si, Mg)Ox, SiNx, AlNx, GaNx, and (Si, Al, Ga)Nx ([0062]) on the first electrode 2 made of SnO2 or doped ZnO ([0026]), the reference does not expressly disclose the rear passivation layer is formed of TiOx or TaOx doped with any one element among Nb, Sb, and S.
Kim discloses a CIGS solar cell comprising a multilayer transparent substrate comprising a transparent substrate, interlayer, transparent conductive film, and a protective film ([0008]), where the protective film can be formed of silicon oxide, aluminum oxide, or doped titanium oxide with Nb ([0037]) and the transparent conductive film can be ZnO, SnO2 or a mixture ([0028]), where the protective film protects the transparent conductive film from heat and chemical substances and improves light transmittance ([0034]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a known technique to improve similar devices such as selecting a rear passivation layer formed of doped titanium oxide with Nb in the device of Shibasaki, as taught by Kim above, so that the transparent conductive film below can be protected from heat and chemical substances, as set forth above. It is noted that if a technique is known to improve a device and one of ordinary skill in the art recognizes it would improve similar devices in the same way, the use of the known technique to improve similar devices would be prima facie obvious as the results would have been predictable to one of ordinary skill in the art unless the actual application of the technique would have been beyond the skill of one of ordinary skill in the art. KSR, 550 U.S. at 417, 82 USPQ2d at 1396.
Additionally, since the prior art of Kim recognizes the equivalency of doped titanium oxide with Nb and silicon oxide and aluminum oxide in the field of protective film materials for transparent conductive oxides, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the silicon oxide of Shibasaki with the doped titanium oxide with Nb of Kim as it is merely the selection of functionally equivalent oxide materials recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so.
While modified Shibasaki does not expressly disclose a stacked thickness of the rear passivation layer is 2 to 4 nm, the reference discloses the thickness can be 1 to 2 nm ([0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
While Kim further discloses the titanium oxide is doped in the range of 0.1 to 5% Nb ([0037]), modified Shibasaki does not expressly disclose the electrical resistivity of TiOx or TaOx is greater than 1 Ω cm.
Jemaa discloses Nb doping improves the electrical conductivity of TNO films, where it can be seen in Figure 6 that the resistivity for 0 to 5% Nb is largely greater than 1 Ω cm and in Figure 7 that transmittance is inversely proportional to resistivity, such that the amount of resistivity and transmittance is optimizable with the content of Nb doping (page 13247).
As the optical transmission and conductivity are variables that can be modified, among others, by adjusting said amount of Nb dopant (and therefore the resistivity), with said optical transmission and conductivity both increasing as the amount of Nb dopant is increased, the precise amount of Nb dopant (and therefore resistivity) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed resistivity of the Nb doped TiO2 cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount of Nb dopant in the apparatus of modified Shibasaki to obtain the desired balance between the optical transmission and conductivity (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
While modified Shibasaki does not expressly disclose the conductive thin film pattern has a length or diameter of 0.1 to 2 μm and a thickness of 0.1 to less than 2 nm, the reference discloses the diameter to be preferably between 6 nm to 10 microns and the height (or thickness) of the conductive pattern is preferably, but not particularly limited to, 2 nm to 50 microns for ease of preparation as dots excessively small are difficult to disperse on the surface ([0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges of the diameter disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Further, regarding the thickness of 0.1 to less than 2 nm, as the ease of preparation and the ability to inhibit an oxidized region from being formed at an interface between the compound semiconductor and the electrode are variables that can be modified, among others, by adjusting said size (and therefore thickness) of the conductive thin film pattern, as disclosed by Shibasaki in paragraphs [0032] and [0035], with said ease of preparation decreasing and ability to inhibit an oxidized region from being formed at an interface between the compound semiconductor and the electrode increasing as the size (and thickness) of the conductive thin film pattern is increased, the precise size (and thickness) of the conductive thin film pattern would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed size (and thickness) of the conductive thin film pattern cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the size and thickness of the conductive thin film pattern in the apparatus of modified Shibasaki to obtain the desired balance between the ease of preparation and the ability to inhibit an oxidized region from being formed at an interface between the compound semiconductor and the electrode (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 8, modified Shibasaki discloses all the claim limitations as set forth above, and further discloses the conductive thin film pattern has a dot shape ([0035]), and a distance between the conductive thin film patterns which is equal to or less than a carrier diffusion length (LD) in the light-absorbing layer ([0041]).
Regarding claim 13, modified Shibasaki discloses all the claim limitations as set forth above, and further discloses the rear transparent electrode and the front transparent electrode is formed of any one of indium-based oxide, zinc-based oxide, and tin-based oxide, wherein the indium-based oxide is any one of InOx, ITO, (W, Ce, Mo)-doped InOx, and IZO, the zinc-based oxide is (Al, Ga, B, Ti, F, H)-doped ZnOx, and the tin-based oxide is (F, Sb)-doped SnOx ([0026] and [0054]).
Regarding claim 14, modified Shibasaki discloses all the claim limitations as set forth above, and further discloses the buffer layer is provided between the light-absorbing layer and the front transparent electrode, and the buffer layer is formed of any one of CdS, InS(O,OH), ZnS(O, OH), ZnMgO, ZnTiO, ZnSnO, or a combination thereof ([0050]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibasaki et al. (US 2018/0083150) in view of Kim et al. (KR 2014-0109546; see English machine translation) in view of Jemaa et al. (“Structural, optical and electrical investigations on Nb doped TiO2 radio-frequency sputtered thin films from a powder target”) in view of Cho et al. (US 2018/0033901).
Regarding claim 9, modified Shibasaki discloses all the claim limitations as set forth above, but the reference does not expressly disclose the conductive thin film pattern has a linear shape, and a distance between the conductive thin film patterns which is equal to or less than a carrier diffusion length (LD) in the light-absorbing layer.
Cho discloses a CIGS thin film solar cell comprising a semitransparent molybdenum electrode layer 210 on a transparent back electrode 200, where the semitransparent molybdenum electrode can have various shapes including dots and a grid (see Figures 5 and 6), where the thickness of the semitransparent molybdenum electrode is 2 nm to 50 nm ([0037]). Cho also discloses for island shaped molybdenum electrode layer, the islands have a diameter of 1-100 nm ([0041]), such that in a grid configuration, the opening portions can be easily adjusted in terms of size and opening ratio for transparency ([0045]) as well as a distance between the conductive thin film patterns which is equal to or less than a carrier diffusion length (LD) in the light-absorbing layer (the opening ratio allows a BSF to form for photoelectric efficiency; [0044])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a known technique to improve similar devices such as selecting a linear shape for the conductive thin film pattern, where the pattern has a width of 1-100 nm and a thickness of 2 nm to 50 nm in the device of Shibasaki, as taught by Cho above, so that the conductive thin film made of molybdenum can be semitransparent and let a desirable amount of light through, as set forth above. It is noted that if a technique is known to improve a device and one of ordinary skill in the art recognizes it would improve similar devices in the same way, the use of the known technique to improve similar devices would be prima facie obvious as the results would have been predictable to one of ordinary skill in the art unless the actual application of the technique would have been beyond the skill of one of ordinary skill in the art. KSR, 550 U.S. at 417, 82 USPQ2d at 1396.
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibasaki et al. (US 2018/0083150) in view of in view of Kim et al. (KR 2014-0109546; see English machine translation) in view of Jemaa et al. (“Structural, optical and electrical investigations on Nb doped TiO2 radio-frequency sputtered thin films from a powder target”) in view of Kusunoki et al. (US 2011/0155226).
Regarding claim 15, modified Shibasaki discloses all the claim limitations as set forth above, but the reference does not expressly disclose the front transparent electrode, light-absorbing layer, and rear passivation layer in a specific region are removed to provide a light-transmitting portion region in which the rear transparent electrode is exposed.
Kusunoki discloses it is well known in the art before the effective filing date of the claimed invention to form a thin film solar cell in a substrate structure as shown in Figure 7 as opposed to Figure 1 of a thin film solar cell base structure, where the front transparent electrode (5), light-absorbing layer (3), and rear passivation layer (corresponding to the Mo back electrode 2) in a specific region are removed to provide a light-transmitting portion region in which the rear transparent electrode is exposed (see Figure 7).
As modified Shibasaki is not limited to any specific examples of the thin film solar cell structure and as a substrate structure with the above recited features was well known in the art before the effective filing date of the claimed invention, as evidenced by Kusunoki above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any known structural configuration for the thin-film solar cell, including a structure with the above recited features in the device of modified Shibasaki. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
Regarding claim 17, modified Shibasaki discloses all the claim limitations as set forth above, but the reference does not expressly disclose a P1 region is provided in which the rear passivation layer and the rear transparent electrode are removed in a certain area, a P2 region is provided in which the buffer layer and the light-absorbing layer are removed in a certain area, and a P3 region is provided in which the front transparent electrode, the buffer layer, and the light-absorbing layer are removed in a certain area, wherein the rear transparent electrodes of neighboring cells are insulated by the P1 region, the rear transparent electrode and the front transparent electrode of neighboring cells are connected by the P2 region, and the front transparent electrodes of neighboring cells are insulated by the P3 region.
Kusunoki discloses it is well known in the art before the effective filing date of the claimed invention to form a thin film solar cell in a substrate structure as shown in Figure 7 as opposed to Figure 1 of a thin film solar cell base structure, where a P1 region is provided in which the rear passivation layer and the rear transparent electrode are removed in a certain area (first scribe from the left in Figure 7), a P2 region is provided in which the buffer layer and the light-absorbing layer are removed in a certain area (second scribe from the left in Figure 7), and a P3 region is provided in which the front transparent electrode, the buffer layer, and the light-absorbing layer are removed in a certain area (third scribe from the left in Figure 7),
wherein the rear transparent electrodes of neighboring cells are insulated by the P1 region, the rear transparent electrode and the front transparent electrode of neighboring cells are connected by the P2 region, and the front transparent electrodes of neighboring cells are insulated by the P3 region (see Figure 7).
As modified Shibasaki is not limited to any specific examples of the thin film solar cell structure and as a substrate structure with the above recited features was well known in the art before the effective filing date of the claimed invention, as evidenced by Kusunoki above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any known structural configuration for the thin-film solar cell, including a structure with the above recited features in the device of Shibasaki. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibasaki et al. (US 2018/0083150) in view of in view of Kim et al. (KR 2014-0109546; see English machine translation) in view of Jemaa et al. (“Structural, optical and electrical investigations on Nb doped TiO2 radio-frequency sputtered thin films from a powder target”) in view of Kusunoki et al. (US 2011/0155226) in view of Jeong et al. (US 2016/0126376).
Regarding claim 16, modified Shibasaki discloses all the claim limitations as set forth above, but the reference does not expressly disclose the light transmittance of the bifacial thin film solar cell can be controlled by adjusting the area of the light-transmitting portion region.
Jeong discloses scribing a thin film solar cell in the same manner as taught by Kusunoki (see Figures 7A-7E), and that the number of scribing allows free adjustment of light transmittance of the module ([0097]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted the number of light-transmitting portion regions, and thus, the area of the light-transmitting portion regions based on the amount of light transmittance desired for the bifacial solar cell, as taught by Joeng above.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive.
Applicant argues that Shibasaki does not disclose TiOx or TaOx as a rear passivation layer material.
However, the claimed feature was taught by Kim, as set forth in the Office Action.
Applicant argues that the structural position and function of Kim’s protective film are incompatible with the proposed combination because the protective film of Kim is positioned on the outer surface of the transparent conductive film, where the protective film’s purpose is to protect the transparent conductive film from heat and chemical substances, whereas the rear passivation layer of the claimed invention is disposed between the rear transparent electrode and the CIGS light absorbing layer that is not exposed to the ambient environment and the function of the layer is to passivate recombination active defects at the TiOx/CIGS interface. Shibasaki discloses the rear passivation layer 8 is formed next to a rear transparent electrode 2 made of SnO2 or doped ZnO transparent conductive material, where the rear transparent electrode 2 is formed on a transparent substrate 1 ([0026]; see Figure 13).
Similarly, Kim discloses forming a transparent conductive layer on a glass plate followed by a layer of protective film. Nowhere does Kim disclose the protective films are formed on the outside of the device. In fact, Kim provides an example in which the selection for the protective film is dependent upon protecting the transparent conductive film ZnO from degradation during high temperature and high treatment process to prevent a chemical reaction with the electrolyte in a dye-sensitized solar cell ([0039]), such that it is clear the protective film is protecting the transparent conductive film on the inside and not on the outside of the solar cell device. Further, it is unclear what “chemical substances” a solar cell would encounter on a regular basis that the protective film must protect the transparent conductive layer from in order to select a particular protective film composition and not simply a glass layer or sealant, which is typical of the art, such that it is clear the passivation layer is selected to protect the transparent conductive film internally and not to outside chemicals. It is further noted that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
Therefore, while Shibasaki does not expressly disclose the rear passivation layer 8 is intended to act as a protective film for the transparent conductive electrode, the passivation layer is capable of carrying out the function, where Kim has taught the selection of a variety of suitable materials including silicon oxide, aluminum oxide, and doped titanium oxide with Nb, such that Shibasaki discloses the selection of aluminum oxide and silicon oxide for the rear passivation layer 8, it would have been within the skill of one of ordinary skill in the art to have selected any suitable material for the rear passivation layer 8, including titanium oxide doped with Nb as taught by Shibasaki in view of Kim.
It is noted that Applicant did not respond to the Office’s response to the same argument in the Advisory Action.
Applicant argues that modifying Shibasaki’s second insulating film 8 would render the device inoperable because applying TiOx at a thickness of 2 to 4 nm would block the quantum tunneling upon which Shibasaki’s device depends. However, no evidence was provided for such assertion. It is unclear why applying TiOx at a thickness of 2 to 4 nm would render Shibasaki’s device inoperable when Applicant states TiOx provides rear passivation on page 9 of the Remarks filed on 7/22/2026.
Applicant also argues that 1 to 2 nm thickness of Shibasaki’s second insulating film is probably the maximum distance over which significant electron tunneling exists. However, this is merely a conclusory statement by Applicant without any evidence. Further, it is noted the claim has only required a thickness of 2 to 4 nm, such that 2 nm overlaps the claimed required thickness for the rear passivation layer. Applicant further argues Shibasaki’s second insulating film 8 is a true electrical insulator and the TiOx or TaOx rear passivation layer of the claimed invention operates on an entirely different principle where TiOx is a semiconductor, not an insulator. However, if Shibasaki’s second insulating film 8 is a true electrical insulator as Applicant asserts, it is unclear how the first electrode 2 is supposed to collect any of the charges in the solar cell 102. Shibasaki’s second insulating film 8 is commonly understood by one of ordinary skill in the art to be a tunneling passivating layer, where the claim has only required “a rear passivation layer stacked on the rear transparent electrode” and does not require any of the features Applicant asserts regarding the operating principle.
Applicant’s argument that even if Shibasaki’s second insulating film 8 were assigned an arbitrarily high resistivity that nominally satisfies the “greater than 1 ohm cm” as claimed, applying TiOx at a thickness of 2 to 4 nm in the structural context of Shibasaki would block the quantum tunneling required by Shibasaki and renders the device inoperable was not found to be persuasive without any evidence and is merely a matter of opinion without any factual basis.
Applicant is reminded that the claimed limitation of TiOx having an electrical resistivity greater than 1 ohm cm is taught by the combination of the teachings of Shibasaki and Kim, where Shibasaki discloses the rear passivation layer can be an oxide film such as aluminum oxide or silicon oxide having a thickness of 1-2 nm on a ZnO or SnO2 layer, where Kim teaches the use of a passivation layer made of silicon oxide, aluminum oxide, or titanium doped Nb on a ZnO or SnO2 layer, where Jemaa discloses the amount of Nb doped in titanium oxide that is taught by Kim has an electrical resistivity greater than 1 ohm cm as claimed. Applicant has not made any response with respect to the combination of the references itself and has only argued the motivation to combine would render Shibasaki’s device inoperable without any evidence.
Applicant further argues that Experimental Example 4 in the instant specification provides unexpected results for the claimed resistivity, where two samples having identical thickness at 4 nm having different electrical resistivity due to oxygen partial pressure during sputtering.
However, looking at Table 2 provided on page 19 of the specification, it can be seen the reason for the difference in photocurrent characteristics is due to the oxygen content, such that sample S065106 B3 clearly has a more than three times higher oxygen content than the other samples. Additionally, no resistivity information was provided in Table 2 in relation to Samples S065106 and S065107, such that it is unclear where Applicant is obtaining the information in Experimental Example 4. Further, it is noted that Experimental Example 4 has only disclosed that when the oxygen content is 0.1% or less, the electrical resistivity decreases to 10 -3 ohm cm, but at a higher oxygen content, a high electrical resistivity value of 10 -1 to 1 ohm cm can be maintained, where when the oxygen content is 0.3% or higher, crystallization does not occur even with rapid heat treatment, resulting in a high resistivity, but crystallization occurs again when the temperature is increased to 380 degrees to reduce resistivity. Looking at Figure 11 mentioned in Experimental Example 4, it has only shown the resistivity in relation to oxygen content, such that it was previously mentioned oxygen content has not been positively recited in the claim.
Applicant is reminded that the unexpected results must be commensurate in scope with the claimed invention, such that it has been repeatedly told to Applicant that no oxygen content has been positively recited in the claim, which Applicant has admitted to directly affecting the resistivity of the TNO. Additionally, based on the disclosure in Experimental Example 4, the temperature of the rapid heat treatment also affects the resistivity, such that no temperature has been positively recited in the claim, either. To summarize, it appears the information presented in Experimental Example 4 has only stated when oxygen content is 0.3% or higher, high resistivity can be achieved and only when the heat treatment temperature is 350 and as shown in Figure 11, in which neither a heat treatment temperature nor the oxygen content of greater than 0.3% is required by claim 1 or any of the claims in order for these findings to be commensurate in scope with the claimed invention to demonstrate unexpected results. The claims currently presented do not require any particular amount of oxygen content or temperature, such that evidenced by Figure 11, it can be seen that an oxygen content below 0.3% does not demonstrate unexpected results when the heat treatment is 350. Therefore, unexpected results appears to be only limited to an oxygen content of higher than 0.3% in TNO with a heat treatment temperature of 350 and does not include TaOx. The TNO sample without heat treatment does not exhibit unexpected results as shown in Figure 11 because it is clearly a trendline.
Applicant argues that neither Shibasaki nor Cho disclose the conductive pattern thickness to be less than 2 nm as amended.
However, as set forth above, Shibasaki discloses in paragraph [0035] that the height (or thickness) of the conductive pattern is preferably, but not particularly limited to, 2 nm to 50 microns for ease of preparation as dots excessively small are difficult to disperse on the surface, such that a thickness of less than 2 nm would be within the skill of one of ordinary skill in the art, where the thickness and size of the conductive pattern is determined to be a results effective variable, as taught by Shibasaki.
Applicant argues that Jemaa teaches away because it is directed to developing Nb-doped TiO2 thin films as a replacement for ITO and not for a passivation layer and that Jemaa only discloses an electrical resistivity of approximately 0.64 ohm cm, which does not satisfy the claimed requirement of greater than 1 ohm cm. However, as set forth in the previous Office Action, Jemaa was relied upon only to teach the amount of Nb doping to be a result effective variable.
Applicant’s argument that the claimed resistivity is not a routine optimization variable was not found to be persuasive because as set forth above, the data is not commensurate in scope with the claimed invention.
Applicant further argues that the specification expressly discloses the resistivity in the relevant samples, where Figures 12A-12B and Table 2 states the sample with an oxygen content of 0.2% and no heat treatment and a thickness of 4 nm has the highest resistivity of 1 x 104 ohm cm and excellent rear passivation ability during rear light incidence, which is sample S065106_B3 relied upon for unexpected results.
However, as mentioned above, no oxygen content is positively recited in the claims. No mentioning of heat treatment is positively recited in the claims, and the thickness as claimed ranges from 2 nm to 4 nm, where Applicant is asserting only the sample with an oxygen content of 0.2% and no heat treatment and a thickness of 4 nm has the highest resistivity of 1 x 104 ohm cm and excellent rear passivation ability during rear light incidence, such that it is unclear how the data is commensurate in scope with the claimed invention. Further, Applicant previously stated that an oxygen content of 0.3% or greater would result in high resistivity, such that looking at Figure 11, one can see the resistivity for the non heat treated sample does not demonstrate unexpected results and is clearly a trendline in which the resistivity increases with an increase in oxygen content. Therefore, as previously stated, it appears the only unexpected results with respect to resistivity shown by Figure 11 and what is disclosed in Experimental Example 4 is an oxygen content of 0.3% or greater in TNO with a heat treatment at 350 degrees and a thickness of 4 nm, such that no other data was presented for a TNO with an oxygen content of 0.3% or greater and a heat treatment at 350 degrees with varying thicknesses for one of ordinary skill in the art to evaluate whether the entire claimed range of 2-4 nm demonstrates unexpected results. Once again, it appears only this particular embodiment in which an oxygen content of 0.3% or greater in TNO with a heat treatment at 350 degrees and a thickness of 4 nm demonstrates unexpected results with respect to the resistivity and nothing related to TaOx or any other parameters, such that the claims do not require only this particular embodiment whatsoever and encompasses broader limitations than this particular embodiment.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.) See MPEP 716.02 (d).
Further, it is noted that Cho et al. (EP 3694004) discloses in Figure 6 that contact resistivity of TiOx to be above 1 ohm cm between a thickness of 0.4 nm to 1.6 nm, such that it is unclear if resistivity depends on the thickness or oxygen content of the TiOx as asserted by Applicant.
Therefore, the arguments were not found to be persuasive.
Conclusion
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/CHRISTINA CHERN/ Primary Examiner, Art Unit 1722
