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.
Claims 1, 3-6, 8-9, 12, 14, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Stodolny et al. (US 2020/0287066) in view of Mao et al. (US 2024/0088308).
Regarding claims 1 and 20, Stodolny discloses a solar cell assembly comprising, a silicon substrate ([0013]), wherein the silicon substrate is provided with a first surface (bottom surface of 3’ in Figure 2A) and a second surface opposite the first surface (top surface of 3 in Figure 2A), the first surface is provided with several first regions (regions of 3’ above 4’, 5’, and 6’ in Figure 2A) and second regions (regions of 3’ above 7’ in Figure 2A), the first regions and the second regions are alternately arranged in sequence (regions of 3’ above 4’, 5’, and 6’ in relation to regions of 3’ above 7’ in Figure 2A), and the second surface is provided with several third regions (regions of 3 below 4, 5, and 6 in Figure 2A) and several fourth regions (regions of 3 below 7 in Figure 2A, the third regions and fourth regions are alternately arranged in sequence (regions of 3 below 4, 5, and 6 in relation to regions of 3 below 7 in Figure 2A); P-type doped layers, wherein the P-type doped layers are arranged on the first regions and do not cover the second regions ([0022]; 5’ in Figure 2A); first dielectric layers, wherein the first dielectric layers are arranged between the P-type doped layers and the first surface (4’ between bottom surface of 3’ and 5’ in Figure 2A); N-type doped layers, wherein the N-type doped layer are arranged on the third regions and do not cover the fourth regions ([0026]; 5 in Figure 2A), and a total area of all the third regions is greater than a total area of all the first regions ([0029] discloses layer 5 may be wider than electrode 6 and that the width is dependent on alignment tolerance requirements and the contact resistance between the poly finger and semiconductor substrate); second dielectric layers, wherein the second dielectric layers are arranged between the N-type doped layers and the second surface (4 between top surface of 3 and 5 in Figure 2A); and first electrodes and second electrodes, wherein the first electrodes are in contact with the P-type doped layers, and the second electrodes are in contact with the N-type doped layers (6’ and 6, respectively, in Figure 2A).
Stodolny does not explicitly disclose a P-type silicon substrate.
Mao discloses a solar cell and further discloses the use of either an n-type or p-type silicon substrate ([0047],[0048]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the silicon substrate of Stodolny with a p-type silicon substrate, as disclosed by Mao, because as evidenced by Mao, the use of an n-type or p-type substrate amounts to the choice from among a limited number of possibilities for a silicon substrate in a photovoltaic device, and one of ordinary skill in the art would have a reasonable expectation of success when using a p-type silicon substrate in the solar cell of Stodolny based on the teaching of Mao.
While modified Stodolny does disclose a bi-facial solar cell (Stodolny - [0026]), modified Stodolny does not explicitly disclose wherein portions, corresponding to the third regions, of a surface of the P-type silicon substrate are provided with pyramid base structures or micro-flock structures, wherein portions, corresponding to the fourth regions, of a surface of the P-type silicon substrate are provided with pyramid base structures or micro-flock structures; or portions, corresponding to the fourth regions, of the surface of the P-type silicon substrate are provided with pyramid structure, inverted-pyramid structures, or chain pyramid flocked structures.
Mao discloses a solar cell and further discloses the light receiving surface of the substrate may be configured to be a pyramid textured surface so that the light receiving surface of the substrate has a low reflectivity to incident light ([0049]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a pyramid textured surface, as disclosed by Mao, on the rear light receiving surface (Stodolny – [0026]) of the substrate of modified Stodolny because the front surface of the substrate has a low reflectivity to incident light (Mao – [0049]).
It is noted that with regard to the limitation requiring “pyramid base structures,” it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the pyramid texture disclosed in modified Stodolny into a pyramid base structured texture because such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Modified Stodolny discloses portions, corresponding to the third regions, of a surface of the P-type silicon substrate (shown in annotated Fig. 2B below) are provided with pyramid base structures (Mao – [0049] as modified above), wherein portions, corresponding to the fourth regions, of a surface of the P-type silicon substrate (shown in annotated Fig. 2B below) are provided with pyramid base structures (Mao – [0049] as modified above).
With regard to the limitation “the first surface is a light-facing surface, the second surface is a light-sheltered surface,” the limitations are directed to the manner in which the apparatus is intended to be used and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 3, modified Stodolny discloses all the claim limitations as set forth above. Modified Stodolny further discloses the number of the first regions is equal to the number of the third regions (Stodolny – regions of 3’ above 4’,5’, and 6’ in Figure 2A in relation to regions of 3 below 4, 5, and 6 in Figure 2A).
Regarding claim 4, modified Stodolny discloses all the claim limitations as set forth above. Modified Stodolny further discloses the number of the first electrodes is equal to the number of the second electrodes (Stodolny – 6’ in relation to 6 in Figure 2A).
Regarding claim 5, modified Stodolny discloses all the claim limitations as set forth above.
While modified Stodolny does disclose widening the passivation layer 5 does not harm the open circuit voltage and that alignment tolerance requirements may be more relaxed, and that depending on further contact resistance between the poly finger and the substrate, one may therefore want to use passivating layers that are wider than the metal contact electrodes by an amount more than necessary for simply alignment tolerance of the electrodes to the poly fingers, e.g. up to 50% or even up to 100 % wider (Stodolny - [0029]); modified Stodolny does not explicitly disclose a ratio of a total area of the first regions to an area of the first surface is smaller than 8%, 6%, or 5%.
As the material cost and the efficiency of manufacturing and operation are variables that can be modified, among others, by adjusting said areas of the first regions, the precise areas of the first regions would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed areas of the first regions cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the areas of the first regions in the apparatus of modified Stodolny to obtain the desired balance between the material cost and the efficiency of manufacturing and operation (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 6, modified Stodolny discloses all the claim limitations as set forth above.
While modified Stodolny does disclose widening the passivation layer 5 does not harm the open circuit voltage and that alignment tolerance requirements may be more relaxed, and that depending on further contact resistance between the poly finger and the substrate, one may therefore want to use passivating layers that are wider than the metal contact electrodes by an amount more than necessary for simply alignment tolerance of the electrodes to the poly fingers, e.g. up to 50% or even up to 100 % wider (Stodolny - [0029]); modified Stodolny does not explicitly disclose a ratio of a total area of the third regions to an area of the second surface is greater than or equal to 30%, 40%, 50%, or 60% and smaller than 100%.
As the material cost and the efficiency of manufacturing and operation are variables that can be modified, among others, by adjusting said areas of the third regions, the precise areas of the third regions would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed areas of the third regions cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the areas of the third regions in the apparatus of modified Stodolny to obtain the desired balance between the material cost and the efficiency of manufacturing and operation (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 Stodolny discloses all the claim limitations as set forth above. Modified Stodolny further discloses portions, corresponding to the first regions, of a surface of the p-type silicon substrate are provided with non-textured structures (Stodolny – bottom of surface of 3’ in Figure 2A does not depict a textured surface above 4’, 5’, and 6’).
Regarding claim 9, modified Stodolny discloses all the claim limitations as set forth above.
Modified Stodolny does not explicitly disclose portions, corresponding to the second regions, of a surface of the p-type silicon substrate are provided with pyramid flocked structures, inverted-pyramid flocked structures, or chain pyramid flocked structures.
Mao discloses a solar cell and further discloses the front surface of the substrate may be configured to be a pyramid textured surface so that the front surface of the substrate has a low reflectivity to incident light ([0049]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a pyramid textured surface, as disclosed by Mao, on the front surface of the substrate of modified Stodolny because the front surface of the substrate has a low reflectivity to incident light (Mao – [0049]).
Regarding claim 12, modified Stodolny discloses all the claim limitations as set forth above. Modified Stodolny further discloses the p-type doped layers and the n-type doped layers comprise doped polysilicon layers (Stodolny – [0013],[0026]).
With regard to the limitation “semi-insulating,” it is noted that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 14, modified Stodolny discloses all the claim limitations as set forth above. Modified Stodolny further discloses a width of a surface of the n-type doped layer being in contact with the second dielectric layer is greater than a width of a surface of the n-type doped layer provided with the second electrode (Stodolny – 5 in relation to 4 in Figure 1A compared with 5 in relation to 6 in Figure 1A).
Regarding claim 21, modified Stodolny discloses all the claim limitations as set forth above.
While modified Stodolny does disclose widening the passivation layer 5 does not harm the open circuit voltage and that alignment tolerance requirements may be more relaxed, and that depending on further contact resistance between the poly finger and the substrate, one may therefore want to use passivating layers that are wider than the metal contact electrodes by an amount more than necessary for simply alignment tolerance of the electrodes to the poly fingers, e.g. up to 50% or even up to 100 % wider (Stodolny - [0029]); modified Stodolny does not explicitly disclose areas of at least some of the third regions are greater than areas of at least some of the first regions, or an area of each third region is greater than an area of each first region.
As the material cost and the efficiency of manufacturing and operation are variables that can be modified, among others, by adjusting said areas of the third regions, the precise areas of the third regions would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed areas of the third regions cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the areas of the third regions in the apparatus of modified Stodolny to obtain the desired balance between the material cost and the efficiency of manufacturing and operation (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).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Stodolny et al. (US 2020/0287066) in view of Mao et al. (US 2024/0088308) as applied to claim 1 above, and further in view of Otsuka et al. (US 2017/0352774).
Regarding claim 7, modified Stodolny discloses all the claim limitations as set forth above.
Modified Stodolny does not explicitly disclose an oxygen content in the p-type silicon substrate is smaller than or equal to 12.5, 12, 11, or 10 ppma.
Otsuka discloses a solar cell and further discloses an oxygen content in a silicon substrate is equal to 12 ppma ([0054]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the p-type silicon substrate of modified Stodolny with an oxygen content of 12 ppma, as disclosed by Otsuka, because as evidenced by Otsuka, the use of a substrate with an oxygen content of 12 ppma in a photovoltaic device amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when forming the p-type silicon substrate of modified Stodolny with an oxygen content of 12 ppma based on the teaching of Otsuka.
Claims 22 is rejected under 35 U.S.C. 103 as being unpatentable over Stodolny et al. (US 2020/0287066) in view of Mao et al. (US 2024/0088308) as applied to claim 1 above, and further in view of Gong (CN 114583015-A – see attached machine translation).
Regarding claim 22, modified Stodolny discloses all the claim limitations as set forth above.
Modified Stodolny does not explicitly disclose the first dielectric layers and the second dielectric layers are porous dielectric layers, and a size of at least one pore in the first dielectric layers is greater than a size of at least one pore in the second dielectric layers, or the first dielectric layers and the second dielectric layers are porous dielectric layers, and the number of pores per unit area in the first dielectric layers is greater than the number of pores per unit area in the second dielectric layers.
Gong discloses a solar cell and further discloses porous dielectric layers ([0048]) and a relationship between the size of the pores and carrier tunneling, short circuit current, passivation effect, and open circuit voltage ([0062],[0069],[0071]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first and second dielectric layers of modified Stodolny such that the dielectric layers are porous dielectric layers, because as taught by Gong, if the diameter of the pores are too small, an insignificant carrier tunneling effect is achieved ([0062]).
With regard to the limitation “a size of at least one pore in the first dielectric layers is greater than a size of at least one pore in the second dielectric layers, or the number of pores per unit area in the first dielectric layers is greater than the number of pores per unit area in the second dielectric layers”, as the carrier tunneling, short circuit current, passivation effect, and open circuit voltage are variables that can be modified, among others, by adjusting said size of the pores, the precise size of the pores would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed size of the pores cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the size of the pores in the first and second dielectric layers of the apparatus of modified Stodolny to obtain the desired balance between the carrier tunneling, short circuit current, passivation effect, and open circuit voltage (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).
Additionally, the method for producing the pores disclosed in paragraph [n0058] of Gong would necessarily result in pores of different sizes, therefore, the limitation is necessarily satisfied due to the breadth of "a size of at least one pore in the first dielectric layers is greater than a size of at least one pore in the second dielectric layers."
Claims 1 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Stodolny et al. (US 2020/0287066) in view of Mao et al. (US 2024/0088308).
Regarding claim 1, Stodolny discloses a solar cell assembly comprising a silicon substrate ([0013]), wherein the silicon substrate is provided with a first surface (top surface of 2 in Figure 2A) and a second surface opposite the first surface (bottom surface of 2 in Figure 2A), the first surface is provided with several first regions (shown in annotated Figure 2B below; it is noted that the claim limitation “regions” does not specify the size or boundary of the respective regions, therefore, any regions of the surface claimed satisfies the limitation) and second regions (shown in annotated Figure 2B below; it is noted that the claim limitation “regions” does not specify the size or boundary of the respective regions, therefore, any regions of the surface claimed satisfies the limitation), the first regions and the second regions are alternately arranged in sequence (shown in annotated Figure 2B below), and the second surface is provided with several third regions (shown in annotated Figure 2B below; it is noted that the claim limitation “regions” does not specify the size or boundary of the respective regions, therefore, any regions of the surface claimed satisfies the limitation) and several fourth regions (shown in annotated Figure 2B below; it is noted that the claim limitation “regions” does not specify the size or boundary of the respective regions, therefore, any regions of the surface claimed satisfies the limitation), the third regions and fourth regions are alternately arranged in sequence (shown in annotated Figure 2B below); P-type doped layers, wherein the P-type doped layers are arranged on the first regions and do not cover the second regions ([0022]; 5 in Figure 2A); first dielectric layers, wherein the first dielectric layers are arranged between the P-type doped layers and the first surface (4 between top surface of 2 and 5 in Figure 2A); N-type doped layers, wherein the N-type doped layer are arranged on the third regions and do not cover the fourth regions ([0026]; 5’ in Figure 2A), and a total area of all the third regions is greater than a total area of all the first regions (shown in annotated Figure 2B below; it is noted that the claim limitation “regions” does not specify the size or boundary of the respective regions, therefore, any regions of the respective surface claimed satisfies the limitation); second dielectric layers, wherein the second dielectric layers are arranged between the N-type doped layers and the second surface (4’ between bottom surface of 2 and 5’ in Figure 2A); and first electrodes and second electrodes, wherein the first electrodes are in contact with the P-type doped layers, and the second electrodes are in contact with the N-type doped layers (6 and 6’, respectively, in Figure 2A).
Stodolny does not explicitly disclose a P-type silicon substrate.
Mao discloses a solar cell and further discloses the use of either an n-type or p-type silicon substrate ([0047],[0048]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the silicon substrate of Stodolny with a p-type silicon substrate, as disclosed by Mao, because as evidenced by Mao, the use of an n-type or p-type substrate amounts to the choice from among a limited number of possibilities for a silicon substrate in a photovoltaic device, and one of ordinary skill in the art would have a reasonable expectation of success when using a p-type silicon substrate in the solar cell of Stodolny based on the teaching of Mao.
With regard to the limitation “the first surface is a light-facing surface, the second surface is a light-sheltered surface,” the limitations are directed to the manner in which the apparatus is intended to be used and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
[AltContent: arrow][AltContent: oval][AltContent: oval][AltContent: oval][AltContent: oval][AltContent: oval][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: oval][AltContent: oval][AltContent: arrow][AltContent: oval][AltContent: oval][AltContent: arrow][AltContent: arrow][AltContent: oval][AltContent: textbox (fourth regions)][AltContent: textbox (third regions)][AltContent: textbox (second regions)][AltContent: textbox (first regions)]
PNG
media_image1.png
234
369
media_image1.png
Greyscale
Regarding claim 17, modified Stodolny discloses all the claim limitations as set forth above. Modified Stodolny further discloses first inward extension layers are formed between the first dielectric layers and the p-type silicon substrate (Stodolny - 3-I in Fig. 2B), second inward-extension layers formed between the second dielectric layers and the p-type silicon substrate (Stodolny - 3-I’ in Fig. 2B), a thickness of the second inward-extension layer (Stodolny – thickness of 3-II’ in Figure 2B) is greater than a thickness of the first inward-extension layer (Stodolny – thickness of 3-I in Figure 2B).
Response to Arguments
Applicant's arguments filed 08/22/2025 have been fully considered but they are not persuasive. Specifically, Applicant argues that amended claim 1 has the following distinguishing technical features over Stodolny: 1) the first surface is a light-facing surface, the second surface is a light-sheltered surface; 2) a total area of all the third regions is greater than a total area of all the first regions; and 3. portions, corresponding to the third regions, of a surface of the P-type silicon substrate are provided with pyramid base structures or micro-flock structures; portions, corresponding to the fourth regions, of a surface of the P-type silicon substrate are provided with pyramid base structures or micro-flock structures; or portions, corresponding to the fourth regions, of the surface of the P-type silicon substrate are provided with pyramid structures, inverted-pyramid structures, or chain pyramid flocked structures.
In response to Applicant’s argument, as set forth in the office action, with regard
to the limitation “the first surface is a light-facing surface, the second surface is a light-sheltered surface,” the limitations are directed to the manner in which the apparatus is intended to be used and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
With regard to Applicant’s argument directed to technical feature 2, as set forth in the office action, paragraph [0029] of Stodolny discloses layer 5 may be wider than electrode 6 and that the width is dependent on alignment tolerance requirements and the contact resistance between the poly finger and semiconductor substrate. Further, the limitation “a total area of all the third regions is greater than a total area of all the first regions” is not commensurate in scope with the regions described in the as-filed specification because the limitations of the claims do not specify the size, location, or boundaries of the respective regions leaving the breadth of the claims open to the interpretation set forth in annotated Figure 2B above.
Regarding Applicant’s argument directed to technical feature 3, Stodolny in view of Mao satisfies the portion structures claimed as set forth in the office action. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant's arguments directed to the design of the invention reducing parasitic light absorption while improving passivation effect, and further improving the conversion efficiency of the solar cell on pages 10 through 14 of the Remarks; the fact that the inventor 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is further noted that with regard to Applicant’s arguments directed to the design of the invention reducing parasitic light absorption while improving passivation effect, and further improving the conversion efficiency of the solar cell on pages 10 through 14 of the Remarks; Applicant has not provided evidence of improved performance commensurate in scope with the structure claimed.
Applicant’s arguments directed to the improved performance of the solar cell claimed are not persuasive because the breadth of the claim limitations are not commensurate in scope with a structure described in the as-filed specification which achieves the improved performance asserted. Applicant’s assertions of unexpected results constitute mere argument (MPEP 716.01(c)).
Unexpected results must be established by factual evidence; mere argument or conclusory statements in the specification do not suffice. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1977) (quoting In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)).
Unexpected results must be established by factual evidence (MPEP 716.01(c)).
Mere conclusions in the as-filed specification and Applicant’s Remarks, without evidence in support of the assertions, are insufficient in showing the criticality of the claimed structure.
It is also well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in size, concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical, i.e., it leads to a new, unexpected result. In re Woodruff 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/TAMIR AYAD/ Primary Examiner, Art Unit 1726
Prosecution Insights