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
This action is in response to Applicant’s Request for Reconsideration dated 06/12/2025.
Claim(s) 1-18 are currently pending.
Claim(s) 1 has been amended.
Claim(s) 2-18 have been added.
Terminal Disclaimer
The terminal disclaimer filed on 06/12/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,057,803 B2 has been reviewed and is accepted. The terminal disclaimer has been recorded. Examiner notes that the claims are rejected on the grounds of nonstatutory double patenting as claiming the same invention as that of claims 2-18 of Application No. 18/819,564 (reference application).
Claim Interpretation
The limitation “electrically distinct” is interpreted by the examiner to include layers, junctions, cells or strings capable of independently absorbing different wavelengths of light and generating electricity therefrom.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2-18 of Application No. 18/819,564 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of instant claims 1-18 can be found in claims 2-18 of Application No. 18/819,564.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 10-18
The recitation “the device” in line 8. The limitation lacks antecedent basis. While there is prior recitation of “a system”, there is no prior recitation of “a device”. Appropriate correction is required.
Claims 11-18 are rejected at least for their dependency on claim 10.
It is noted that, similarly to claim 10, the limitation “the device” in claims 11-13, 16 and 18 lacks antecedent basis.
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) 1-3, 5, 7-12, 14 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0118451 A1, Walukiewicz et al. (hereinafter “Walukiewicz”) in view of US 2012/0138116, Bhusari et al. (hereinafter “Bhusari”).
Regarding claim 1
Walukiewicz teaches a mechanically stacked device (corresponding to a multijunction solar cell 500 in which the individual cells are mechanically coupled) [Fig. 5 and paragraphs 0033-0034] comprising:
a bottom layer (corresponding to junction cell 410) comprising one or more silicon cells configured to independently convert transmitted light into bottom electricity (lower energy photons are absorbed by the bottom junction) [Figs. 1 and 5, paras. 0018, 0035], and
one or more upper layers (corresponding to junction cells 420 and 430) comprising one or more transmissive solar cells configured to independently convert light energy into top electricity and transmit unconverted portions of the energy towards the bottom layer (410) as transmitted light (the low energy gap is at the bottom followed by the intermediate energy gap followed by the large energy gap junction on the top, wherein the cells are stacked in a manner that selected energies of light received at the large energy gap junction may progress through each of the other junctions [Fig. 5, paragraphs 0008-0009 and 0036-0038],
wherein the one ore more upper layers (420 and 430) are mechanically stacked on a sun side of the bottom layer (410) within the device (500) [Fig. 5 and para. 0033].
Walukiewicz does not teach the bottom layer comprising one or more silicon cells.
Bhusari teaches a mechanically stacked solar cell device wherein the bottom layer may be composed of a material selected from silicon (Si), germanium (Ge), GaAs-based, InP-based, GaP based, GaSb-based, Ga(In)N-based materials [paras. 0031-0033].
Therefore, because Bhusari teaches choosing from a finite number of identified, predictable semiconductor materials, one of ordinary skill in the art would have found obvious to pursue the known options with reasonable expectation of success [see MPEP 2143]. Since Bhusari teaches that silicon leads to the anticipated success, said material is not of innovation but of ordinary skill and common sense [see MPEP 2143].
It is noted that one would have further find obvious to select the known material based on the desired band gap of each layer.
Regarding claim 2
Modified Walukiewicz teaches the device as set forth above, wherein the bottom layer (410) is electrically distinct and independent and operates independently within the device from the one or more upper layers (420 and 430) (cells 410, 420 and 430 are separately formed, and then positioned in a vertically stacked arrangement to facilitate conversion of light to electricity) [Walukiewicz, Fig. 5 and para. 0033].
Regarding claim 3
The limitation “wherein the device generates a total power conversion efficiency from the bottom electricity and the top electricity” is considered a functional limitation and is given weight to the extent that the prior art is capable of performing the claimed function. Since the structure of the prior art is the same as the one claimed, the claimed properties or functions are presumed to be inherent.
It has been held 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 (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
It is noted that Walukiewicz teaches each junction being responsive to different parts of the solar spectrum, wherein the lower energy light passes through the high band gap junctions where it is absorbed and converted to electrical power, and wherein the higher energy light is absorbed by the higher bandgap junctions and converted to electrical power [paras. 0008-0009].
Regarding claim 5
Modified Walukiewicz teaches the device as set forth above, wherein the mechanical stacking vertically aligns the one or more silicon cells (410) with the one or more transmissive solar cells (420 and 430) [Walukiewicz, Fig. 5 and para. 0033; Bhusari, paras. 0031-0033].
Regarding claim 7
The limitation “wherein the one or more upper layer increases a total power conversion efficiency of the device compared to a power conversion efficiency of the bottom layer alone in the device” is considered a functional limitation and is given weight to the extent that the prior art is capable of performing the claimed function.
It has been held 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 (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Further, since Walukiewicz teaches the bottom and upper layers absorbing different portions of the solar spectrum to maximize energy production [paras. 0008-0009], the structure disclosed in the art is capable of performing the claimed function.
Regarding claim 8
Modified Walukiewicz teaches the device as set forth above, further comprising: a support structure (530) securing the mechanical stacking of the bottom and one or more upper layers (410, 420 and 430) [Walukiewicz, Fig. 5 and para. 0034].
Regarding claim 9
Modified Walukiewicz teaches the device as set forth above.
The limitation “wherein one or more of the bottom and one or more upper layers being mechanically stacked are configured for removal from the device to enable installation of one or more electrically distinct substitute layers in the device that corresponding and separately generate the first or second electricity” is considered intended use and is given weight to the extent that the prior art is capable of performing the claimed function. Since the junction cells are disclosed to be formed separately and subsequently mechanically coupled in a vertically stacked arrangement [Walukiewicz, paras. 0011 and 0033], one would reasonably expect for the device of Walukiewicz to be capable of performing the intended use limitations.
With regards to the limitation “that corresponding and separately generate the first or second electricity”, it is noted that Walukiewicz teaches that the lower energy light passes through the high band gap junctions where it is absorbed and converted to electrical power, and wherein the higher energy light is absorbed by the higher bandgap junctions and converted to electrical power [paras. 0008-0009].
Regarding claim 10
Walukiewicz teaches a system (corresponding to a multijunction solar cell 500 in which the individual cells are mechanically coupled) [Fig. 5 and paragraphs 0033-0034] comprising:
a bottom layer (corresponding to junction cell 410) comprising one or more cells configured to independently convert transmitted light into bottom electricity (lower energy photons are absorbed by the bottom junction) [Figs. 1 and 5, paras. 0018, 0035], and
one or more upper layers (corresponding to junction cells 420 and 430) comprising one or more transmissive solar cells configured to independently convert light energy into top electricity and transmit unconverted portions of the energy towards the bottom layer (410) as transmitted light (the low energy gap is at the bottom followed by the intermediate energy gap followed by the large energy gap junction on the top, wherein the cells are stacked in a manner that selected energies of light received at the large energy gap junction may progress through each of the other junctions [Fig. 5, paragraphs 0008-0009 and 0036-0038],
wherein the one ore more upper layers (420 and 430) are mechanically stacked on a sun side of the bottom layer (410) within the device (500) [Fig. 5 and para. 0033].
Walukiewicz does not teach the bottom layer comprising one or more silicon cells.
Bhusari teaches a mechanically stacked solar cell device wherein the bottom layer may be composed of a material selected from silicon (Si), germanium (Ge), GaAs-based, InP-based, GaP based, GaSb-based, Ga(In)N-based materials [paras. 0031-0033].
Therefore, because Bhusari teaches choosing from a finite number of identified, predictable semiconductor materials, one of ordinary skill in the art would have found obvious to pursue the known options with reasonable expectation of success [see MPEP 2143]. Since Bhusari teaches that silicon leads to the anticipated success, said material is not of innovation but of ordinary skill and common sense [see MPEP 2143].
It is noted that one would have further find obvious to select the known material based on the desired band gap of each layer.
Regarding claim 11
Modified Walukiewicz teaches the system as set forth above, wherein the bottom layer (410) is electrically distinct and independent and operates independently within the device from the one or more upper layers (420 and 430) (cells 410, 420 and 430 are separately formed, and then positioned in a vertically stacked arrangement to facilitate conversion of light to electricity) [Walukiewicz, Fig. 5 and para. 0033].
Regarding claim 12
The limitation “wherein the device generates a total power conversion efficiency from the bottom electricity and the top electricity” is considered a functional limitation and is given weight to the extent that the prior art is capable of performing the claimed function. Since the structure of the prior art is the same as the one claimed, the claimed properties or functions are presumed to be inherent.
It has been held 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 (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
It is noted that Walukiewicz teaches each junction being responsive to different parts of the solar spectrum, wherein the lower energy light passes through the high band gap junctions where it is absorbed and converted to electrical power, and wherein the higher energy light is absorbed by the higher bandgap junctions and converted to electrical power [paras. 0008-0009].
Regarding claim 14
Modified Walukiewicz teaches the system as set forth above, wherein the mechanical stacking vertically aligns the one or more silicon cells (410) with the one or more transmissive solar cells (420 and 430) [Walukiewicz, Fig. 5 and para. 0033; Bhusari, paras. 0031-0033].
Regarding claim 16
The limitation “wherein the one or more upper layer increases a total power conversion efficiency of the device compared to a power conversion efficiency of the bottom layer alone in the device” is considered a functional limitation and is given weight to the extent that the prior art is capable of performing the claimed function.
It has been held 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 (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Further, since Walukiewicz teaches the bottom and upper layers absorbing different portions of the solar spectrum to maximize energy production [paras. 0008-0009], the structure disclosed in the art is capable of performing the claimed function.
Regarding claim 17
Modified Walukiewicz teaches the system as set forth above, further comprising: a support structure (530) securing the mechanical stacking of the bottom and one or more upper layers (410, 420 and 430) [Walukiewicz, Fig. 5 and para. 0034].
Regarding claim 18
Modified Walukiewicz teaches the device as set forth above.
The limitation “wherein one or more of the bottom and one or more upper layers being mechanically stacked are configured for removal from the device to enable installation of one or more electrically distinct substitute layers in the device that corresponding and separately generate the first or second electricity” is considered intended use and is given weight to the extent that the prior art is capable of performing the claimed function. Since the junction cells are disclosed to be formed separately and subsequently mechanically coupled in a vertically stacked arrangement [Walukiewicz, paras. 0011 and 0033], one would reasonably expect for the device of Walukiewicz to be capable of performing the intended use limitations.
With regards to the limitation “that corresponding and separately generate the first or second electricity”, it is noted that Walukiewicz teaches that the lower energy light passes through the high band gap junctions where it is absorbed and converted to electrical power, and wherein the higher energy light is absorbed by the higher bandgap junctions and converted to electrical power [paras. 0008-0009].
Claim(s) 4, 6, 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walukiewicz in view of Bhusari, as applied to claims 1-3, 5, 7-12, 14 and 16-18 above, and further in view of DE102011087672A1, Hoon et al. (hereinafter “Hoon”).
Regarding claims 4 and 13
All the limitations of claims 1 and 10 have been set forth above.
Modified Walukiewicz does not teach a reflective layer adjacent to the bottom layer.
Hoon teaches a mechanically stacked device (100) wherein a reflective layer (150) is positioned adjacent to a bottom layer (corresponding to cell 110d) in order to recycle the amount of sunlight passing through the solar cells [para. 0069].
Modified Walukiewicz and Hoon are analogous inventions in the field of mechanically stacked solar cells. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the device/system of modified Walukiewicz to comprise a reflective layer adjacent to the bottom layer, as in Hoon, in order recycle the amount of sunlight passing through the solar cells.
Regarding claims 6 and 15
All the limitations of claims 1 and 10 have been set forth above.
Modified Walukiewicz does not teach the system comprising two or more electrically distinct strings and each of the bottom and one or more upper layers is correspondingly connected to an electrically distinct string of the two or more electrically distinct strings.
Hoon teaches a system comprising two or more electrically distinct strings (see modules 100 connected in series in the X direction), each string comprising a bottom (110d) and one or more upper layers (110a-110c), each of the bottom and the one or more upper layers (110d and 110a-110c) correspondingly connected to an electrically distinct string of the two or more electrically distinct strings [Figs. 1 and 4, paras. 0037-0038 and 0083-0084]. By providing two or more electrically distinct strings, a higher voltage is delivered [para. 0079].
Modified Walukiewicz and Hoon are analogous inventions in the field of mechanically stacked solar cells. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the device/system of modified Walukiewicz to comprise two or more electrically distinct strings, as in Hoon, in order to deliver a higher voltage.
Response to Arguments
Applicant’s arguments with respect to claim(s) 06/12/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With regards to applicant’s argument that Walukiewicz does not teach “wherein the one or more upper layers are mechanically stacked on the sun side of the bottom layer within the device”, at least paragraphs [0026], [0028], [0033-0034] and [0038] of Walukiewicz teaches mechanically coupling the junctions within the device.
Examiner notes that Walukiewicz teaches the junction cells being formed separately and subsequently mechanically coupled in a vertically stacked arrangement [paras. 0011 and 0033]. Accordingly, Walukiewicz is not merely related to “integrated devices” as stated by Applicant in Page 7 of the remarks but is also related to “mechanically stacked devices”.
Examiner further notes that Walukiewicz teaches that the lower energy light passes through the high band gap junctions where it is absorbed and converted to electrical power, and wherein the higher energy light is absorbed by the higher bandgap junctions and converted to electrical power [paras. 0008-0009].
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 MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721