DETAILED ACTION
(1)
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 . Applicant’s amendment, filed June 30, 2026, is entered. Applicant amended claims 10 and 13. No new matter is entered. Claims 1-16 remain pending before the Office for review.
(2)
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sadok et al. (FR 3 105 584) in view of Kippelen et al. (U.S. Publication No. 2014/0202517). Ben Dkhil et al. (U.S. Publication No. 2023/0027970) is relied upon as an English language equivalent to Sadok et al.
With respect to claims 1, 7, 8 and 9, Sadok teaches a photovoltaic module (Figure 2) comprising a transparent substrate (glass or polymer), at least two photovoltaic cells on the substrate, wherein each of the photovoltaic cells comprises a lower electrode consisting of two layers (cathode and first interfacial layer), a photovoltaic active layer covering the upper surface of the lower electrode, and an upper electrode (second interfacial layer) comprising a polymer blend of PEDOT and sodium PSS covering the photovoltaic active layer, wherein the upper electrode is continuous, has an average thickness between 100 and 400 nm and has an organic fibrous structure. Figure 2 and Paragraphs 16, 17 and 29. Sadok further teaches the upper electrode of the first photovoltaic cell is in contact with the lower electrode of the second photovoltaic cell and the lower electrode has a lower surface in contact with the support and an upper surface. Figure 2 and Paragraph 18. Sadok also teaches the photovoltaic active layer is organic.
Sadok teaches the lower electrode is ITO with a ZnO or Al-ZnO interfacial layer thereon, but is silent as to whether it is an electrode meeting the specific requirements of the claimed invention.
However, Kippelen, which deals with organic solar cells, teaches an effective lower electrode arrangement for an organic solar cell comprises a PEDOT:PSS lower layer with a PEIE (organic polymer or molecule) interfacial layer thereon. Paragraphs 207, 208 and Example A4. Kippelen teaches this approach obtains an electrode with a reduced work function. Paragraph 251.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use Kippelen’s lower electrode arrangement in Sadok’s solar cell because Kippelen teaches doing so is an effective lower electrode for an organic solar cell and is associated with reduced work function.
Regarding the specific thickness of the lower electrode and the PEDOT:PSS material containing sodium and having an organic fibrous structure, Kippelen teaches both the lower and upper electrodes are selected from the same groupings of materials. Paragraph 208. Accordingly, it is within the scope of the combination of Sodak in view of Kippelen that both the first layer of the lower electrode and the upper electrode be formed of PEDOT and sodium PSS. Sodak, Paragraph 17 and Kippelen, Paragraph 208. Sodak teaches this material has an organic fibrous structure. Paragraph 17. Sodak also teaches 100 to 400 nm is an effective thickness for an electrode formed of this material. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
With respect to claim 2, modified Sodak teaches the thickness of the second layer of the lower electrode is less than 5 nm. Kippelen, Paragraph 242. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted). Modified Sodak also teaches the second layer of the lower electrode comprises amine groups on it slower surface in contact with the upper surface of the first layer of the lower electrode. Kippelen, Paragraphs 222 and 228.
With respect to claim 3, modified Sodak teaches the second layer of the lower electrode is continuous, transparent and free of metal oxide. Kippelen, Examples A4 and A16 (which characterizes a cell comprising the PEIE layer as being semi-transparent, meaning the PEIE layer is transparent within the breadth of the claimed invention).
With respect to claim 4, Sodak teaches the upper electrode has a square resistance of between 100 to 600 Ohm/square. Paragraph 30. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
With respect to claim 5, Sodak teaches the upper electrode has an RMS of equal to or less than 5 nm. Paragraph 31. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
With respect to claim 10, Examiner notes that the claim is a product-by-process claim. “If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985); MPEP 2113.
Modified Sodak, as explained above, teaches a solar cell meeting the structural requirements of the claimed invention. Modified Sodak further teaches the method of making the solar cell comprises providing a transparent substrate, depositing on the transparent substrate a PEDOT and sodium PSS first layer and a PEIE second layer, depositing a photovoltaic active layer on the second layer, and depositing an upper electrode on the photovoltaic active layer, wherein the process utilizes deposition of ink compositions by digital ink printing followed by heat treatment. Sodak, Paragraphs 16, 17, 29 and 35-44 and Kippelen, Paragraphs 207, 208 and Example A4.
With respect to claim 11, modified Sodak teaches that after deposition of the PEDOT and sodium PSS layer, a heat treatment step is performed at a temperature of 120 °C for 1 to 5 minutes. Paragraph 43.
With respect to claim 12, modified Sodak teaches that after deposition of the PEIE layer, the layer is annealed at a temperature of 120 °C, Kippelen, Example A4. Furthermore, regarding the annealing time, modified Sodak teaches a temperature range of 1 to 5 minutes is suitable. Paragraphs 40-43. Accordingly, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to utilize an annealing temperature range of 1 to 5 minutes when Kippelen’s PEIE interfacial layer is incorporated into modified Sodak’s module because modified Sodak teaches this to be an effective range, meaning the modification has a reasonable expectation of success.
(3)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sadok et al. (FR 3 105 584) in view of Kippelen et al. (U.S. Publication No. 2014/0202517), as applied to claims 1-5 and 7-12 above, and further in view of Courtright et al., ACS Appl. Mater. Interfaces, 2015, 26167-26175.
With respect to claim 6, modified Sodak teaches the second layer of the lower electrode is PEI but is silent as to its RMS.
However, Courtright, which deals with PEIE interfacial layers, teaches a PEI buffer layer, which is an equivalent to PEIE, has a surface roughness of 0.55 nm, suggesting PEIE has a comparable value. Sec. 2.1.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of modified Sodak with Courtright is the use of a known technique to improve a similar device in the same way. Both Sodak and Courtright deal with organic solar cells comprising PEI or PEIE interfacial layers. Courtright teaches the layers are formed to have a surface roughness of 0.55 nm. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to form modified Sodak’s PEIE with a similar thickness because Courtright teaches this to be effective for organic solar cells, meaning the modification has a reasonable expectation of success.
Additionally, as per the MPEP, Examiner notes that the courts have held that "a compound and all its properties are mutually inseparable," In re Papesch, 315 F.2d 381 (CCPA 1963). Additionally, as per the MPEP, the "products of identical chemical compositions cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." MPEP 2112.01 (internal citation omitted). In this case, modified Sodak’s PEIE second layer of the lower electrode is within the scope of materials disclosed as having the required surface roughness.
(4)
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Sadok et al. (FR 3 105 584) in view of Kippelen et al. (U.S. Publication No. 2014/0202517), as applied to claims 1-5 and 7-12 above, and further in view of Ballarino et al. (U.S. Publication No. 2016/0260919).
With respect to claims 13, 14, 15 and 16, modified Sodak teaches the ink compositions used for the digital ink jet printing comprise a viscosity of 10 mPA·s or less at 20 °C, includes the PEIE organic molecule, additives, polar solvents and residual water (see Kippelen, which teaches PEI is obtained in water and diluted with solvent), wherein the solvent is methoxy ethanol. Sodak, Claim 15 and Kippelen, Example A4.
Regarding the PEIE concentration in the ink, Ballarino, which deals with PEIE sprays, teaches a concentration of 0.4% by weight of PEIE in a deionized water solvent is an effective amount for forming a PEIE layer. Paragraph 87. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention that the combination of modified Sodak with Ballarino is the use of a known technique to improve a similar method in the same way. Both modified Sodak and Ballarino are concerned with depositing PEIE layers. Ballarino teaches an effective concentration in a deposition solution is 0.4 % by weight of the PEIE. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to similarly concentrate the PEIE in modified Sodak’s deposition solution because Ballarino teaches this to be an effective amount, meaning the modification has a reasonable expectation of success.
Furthermore, modified Sodak teaches the additive is present in an amount of between 2 to 10 % by volume, the solvent is present in an amount of 90 to 98% by volume minus the amount of PEDOT:PSS, and water is present based on the solvent being deionized water, as taught by Ballarino. Sodak, Claim 15 and Ballarino, Paragraph 87. It is within the skill level of one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to convert these values, based on the selected components, to amounts by weight, wherein the weight amounts would be expected to be approximate to a within the claimed ranges. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
(5)
Response to Arguments
Applicant’s remarks, filed June 30, 2026, are not persuasive. Applicant first argues Ben Dkhil in view of Kippelen do not teach or suggest the upper electrode of the first photovoltaic cell in contact with the second layer of the lower electrode of the second photovoltaic cell, as required by claim 1.
Examiner disagrees. Applicant’s argument is based on a misunderstanding of the broadest reasonable interpretation of the claimed invention. The claimed invention does not require direct contact. Other types of contact are within the scope of the claimed invention, such as indirect contact or electrical contact. The cited art of record teaches both of these arrangements. Applicant is encouraged to use more descriptive language to distinguish the claimed invention from the art of record.
Applicant next argues Kippelen does not disclose using the interfacial layer as the contract target for a serial interconnection between adjacent photovoltaic cells in a module. This aspect of Applicant’s argument is not persuasive because it relies on features of the invention that are not claimed, fails to consider the breadth of the claimed invention, as explained above, and fails to consider Ben Dkhil and Kippelen, when considered in combination. In response to Applicant's arguments against the references individually, 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).
Applicant next argues claim 1 is not directed toward a work-function modifying layer alone and requires a specific module architecture and a specific intercell contact arrangement. Again, as noted above, the module architecture taught by the art of record, in combination, is within the scope of the claimed invention. Furthermore, 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).
Applicant next argues Examiner has failed to consider the operating context of the respective prior art disclosures. Examiner disagrees. Both references are concerned with light to electricity conversion. Applicant also alleges Examiner impermissibly used Applicant’s invention as a roadmap. In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
(6)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Oooka et al. (WO 2020/188778) teaches a photoelectric conversion element comprising a multi-layer first electrode (4B, 14) with the upper electrode (6A) of an adjacent sub-cell serially connected to the second sub-cell via a direct connection of the upper electrode two the second layer of the multi-layer first electrode. Abstract and Figure 5.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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