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 . This is the first office action on the merits.
(2)
Election/Restrictions
Claims 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 22, 2025.
Applicant's election with traverse of Group I, claims 1-11, in the reply filed on October 22, 2025, is acknowledged. The traversal is on the ground(s) that omitting the patterning step in the fabrication process would lead to a device that lacks structural features required by Group I, meaning the product cannot be made by a materially different process. This is not found persuasive because the product of Group I can be made by a method wherein a masking layer is used to form the structural features of the blind cavities, wherein the masking layer is a materially different method than forming the layers and removing some portion of the layers via patterning to form the structural feature.
The requirement is still deemed proper and is therefore made FINAL.
(3)
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 2-6 and 10 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.
Claim 2 recites the limitation "the protective layer" in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant should amend the limitation to “the transparent protective layer” for proper antecedent basis.
Claim 3 recites the limitation "the protective layer" in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant should amend the limitation to “the transparent protective layer” for proper antecedent basis.
Claim 6 recites the limitation "the protective layer" in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant should amend the limitation to “the transparent protective layer” for proper antecedent basis.
Claim 10 recites the limitation "the protective layer" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Applicant should amend the limitation to “the transparent protective layer” for proper antecedent basis.
Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art. Claims 4 and 5 are rejected due to their dependency on claim 1.
(4)
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.
Claims 1, 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kishi et al. (U.S. Patent No. 4,795,500) in view of Fukatsu et al. (U.S. Patent No. 4,689,438) and Liu et al. (U.S. Publication No. 2021/0013354).
With respect to claims 1, 2 and 6, Examiner notes the statements “for an electronic device” and “intended to be exposed to incident light radiation” are statements of intended use that do not further limit the claimed invention. The cited statements recite a function performed by the solar cell and its constituent materials. Any solar cell meeting the requirements of the claimed invention is capable of performing the same use absent evidence to the contrary.
Kishi teaches a solar cell (Figures 2 and 6) comprising a substrate (1) made of transparent glass or plastic and intended to be exposed to incident light radiation, a first electrode (3) made of a transparent electrically conducting material and formed on one face of the substrate, the first electrode comprising an inner face opposite an outer face facing the substrate, an absorbent layer (4) extending, via the outer face, onto the inner face of the first electrode, and a second electrode (5) made of an electrically conductive material and extending onto an inner face of the absorbent layer opposite the outer face thereof. Figures 2 and 6 and Col. 2, Lines 40-62.
Kishi further teaches the absorbent layer and the second electrode are perforated with holes (6) to delimit a plurality of blind cavities within the scope of the claimed invention, wherein the bottom of each cavity is formed by the inner face of the first electrode. Figure 6 and Col. 3, Line 67 to Col. 4, Line 17.
Kishi is silent as to whether the inner face of the transparent electrically conductive material has, over its entire surface, a roughness such that it is suitable for scattering incident light.
However, Fukatsu, which deals with solar cells, teaches the side of the transparent conductive layer of a solar cell device facing the light absorption layer comprises, over its entire surface, a roughness such that it is suitable for scattering incident light to increase the optical path length of an incident ray, which improves photoelectric conversion efficiency. Abstract, Figure 1 and Col. 3, Lines 3-15.
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 modify the inner face of Kishi’s transparent electrically conductive material so that its entire surface has a roughness that that it is suitable for scattering incident light because doing so increases the optical path length of an incident ray, which improves photoelectric conversion efficiency.
Modified Kishi further teaches the solar cell comprises a transparent protective layer (7) in the form of EVA covering the second electrode and filling each cavity. Figure 3 and Col. 3, Lines 14-18.
Modified Kishi is silent as to whether the transparent protective layer is polyimide and has a refractive index of between 1.3 and 1.8.
However, Liu, which deals with solar cells, teaches polyimide and EVA are recognized equivalents in the art and that polyimide has a refractive index of between 1.45 to 1.55, which covers the claimed range. Paragraph 23. 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).
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 utilize polyimide in place of EVA because Liu teaches the two are recognized equivalents, meaning the modification has a reasonable expectation of success.
(5)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kishi et al. (U.S. Patent No. 4,795,500) in view of Fukatsu et al. (U.S. Patent No. 4,689,438) and Liu et al. (U.S. Publication No. 2021/0013354), as applied to claims 1, 2 and 6 above, and further in view of Roche et al. (U.S. Publication No. 2011/0100424).
With respect to claim 7, modified Kishi teaches the required substrate but is silent as to whether the substrate is formed by a stack of layers comprising at least a carrier layer and an interlayer, the interlayer being interposed between the carrier layer and the first electrode and having a refractive index between 1.6 and 1.9.
However, Roche, which deals with solar cells, teaches the sides of a transparent substrate (carrier layer) are provided with an anti-reflection layer laminate to reduce light reflection. Paragraphs 2, 3 and 21. Roche teaches some layers of the anti-reflection layer laminate have a refractive index of 1.7. Paragraph 21.
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 position an anti-reflection layer laminate between the substrate and the solar cell taught by modified Kishi because Roche teaches doing so reduces light reflection. One layer of the anti-reflection layer laminate satisfies the interlayer requirement.
(6)
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kishi et al. (U.S. Patent No. 4,795,500) in view of Fukatsu et al. (U.S. Patent No. 4,689,438) and Liu et al. (U.S. Publication No. 2021/0013354), as applied to claims 1, 2 and 6 above, and further in view of Imboden (U.S. Publication No. 2022/0291638).
With respect to claim 8, modified Kishi teaches the solar cell but is silent as to its incorporation in a timepiece.
However, Imboden, which seals with solar watches, teaches a timepiece (10) including a case comprising a middle part (11), a crystal (12) and a back defining an internal volume having the horological movement (13) housed therein, wherein the timepiece also comprises a solar cell configured to supply electrical energy to the horological movement. Figures 1 and 2 and Paragraphs 45-48.
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 Kishi with Imboden is the simple substitution of one known element for another to obtain predictable results. Modified Kishi teaches a solar cell. Imboden teaches a timepiece comprising horological movement electrically powered by a solar cell. 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 modified Kishi’s solar cell in Imboden’s timepiece because Imboden teaches this to be an effective arrangement for powering a horological movement of a timepiece, meaning the modification has a reasonable expectation of success.
With respect to claim 9, modified Kishi teaches the solar cell is indirectly fixed to the crystal (12) via its inclusion within the timepiece, and thus indirectly rests against the crystal as well, wherein the protective layer, which is included within the internal volume of the case, directly or indirectly faces the internal volume. Imboden, Figures 1 and 2.
With respect to claim 10, modified Kishi teaches the solar cell and the crystal are separate pieces.
However, as per the MPEP, the choice between an integrated or separate design is obvious absent a result that is contrary to the understandings and expectations of the art. MPEP 2144.04(V)(B)&(C).
In this case, it’s obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention that the timepiece is solar powered independent of whether the solar cell glass substrate and the timepiece glass are separate or integrated.
Finally, when the solar cell glass substrate and the timepiece crystal are a singular piece, the protective layer, which is included within the internal volume of the case, faces the internal volume of the case.
With respect to claim 11, modified Kishi teaches the substate forms the dial and the second electrode of the solar cell formed on the substrate indirectly or directly faces the glass. Imboden, Figures 1 and 2.
(7)
Allowable Subject Matter
Claims 3-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: claim 1, from which claim 3 depends, requires the protective layer covers the second electrode and fills each cavity. Claim 3 further defines the protective layer to include a stack of first and second layers, meaning claim 3 requires that each of the layers of the stack – the first and second layers – fills each cavity. This feature of the invention is generally depicted in figure 6. In contrast to the clear requirements of the claimed invention. Kishi teaches a singular transparent protective layer that entirely fills each cavity and covers space above the cavities (figure 1), meaning even if a second layer were added to the transparent protective layer, as required by claim 3, it would not fill each cavity, as is also required by claim 3.
(8)
Conclusion
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