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 .
Election/Restrictions
Applicant’s election without traverse of Group I, embodiment of figure 1, in the reply filed on 04/20/2026 is acknowledged.
Newly submitted claim 48 directed to a specie that is independent or distinct from the specie originally claimed for the following reasons:
Claim 48 is directed a photovoltaic device in which interfacial layer is made of “zinc oxide, mercury oxide, tin oxide, doped tin oxide, zinc-doped tin oxide, cadmium-doped tin oxide, doped zinc oxide, cadmium zinc oxide, magnesium oxide, nickel oxide, palladium oxide, silver oxide, strontium oxide, titanium oxide, or vanadium oxide”, whereas previously presented claim is directed to a photovoltaic device in which interfacial layer is made of material with formula ABO2 (see claim 29). Thus, the claims are directed to independent or distinct species requiring distinct materials to form the interfacial layer.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 48 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 33 and 48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected specie, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/20/2026.
Specification
The amendment filed on 03/04/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The amendment requires second semiconductor layer to include a II-V compound or alloy thereof (see claim 32 filed on 03/04/2025), which is not supported by the original disclosure as filed. Instant application and the parent applications disclose that the second semiconductor layer comprises a II-VI compound or alloy thereof (see [0057] of instant application), not a II-V compound or alloy thereof.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claim 29 objected to because of the following informalities:
“Co” is recited twice in line 3 as one of the trivalent metal ions B. It is suggested to delete “Co” between “Ti” and “Ni”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 32 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claim requires second semiconductor layer to include a II-V compound or alloy thereof, which is not supported by the original disclosure as filed. Instant application and the parent applications disclose that the second semiconductor layer comprises a II-VI compound or alloy thereof (see [0057] of instant application), not a II-V compound or alloy thereof.
For the examination purpose, this limitation is interpreted to mean a II-VI compound or alloy thereof.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 26-27, 30, 32 and 46-47 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Cunningham et al. (US 2005/0224111 A1) (cited in IDS dated 01/17/2025).
Regarding claim 26, Cunningham disclose a photovoltaic device (thin film semiconductor device 1, figure 1 and [0023-0025]) comprising:
a substrate (glass substrate 2, fig. 1 and [0024]);
a transparent conductive layer (first transparent conductive layer 3, fig. 1 and [0024]) over the substrate (2);
a heterojunction (7) over the transparent conductive layer (3) (fig. 1 and [0025]) including a first semiconductor layer (n-type window layer 5) including a semiconductor material (CdS) (fig. 1 and [0025]), and a second semiconductor layer (p-type absorber layer 6) (fig. 1 and [0025]) over the first semiconductor layer (5) (see fig. 1);
an interfacial layer (conductive back contact 8, fig. 1 and [0025]) over the heterojunction (see fig. 1); and
a back contact (layer 9 made of metal) over the interfacial layer (8) (fig. 1 and [0025]).
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP §2112.01.
Since the first semiconductor layer (5) of Cunningham is made of same material, CdS, ([0025]) as in the case of the instant application ([0053] of instant application), CdS material of first semiconductor layer (5) must be a wide-bandgap semiconductor material as in the case of the instant application.
Regarding claim 27, Cunningham further discloses that the wide bandgap semiconductor material is CdS ([0025]).
Regarding claim 30, Cunningham further discloses that the second semiconductor layer (6) has a thickness of 1.8 µm ([0032]).
Regarding claim 32, Cunningham further discloses that the second semiconductor layer (6) is made of CdTe ([0025]), which is a II-VI compound (see also [0017] that discloses the p-type layer is made of IIB-VIA compound).
Regarding claim 46, Cunningham further discloses that the second semiconductor layer (6) is made of one or more IIB elements and one or more VIA elements ([0017]). Cunningham further discloses the group IIB element is Cd and group VI element is Se and Te. Thus, the compound is CdTeSe, which reads on instant claimed CdTe alloy wherein Te is at least partially replaced by Se.
Regarding claim 47, Cunningham further discloses that the second semiconductor layer (6) is made of CdTe ([0017]), which also contains mercury (Hg) ([0017]). Thus, the compound is CdHgTe, which reads on instant claimed CdTe alloy wherein Cd is at least partially replaced by Hg.
Claims 26-27 and 29-32 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Munteanu et al. (US 2008/0092946 A1) (cited in IDS dated 01/17/2025).
Regarding claim 26, Munteanu discloses a photovoltaic device (solar cell 100) (fig. 1a or 1c) ([0026-0027]) comprising:
a substrate (8000);
a transparent conductive layer (7000) over the substrate (8000);
a heterojunction layer (photoactive conversion layer 80) ([0029]) consists of a composite photoactive layer ([0019]) interposed between two electrodes (fig. 1a: 7000 and 7000, or fig. 1c: 7000 and 9000) ([0026-0027] and [0067]), wherein the composite photoactive layer (80) is made of a first semiconductor layer (n-type semiconductor 2101) including a semiconductor such as ZnS or GaN ([0069] and [0038]) (fig. 3a), and a second semiconductor layer (p-type semiconductor layer 21n2) ([0040] and [0069]) having a surface (top surface), wherein the second semiconductor layer (21n2) is made of CdTe ([0040]);
an interfacial layer (p-type semiconductor or other hole conducting material layer 3000) over the second semiconductor layer (21n2) (fig. 3a and [0049]); and
a back contact over (7000 in fig. 1a or 9000 in fig. 1c) over the interfacial layer (3000) (fig. 3a and figure 1a/1c)
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP §2112.01.
Since the first semiconductor layer (n-type semiconductor 2101) of Munteanu is made of same material, such as GaN or ZnS ([0069] and [0038]) as in the case of the instant application (see [0053] of instant application), GaN or ZnS material of first semiconductor layer (2101) of Munteanu must be a wide-bandgap semiconductor material as in the case of the instant application.
Regarding claim 27, Munteanu further discloses that the first semiconductor layer (n-type semiconductor 2101) comprises GaN or ZnS ([0069] and [0038]).
Regarding claim 29, Munteanu further discloses that the interfacial layer (300) comprises CuAlO2 ([0049]), which reads on instant claimed formula ABO2 with A being Cu and B being Al.
Regarding claim 30, Munteanu further discloses that the second semiconductor layer (21n2) has a thickness up to 400 nm ([0034]), which implies that the thickness is less than 2 micron as required by instant claim.
Regarding claim 31, Munteanu further discloses that the first semiconductor layer (2101) includes GaN ([0038]), which is a III-V compound.
Regarding claim 32, Munteanu further discloses that the second semiconductor layer (21n2) includes CdTe ([0040]), which is a II-VI compound.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 31 and 46 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Cunningham et al. (US 2005/0224111 A1) as applied above, and further in view of Maltby et al. (US 2005/0257824 A1) (cited in IDS dated 01/17/2025).
Regarding claim 31, Cunningham further discloses the n-type or first semiconductor layer (5) is made, for example, of CdS ([0025]), which is a II-VI semiconductor compound. Cunningham further discloses that the first semiconductor layer (5) acts as the window layer ([0025]) through which light is transmitted to the absorber layer (6).
However, Cunningham does not explicitly disclose the n-type or first semiconductor layer (18) includes a III-V compound or alloy thereof.
Maltby discloses a photovoltaic cell (20) wherein a first semiconductor layer or window layer (240) is made of II-VI compound such as CdS or a III-V compound (see [0017]) through which light is transmitted to an absorber or a second semiconductor layer (250) (fig. 1 and [0017]). Thus, Maltby explicitly discloses CdS and III-V are art-recognized equivalent semiconductor material that is used to form a window layer.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have used the III-V compound as taught by Maltby instead of CdS to form the first semiconductor or window layer of Cunningham because substituting equivalents known for the same purpose is obvious. See MPEP §2144.06 (II).
Regarding claim 46, Cunningham further discloses the second semiconductor layer (6) is made of CdTe ([0025]). Cunningham does not specifically teach the second semiconductor layer includes a CdTe alloy wherein Te is at least partially replaced by Se or O. CdTe alloy in which Te is partially replaced by Se or S is CdTeSe or CdTeO, respectively.
Maltby discloses a solar cell wherein the semiconductor layer is made of CdTe, CdSe, or mixtures thereof ([0017]). The mixture of CdTe and CdSe is CdTeSe.
Therefore, it would have been obvious to one skilled in the art at the time of the invention to have used the mixtures of CdTe and CdSe as taught by Maltby to form the second semiconductor layer of Cunningham because Maltby explicitly discloses such compositions can be combined to form a mixture to form a semiconductor layer of the solar cell, or alternatively it is "prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Thus, Cunningham as modified by Maltby discloses the second semiconductor is CdTeSe, which reads on instant claimed CdTe alloy in which Te is at least partially replaced by Se.
Claims 46 and 47 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Munteanu as applied above.
Regarding claim 46, Munteanu further discloses that the second semiconductor layer (21n2) includes CdTe ([0040]), which is a II-VI compound. Although Munteanu does not explicitly disclose the second semiconductor layer includes a CdTe alloy in which Te is at least partially replaced by Se, Munteanu explicitly discloses the second semiconductor layer (21n2) can be made of CdTe or CdSe ([0040]). The mixture of CdTe and CdSe is CdTeSe.
Therefore, it would have been obvious to one skilled in the art at the time of the invention to have used the mixtures of CdTe and CdSe as taught by Munteanu to form the second semiconductor layer because it is "prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Thus, Munteanu as modified discloses the second semiconductor is CdTeSe, which reads on instant claimed CdTe alloy in which Te is at least partially replaced by Se.
Regarding claim 47, Munteanu further discloses that the second semiconductor layer (21n2) includes CdTe ([0040]), which is a II-VI compound. Although Munteanu does not explicitly disclose the second semiconductor layer includes a CdTe alloy in which Cd is at least partially replaced by Hg, Munteanu explicitly discloses the second semiconductor layer (21n2) can be made of CdTe or HgTe ([0040]). The mixture of CdTe and HgTe is CdHgSe.
Therefore, it would have been obvious to one skilled in the art at the time of the invention to have used the mixtures of CdTe and HgTe as taught by Munteanu to form the second semiconductor layer because it is "prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Thus, Munteanu as modified discloses the second semiconductor is CdHgTe, which reads on instant claimed CdTe alloy in which Cd is at least partially replaced by Hg.
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 26-27, 29-32 and 46-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,588,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent encompass all the limitations of the pending claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Compaan et al. (US 6,852,614) (cited in IDS dated 01/17/2025) discloses a photovoltaic device (photovoltaic cell 10, figure 1, 3:19-4:29) comprising: a transparent conductive layer (14) over the substrate (12), a first semiconductor layer (18) including a semiconductor material (CdS) and a second semiconductor layer (20) over the first semiconductor layer (18), an interfacial layer (22) over the heterojunction; and a back contact (24) over the interfacial layer (22).
US 2005/0000564 A1 to Sato et al. discloses a solar cell comprising a CuGaO2 transparent conductive oxide layer ([0102]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GOLAM MOWLA whose telephone number is (571)270-5268. The examiner can normally be reached M-Th, 7am - 4pm.
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/GOLAM MOWLA/ Primary Examiner, Art Unit 1721
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