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 .
Response to Amendment
The amendment filed 6/30/2026 does not place the application in condition for allowance.
The previous art rejections are withdrawn due to Applicant’s amendment.
New analysis follows.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0306137 to Ko II, and further in view of US 2021/0186825 to Klee (of record).
Regarding claim 1, Ko II teaches a solar cell element coating composition (¶0085) comprising
An organopolysiloxane represented by the average unit formula (ViMe2SiO1/2)2(Ph2SiO2/2)10(Me2SiO2/2)40 (¶0090, 0092, 0093)
An organosilicon compound (HMe2SiO1/2)2(Ph2MeSiO2/2)1.5
A platinum group metal catalyst.
The organopolysiloxane reads on the claimed formula (1), where Vi reads on alkenyl group R1, Me reads on unsubstituted monovalent saturated hydrocarbon group R3, Ph reads on unsubstituted aryl group Ar, and Me reads on unsubstituted monovalent saturated hydrocarbon group R2, where a is 10, b is 40, and a/(a+b) is 0.2.
The organosilicon compound has two silicon-bonded hydrogen atoms per molecule.
The platinum group metal catalyst is platinum(0)-1,3-divinyl-1,1,3,3,-tetramethyldisiloxane. The coating composition is cured by hydrosilylation (¶0049). While Ko II does not specifically teach that the catalyst is activated by light having a wavelength from 200 to 500 nm, Klee teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to reduce a reaction time of a hydrosilylation reaction by the inclusion of a photosensitizer, so that the platinum group metal catalyst is activatable by light at 405 nm (Fig. 6, ¶0042-0045, 0056, 0127-0133, 0155-0161).
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko II, and further in view of US 2013/0059109 to Kretschmann (of record).
Regarding claims 1-3, Ko II teaches a solar cell element coating composition (¶0085) comprising
An organopolysiloxane represented by the average unit formula (ViMe2SiO1/2)2(Ph2SiO2/2)10(Me2SiO2/2)40 (¶0090, 0092, 0093)
An organosilicon compound (HMe2SiO1/2)2(Ph2SiO2/2)1.5
A platinum group metal catalyst.
The organopolysiloxane reads on the claimed formula (1), where Vi reads on alkenyl group R1, Me reads on unsubstituted monovalent saturated hydrocarbon group R3, Ph reads on unsubstituted aryl group Ar, and Me reads on unsubstituted monovalent saturated hydrocarbon group R2, where a is 10, b is 40, and a/(a+b) is 0.2.
The organosilicon compound has two silicon-bonded hydrogen atoms per molecule.
The platinum group metal catalyst is platinum(0)-1,3-divinyl-1,1,3,3,-tetramethyldisiloxane. The coating composition is cured by hydrosilylation (¶0049). While Ko II does not specifically teach that the catalyst is activated by light having a wavelength from 200 to 500 nm, Kretschmann teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art increase a working time of the composition by using a light-activated platinum group metal catalyst (¶0123-0134). Per claims 1 and 3, Kretschmann particularly prefers that the catalyst is n5-cyclopentadienyl)trialiphatic platinum compound (¶0125, 0133). While Kretschmann does not explicitly teach the wavelength of activation by light, it is expected that the catalyst taught by that reference necessarily is active in the claimed wavelength range. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP §2112.01.
Per claim 2, modified-Ko II teaches the limitations of claim 1. While Ko II does not teach that the component which reads on claimed component (B) has the compositional formula (2), it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to include increase the ratio of silicon-bonded hydrogen atoms to silicon-bonded Me groups in the composition in order to increase a cure rate (¶0109-0114 of Kretschmann). Therefore, the organohydrogenpolysiloxane having the average compositional formula (2) is obvious, where R4 is an unsubstituted monovalent hydrocarbon group of 1 carbon atom, and c and d are varied to achieve a desired cure rate.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko II, and further in view of Kretschmann and US 2018/0244160 to Bullen II.
Regarding claim 4, Ko II teaches a solar cell module (Figs. 1, 2, ¶0018-0019) comprising a solar cell element 14/24 and a water-vapor barrier layer 12/13 contacting the solar cell element either directly or through at least one other layer(¶0009, 0064, 0085), the water vapor layer consisting of a cured form of a solar cell element coating composition comprising
An organopolysiloxane represented by the average unit formula (ViMe2SiO1/2)2(Ph2SiO2/2)10(Me2SiO2/2)40 (¶0085, 0090, 0092, 0093)
An organosilicon compound (HMe2SiO1/2)2(Ph2SiO2/2)1.5
A platinum group metal catalyst.
The organopolysiloxane reads on the claimed formula (1), where Vi reads on alkenyl group R1, Me reads on unsubstituted monovalent saturated hydrocarbon group R3, Ph reads on unsubstituted aryl group Ar, and Me reads on unsubstituted monovalent saturated hydrocarbon group R2, where a is 10, b is 40, and a/(a+b) is 0.2.
The organosilicon compound has two silicon-bonded hydrogen atoms per molecule.
The platinum group metal catalyst is platinum(0)-1,3-divinyl-1,1,3,3,-tetramethyldisiloxane. The coating composition is cured by hydrosilylation (¶0049). While Ko II does not specifically teach that the catalyst is activated by light having a wavelength from 200 to 500 nm, Kretschmann teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art increase a working time of the composition by using a light-activated platinum group metal catalyst (¶0123-0134). Kretschmann particularly prefers that the catalyst is n5-cyclopentadienyl)trialiphatic platinum compound (¶0125, 0133). While Kretschmann does not explicitly teach the wavelength of activation by light, it is expected that the catalyst taught by that reference necessarily is active in the claimed wavelength range. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP §2112.01.
The solar cell element can have the compositions recited in ¶0015 of Ko II, but the references do not specifically teach that the element is an organic thin-film solar cell element or a perovskite solar cell element. Bullen II teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the solar cell element as a perovskite solar cell element, as that material is a suitable alternative to other materials positively recited by Ko II (¶0035). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim(s) 2 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko II and Kretschmann as applied to claim 1 above, and further in view of US 2007/0104872 to Tabei.
Regarding claims 2 and 7, modified-Ko II teaches the limitations of claim 1. Ko II teaches that an organohydrogenpolysiloxane is also included in the composition (¶0090). While Ko II does not teach that a component such as claimed (ii) which is the product of an addition reaction of vinyl norbornene with a cyclic organohydrogenpolysiloxane is included in the composition, such a component would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to substitute with an organohydrogenpolysiloxane in such a coating composition (¶0004, 0042-0063, 0099 of Tabei). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Tabei teaches that the specific addition reaction product has the structure
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116
240
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. This reads on structural formula (3) of claim 7, where q and r are 1 so that q+r is 2, Z’ is formula (9) and the range of t of Tabei overlaps the claimed range of t,
Allowable Subject Matter
Claim 6 is allowed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 7 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.
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 Ryan S Cannon whose telephone number is (571)270-7186. The examiner can normally be reached M-F, 8:30am-5:30pm PST.
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Ryan S. Cannon
Primary Examiner
Art Unit 1726
/RYAN S CANNON/ Primary Examiner, Art Unit 1726
Prosecution Insights