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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0014823 to Ko (included in Applicant’s 2/6/2025 IDS), and further in view of US 2021/0186825 to Klee.
Regarding claim 1, Ko teaches a solar cell element coating composition (¶0010) comprising
An organopolysiloxane represented by the average unit formula (ViMe2SiO1/2)2(Ph2SiO2/2)10(Me2SiO2/2)10
An organosilicon compound (HMe2SiO1/2)2(Ph2SiO2/2)1.5
A platinum group metal catalyst (¶0067).
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 10, and a/(a+b) is 0.5.
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 (¶0040). While Ko 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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko, and further in view of US 2013/0059109 to Kretschmann (included in Applicant’s 2/6/2025 IDS).
Regarding claims 1-3, Ko teaches a solar cell element coating composition (¶0010) comprising
An organopolysiloxane represented by the average unit formula (ViMe2SiO1/2)2(Ph2SiO2/2)10(Me2SiO2/2)10
An organosilicon compound (HMe2SiO1/2)2(Ph2SiO2/2)1.5
A platinum group metal catalyst (¶0067).
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 10, and a/(a+b) is 0.5.
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 (¶0040). While Ko 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 teaches the limitations of claim 1. While Ko 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.).
Regarding claim 4, Ko teaches a solar cell module (Figs. 1, 2, ¶0051-0054) comprising a solar cell element 13/23 and a water-vapor barrier layer 12a or 12b/22 (¶0014-0016, 0057) 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)10
An organosilicon compound (HMe2SiO1/2)2(Ph2SiO2/2)1.5
A platinum group metal catalyst (¶0067).
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 10, and a/(a+b) is 0.5.
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 (¶0040). While Ko 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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko and Kretschmann as applied to claim 4 above, and further in view of US 2018/0248061 to Bullen.
Regarding claim 4, modified-Ko teaches the limitations of claim 4. Ko does not specifically teach that the solar cell element is a perovskite solar cell element. Bullen 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 use a perovskite solar cell element since they are easily manufactured (¶0003, 0032, 0033).
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2024/0002605 to Tanaka.
Claim 1 recites that the invention is a solar cell element coating composition in the preamble. However, the body of the claim fully sets forth all of the claim limitations. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). MPEP §2111.02.II.
Tanaka teaches a coating composition comprising
An organopolysiloxane represented by the average unit formula R1aR2bSiO(4-a-b)/2 (¶0016-0019)
An organosilicon compound having at least two silicon-bonded hydrogen atoms per molecule (¶0024)
A platinum group metal catalyst that is activated by light having a wavelength of 365 nm, specifically methylcyclopentadienyl)trimethylplatinum (IV) complex (¶0031-0033, 0072, 0080-0083).
In the average unit formula, R1 is an alkenyl group and R2 is an unsubstituted or substituted monovalent saturated hydrocarbon group, preferably a methyl group or a phenyl group, although R1 and R2 can independently stand for more than one moiety (¶0019). The parameter a+b is between 1 and 3 inclusive, and a/(a+b) is between 0.001 and 0.33 inclusive. Therefore Tanaka teaches that some hydrocarbon units will be bonded to a silicon atom along with one oxygen atom (O--1/2) and some hydrocarbon units will be bound to a silicon atom with two oxygen atoms (O2/2-), which a person having ordinary skill in the art would appreciate is true in the claimed formula (1). The claimed formula (1) allows for a to range from 1 to 100, and b can be zero. Therefore, although the average unit formula taught by Tanaka is not explicitly identical to the claimed formula (1), the scope of the formulae significantly overlap. Therefore 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 component (A) to have an average unit formula (1) because a significant number of iterations of Tanaka’s polysiloxane will have a formula similar to the claimed polysiloxane.
Per claim 2, Tanaka teaches the limitations of claim 1. Tanaka teaches that component (B) has the formula HcR3dSiO(4-c-d)/2, R3 being a substituted or unsubstituted monovalent hydrocarbon group of 1 to 12 carbon atoms and not having an aliphatic unsaturated bond (¶0024-0026). This formula is essentially identical to claimed formula (2). Tanaka’s values of c and d, while not limited in exactly the same way as claimed, would result in a significant number of iterations of organohydrenopolysiloxane that will have the formula (2), and therefore renders claimed condition (i) obvious.
Per claim 3, Tanaka teaches the limitations of claim 1. Tanaka’s embodiment of component (C) is a (n5-cyclopentadienyl)trialiphatic platinum compound (Ibid).
Regarding claim 6, Tanaka teaches a method for producing a semiconductor module comprising the steps of contacting a semiconductor coating composition as described in the rejection of claim 1 under Tanaka above with a semiconductor element either directly or through at least one other layer (¶0050, 0064, 0065), irradiating the composition with light having a wavelength of 365 nm (¶0032, 0050-0053, 0056-0059), and subsequently curing the composition with applied heat (¶0054, 0060-0062).
While Tanaka does not explicitly teach that the method is performed under atmospheric pressure, the reference does not say that the method is performed in vacuum. Therefore 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 perform the irradiation under atmospheric pressure because there is an expectation of success. The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
The semiconductor element is not specifically recited as a solar cell element. However, 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 use a solar cell element in the method because it is recited as an applicable semiconductor device by the reference (¶0086).
Conclusion
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