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 Interpretation
The limitation “paddle” in claim 10 is interpreted in a manner consistent with the description in paragraph [0090] of the as-field specification.
Claim Objections
Claims 1-10 are objected to because of the following informalities: the word “Claim” appears to be marked for deletion in the listing of claims. Appropriate correction is required.
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 1-10 are 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. Specifically, lines 4 and 5 of claim 1 recite “among conductive layers electrically connected to the photoelectric conversion layer,” however, it is unclear whether the conductive layers recited are components of the claimed photoelectric conversion element. Claims 2-10 are rejected due to their respective dependence on claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okabe et al. (JP 2015091960 A – see attached machine translation).
Regarding claim 1, Okabe discloses a photoelectric conversion element ([0001]) comprising: a substrate ([0341] backsheet 10); at least one photoelectric conversion layer provided on the substrate ([0296],[0297] 6 in Figures 2 and 3; it is noted that the limitation “on” does not require direct physical contact or the absence of intermediate components); a distal-side conductive layer, among conductive layers electrically connected to the photoelectric conversion layer, located farthest from the substrate ([0047],[0261]; 101 in Fig. 1); a sealing layer provided on the distal-side conductive layer ([0317],[0319], [0365] 3 and 9 in Fig. 2); a barrier layer covering an upper surface and a side surface of the sealing layer ([0335]; 4 and 8 in Fig. 2; it is noted that the limitation “covering” does not require direct physical contact or the absence of intermediate components. Additionally, the limitation “upper” is dependent on the spatial orientation of the device), wherein the sealing layer contains a paraxylylene-based polymer ([0317],[0319],[0365]), and the barrier layer contains an inorganic metal oxide ([0313],[0327],[0335]).
It is noted that with regard to the limitation “film formation,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 2, Okabe discloses all the claim limitations as set forth above. Okabe further discloses the barrier layer contains an oxide of aluminum ([0335]).
Regarding claim 3, Okabe discloses all the claim limitations as set forth above. Okabe further discloses the distal-side conductive layer and the barrier layer have light transparency ([0261]; 4 in Fig. 2).
Regarding claim 4, Okabe discloses all the claim limitations as set forth above.
With regard to the limitation “wherein a refractive index of the barrier layer at a wavelength of 589.3 nm is smaller than a refractive index of the sealing layer at a wavelength of 589.3 nm,” as set forth above, Okabe discloses the sealing layer is a paraxylylene-based polymer and the barrier layer contains an oxide of aluminum, and when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 5 and 6, Okabe discloses all the claim limitations as set forth above. Okabe further discloses the barrier layer contains silicon dioxide ([0313],[0327]).
Regarding claim 7, Okabe discloses all the claim limitations as set forth above.
With regard to the limitation “wherein a refractive index of the distal-side conductive layer at a wavelength of 589.3 nm is greater than a refractive index of the sealing layer at a wavelength of 589.3 nm,” Okabe discloses materials which form the distal-side conductive layer ([0262]) which are similar to those described in the as-filed specification in paragraphs [0017] and [0018]), and Okabe discloses the sealing layer is a paraxylylene-based polymer, and when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 8, Okabe discloses all the claim limitations as set forth above. Okabe further discloses an inorganic oxide layer between the barrier layer and the distal-side conductive layer ([0273] discloses the material of layer 106 is quartz; 106 is between layers 4 and 101 as depicted in Figures 1 and 2). With regard to the limitation “wherein a refractive index of the inorganic oxide layer at a wavelength of 589.3 nm is greater than a refractive index of the sealing layer at a wavelength of 589.3 nm and is smaller than a refractive index of the distal-side conductive layer at a wavelength of 589.3 nm,” based on the similarity of the materials disclosed in Okabe for the inorganic oxide layer and the distal-side conductive layer to those described in the as-filed specification, and Okabe’s disclosure of a paraxylylene-based polymer for the sealing layer, the claimed properties are presumed to be inherent. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 9, Okabe discloses all the claim limitations as set forth above. Okabe further discloses a photoelectric conversion module comprising the photoelectric conversion element ([0098], Figures 1 and 2; it is noted that the disclosed photoelectric conversion element is a photoelectric conversion module).
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (JP 2015091960 A – see attached machine translation) as applied to claim 9 above, in view of Wyatt (US 3,152,774 A).
Regarding claim 10, Okabe discloses all the claim limitations as set forth above.
Okabe does not explicitly disclose a paddle comprising the photoelectric conversion module.
Wyatt discloses a paddle comprising a photoelectric conversion module (C2/L45).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the photoelectric conversion module of Okabe in a paddle, as disclosed by Wyatt, because as evidenced by Wyatt, the use of a photoelectric conversion module in a paddle amounts to the use of a known component in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when using the photoelectric conversion module of Okabe in a paddle based on the teaching of Wyatt.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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