`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`14/813,119
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`07/30/2015
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`HIROKI YABE
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`PANDP0146US
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`2074
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`Wig/2017 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`TRAN’UYENM
`1621 EUCLID AVENUE
`19TH FLOOR
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`PAPER NUMBER
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`CLEVELAND, OH 44115
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`1757
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/19/2017
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ipdocket @rennerott0.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 14/813,119 YABE ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`UYEN TRAN $2213 1757
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
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`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 03/06/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-11 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-11 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
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`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20170608
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`

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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Status of claims
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`Claims 1—11 are pending.
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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR l.l7(e), was filed in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR l.l7(e)
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`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on 03/06/2017 has been entered.
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`Claim Rejections - 35 USC § 103
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`1.
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`The following is a quotation of 35 USC. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the
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`claimed invention is not identically disclosed as set forth in section 102 of this
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`title, if the differences between the claimed invention and the prior art are such
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`that the claimed invention as a whole would have been obvious before the
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`effective filing date of the claimed invention to a person having ordinary skill in
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 3
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`the art to which the claimed invention pertains. Patentability shall not be negated
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`by the manner in which the invention was made.
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`2.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`3.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Yamamoto (PG Pub 20100200056), and in view of Joshi et al (“optimum oxide thickness for
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`dye-sensitized solar cells-effect of porosity and porous size. A numerical approach”,
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`06/2012) and Suzuka et al (PG Pub 20130199614).
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 4
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`Consider claim 1, 7-8 and 11, Yamamoto teaches dye—sensitized solar cell comprising:
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`0 Photoanode 11 including the porous semiconductor layer 50 and dye molecules
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`located on the porous semiconductor layer [fig 1 2 para 43]. Since the porous
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`semiconductor layer 50 is scattering when light is entered [para 43 87], the porous
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`semiconductor layer is considered to include a light— scattering layer. The light
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`scattering layer include semiconductor particles that form has macropores [para
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`41-43]
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`0 Counter electrode 1 [fig 1 para 5]
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`o Electrolytic medium 20 located between the photoanode 11 and the counter
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`electrode 1 [fig 1 para 5]
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`Yamamoto teaches the light scattering having pore diameter [para 43]. However,
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`Yamamoto does not teach pore diameter and mean pore diameter as claimed.
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`Joshi et al teaches dye—sensitized solar cell having porous semiconductor layer (abstract)
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`where the light absorption efficiency depend on size of porosity and pore in TiO2 (abstract).
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`Also, the pore size and quantum efficiency would be established for suitable high current density
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`(page 575 col 1 para 3). Thus, one of ordinary skill in the art would recognize that the pore size
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`is a result effective variable that can be adjusted to achieve high quantum efficiency.
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`The court has held that absent evidence of criticality or unexpected results, optimization
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`of a result effective variable will not support the patentability of subject matter encompassed by
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`the prior art."[W]here the general conditions of a claim are disclosed in the prior art, it is not
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`inventive to discover the optimum or workable ranges by routine experimentation." See In re
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`Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 5
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`of a known result effective variable, without producing any new or unexpected results, is within
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`the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980)
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`(see MPEP§ 2144.05, 11.).
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`Therefore, absent the showing of criticality or unexpected results, it would be obvious to
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`one of ordinary skill in the art the invention was filed to optimize the pore diameter and the
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`mean pore diameter of the porous semiconductor layer of Yamamoto to arrive the claim range
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`for high quantum efficiency.
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`Modified Yamamoto teaches the electrolyte as set forth above, but modified
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`Yamamoto does not teach redox agent having the properties as claimed.
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`Suzuka et al teaches the dye—sensitized solar cell having the electrolyte which is
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`comprised of 4—hydroxy—2,2,6,6—tetramethylpiperidine—l—oxyl [para 111].
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`It would have been Obvious to a person of an ordinary skill in the art at the time the
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`invention was filed to modify the material of the electrolyte of modified Yamamoto to be made
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`of 4—hydroxy—2,2,6,6—tetramethylpiperidine—1—oxyl as taught by Suzuka et al since Suzuka et al
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`teaches this material is used for electrolyte, and selection of a known material based on its
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`suitability for its intended use supports prima facie obviousness determination (MPEP2144.07).
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`The instant application shows that the redox agent which is 4—hydroxy—2,2,6,6—
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`tetramethylpiperidine—1—oxyl has the properties with a maximum molar absorption coefficient 8
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`of 3000 L.cm'1.mol'1 or less within wavelength of 380nm to 800 nm [para 76 77]. Thus, it is
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 6
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`considered that the redox agent of modified Yamamoto has a maximum molar absorption
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`coefficient 8 of 3000 L.cm'1.mol'1 or less Within wavelength of 380nm to 800 nm.
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`Consider claim 2, since the porous semiconductor layer contains voids and the
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`electrolyte is liquid and directly contact with the porous semiconductor layer [fig 2, Yamamoto],
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`it is considered that a part of electrolytic medium is present in the macropores.
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`Consider claim 3, modified Yamamoto teaches at least two of the macropores are
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`connected to each other [fig 2, Yamamoto].
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`Consider claim 4, since modified Yamamoto teaches the dye is deep infiltrates in the
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`porous semiconductor layer [para 32, Yamamoto], it is considered that the at least one of the
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`macropores having opening in a surfaces of light scattering.
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`Consider claim 5, modified Yamamoto teaches the light scattering layer having the
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`thickness of 5 to 20 micron [para 50, Yamamoto].
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`Consider claim 6, modified Yamamoto teaches the layer 15 being made of Ti02 Which
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`having no reflectivity properties and having the thickness of 5 to 500 nm [para 76, Yamamoto].
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`Claims 6, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Yamamoto (PG Pub 20100200056), and Joshi et al (“optimum oxide thickness for dye-
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 7
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`sensitized solar cells-effect of porosity and porous size. A numerical approach”, 06/2012)
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`and Suzuka et 31 (PG Pub 20130199614) as applied to claim 1 above, and further in view of
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`Duerr et 31 (PG Pub 20070209696).
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`Consider claim 6, modified Yamamoto teaches the light— scattering layer as set forth
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`above, but modified Yamamoto does not teach low light scattering layer having the structure as
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`claimed.
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`Duerr et al teaches dye—sensitized solar cell comprising plurality of porous
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`semiconductor layers where the subsequent porous semiconductor layers are increasing opaque
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`and there are adhesive layers alternative deposited between porous semiconductor layers [para 9—
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`16]. Also, the adhesive layer is transparent [para 14] with the thickness of 10nm to 1 micron
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`[para 50]; thus, it is considered to be the adhesive layer is the low scattering layer (transparent
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`material would allow light coming through).
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`It would have been obvious to a person of ordinary skill in the art at the time of
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`invention was filed to add one porous semiconductor layer and adhesive layer of Duerr et al on
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`the light incident side of the light scattering of modified Yamamoto for increasing light
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`scattering; thus, improve the cell efficiency.
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`Consider claim 9-10, modified Yamamoto teaches the adhesive layer (low light
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`scattering layer) having mean pore diameter of lnm to 100nm [para 59, Duerr et al] which
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`overlapped the claimed range.
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 8
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`Modified Yamamoto teaches the adhesive layer having mean pore diameter of 1nm to
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`100nm, but modified Yamamoto does not explicitly teach the adhesive layer having mean pore
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`diameter of 10 nm or more and 50nm or less.
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`It would have been Obvious to one of ordinary skill in the art at the time of invention
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`was filed to have selected the overlapping portion of the ranges disclosed by the reference
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`because selection of overlapping portion of ranges has been held to be a prima facie case of
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`obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919
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`F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43
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`USPQ2d 1362, 1365—66 (Fed. Cir. 1997).
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`Response to Arguments
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`Applicant’s arguments filed on 03/06/2017 are deemed moot in view of the following
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`new grounds of rejection, necessitated by Applicant’s amendment to the claims which
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`significantly affected the scope thereof (i.e., by incorporating new limitations into the
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`independent claims, which require further search and consideration).
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`Conclusion
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`Application/Control Number: 14/813,119
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`Art Unit: 1757
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`Page 9
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`Examiner, Art Unit 1757
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`