`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CONINJERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 223 13-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`F[L]NG DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/813,119
`
`07/30/2015
`
`HIROKI YABE
`
`PANDP0146US
`
`2074
`
`“m” —MARKD. SARALINO(1»AN) m
`”9"
`“92‘
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`TRAN UYENM
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
`
`ART UNIT
`
`CLEVELAND, OH 441 15
`
`1757
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`1 1/20/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket@rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017709 A0110” Summary
`
`Application No.
`14/813,119
`
`Examiner
`UYEN M TRAN
`
`Applicant(s)
`YABE et al.
`
`Art Unit
`1757
`
`AIA Status
`Yes
`
`- The MAILING DA TE ofthis communication appears on the cover sheet with the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) 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).
`
`Status
`
`1). Responsive to communication(s) filed on 10/19/2017
`.
`D A declaration(s)laffidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a). This action is FINAL.
`2b) III This action is non-final.
`
`3)|:| An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)I:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparfe Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims"
`
`5). Claim(s) 1-11 is/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`6)I:| Claim(s)
`
`is/are allowed.
`
`7). Claim(s) 1-11 is/are rejected.
`
`8)[:| Claim(s)
`
`is/are objected to.
`
`are subject to restriction and/or election requirement.
`9)I:| Claim(s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`
`http:llwww.usptogovlpatents/init events/pphlindexjsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)l:| The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)|:l objected to by the Examiner.
`11)l:| The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or ( ).
`Certified copies:
`
`a)|:l All
`
`b)|:l Some**
`
`c)|:l None of the:
`
`1.[:|
`
`Certified copies of the priority documents have been received.
`
`2.|:|
`
`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
`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.
`
`Attachment(s)
`
`1) [3 Notice of References Cited (PTO-892)
`
`2) D Information Disclosure Statement(s) (PTOISBIOSa andfor PTOISBIOBb)
`Paper No(s)lMail Date
`US. Patent and Trademark Office
`
`3) |:| Interview Summary (PTO—413)
`Paper No(s)fMail Date
`4) D Other'
`
`PTOL-325 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper NoJMail Date 20171115
`
`

`

`Application/Control Number: 14/813 ,1 19
`Art Unit: 1 75 7
`
`Page2
`
`DETAILED CORRESPONDENCE
`
`Notice ofPre-AIA or AM Status
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Status of Claims
`
`Claim 1-11 are currently pending.
`
`Response to Amendment
`
`The amendment filed on 10/ 19/2017 does not place the application in condition for
`
`allowance. This action is made final.
`
`Status of Rejections Pending
`
`since The Office Action of 06/19/2017
`
`All the rejection are maintained.
`
`Claim Rejections - 35 USC § 103
`
`1.
`
`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 of this
`
`title, 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.
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1 75 7
`
`Page3
`
`2.
`
`The factual inquiries set forth in Graham 12. John Deere Ca, 383 US. 1, 148 USPQ 459
`
`(1966), that are applied 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.
`
`3.
`
`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 CPR 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.
`
`Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Yamamoto (PG Pub 20100200056), and in View of Joshi et al (“optimum oxide thickness for
`
`dye-sensitized solar cells-effect of porosity and porous size. A numerical approach”,
`
`06/2012) and Suzuka et al (PG Pub 20130199614).
`
`Consider claim 1, 7-8 and 11, Yamamoto teaches dye-sensitized solar cell comprising:
`
`0 Photoanode 11 including the porous semiconductor layer 50 and dye molecules
`
`located on the porous semiconductor layer [fig 1 2 para 43]. Since the porous
`
`semiconductor layer 50 is scattering when light is entered [para 43 87], the porous
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1 75 7
`
`Page4
`
`semiconductor layer is considered to include a light-scattering layer. The light
`
`scattering layer include semiconductor particles that form has macropores [para
`
`41-43]
`
`0 Counter electrode 1 [fig 1 para 5]
`
`o Electrolytic medium 20 located between the photoanode 11 and the counter
`
`electrode 1 [fig 1 para 5]
`
`Yamamoto teaches the light scattering having pore diameter [para 43]. However,
`
`Yamamoto does not teach pore diameter and mean pore diameter as claimed.
`
`Joshi et a1 teaches dye-sensitized solar cell having porous semiconductor layer (abstract)
`
`where the light absorption efficiency depend on size of porosity and pore in Ti02 (abstract).
`
`Also, the pore size and quantum efficiency would be established for suitable high current density
`
`(page 575 col 1 para 3). Thus, one of ordinary skill in the art would recognize that the pore size
`
`is a result effective variable that can be adjusted to achieve high quantum efficiency.
`
`The court has held that absent evidence of criticality or unexpected results, optimization
`
`of a result effective variable will not support the patentability of subject matter encompassed by
`
`the prior art."[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 ofan 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, 11.).
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1757
`
`PageS
`
`Therefore, absent the showing of criticality or unexpected results, it would be obvious to
`
`one of ordinary skill in the art the invention was filed to optimize the pore diameter and the
`
`mean pore diameter of the porous semiconductor layer of Yamamoto to arrive the claim range
`
`for high quantum efficiency.
`
`Modified Yamamoto teaches the electrolyte as set forth above, but modified
`
`Yamamoto does not teach redox agent having the properties as claimed.
`
`Suzuka et al teaches the dye-sensitized solar cell having the electrolyte which is
`
`comprised of 4-hydroxy-2,2,6,6-tetramethylpiperidine-l-oxyl [para 111].
`
`It would have been obvious to a person of an ordinary skill in the art at the time the
`
`invention was filed to modify the material of the electrolyte of modified Yamamoto to be made
`
`of 4-hydroxy—2,2,6,6-tetramethylpiperidine-l-oxyl as taught by Suzuka et al since Suzuka et al
`
`teaches this material is used for electrolyte, and selection of a known material based on its
`
`suitability for its intended use supports prima facie obviousness determination (MPEPZ 144.07).
`
`The instant application shows that the redox agent which is 4-hydroxy—2,2,6,6-
`
`tetramethylpiperidine-1-oxyl has the properties with a maximum molar absorption coefficient 8
`
`of 3000 L.cm'1.mol'1 or less within wavelength of 380nm to 800 nm [para 76 77]. Thus, it is
`
`considered that the redox agent of modified Yamamoto has a maximum molar absorption
`
`coefficient 8 of 3000 L.cm'1.mol'1 or less within wavelength of 380nm to 800 nm.
`
`Consider claim 2, since the porous semiconductor layer contains voids and the
`
`electrolyte is liquid and directly contact with the porous semiconductor layer [fig 2, Yamamoto],
`
`it is considered that a part of electrolytic medium is present in the macropores.
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1 75 7
`
`Page6
`
`Consider claim 3, modified Yamamoto teaches at least two of the macropores are
`
`connected to each other [fig 2, Yamamoto].
`
`Consider claim 4, since modified Yamamoto teaches the dye is deep infiltrates in the
`
`porous semiconductor layer [para 32, Yamamoto], it is considered that the at least one of the
`
`macropores having opening in a surfaces of light scattering.
`
`Consider claim 5, modified Yamamoto teaches the light scattering layer having the
`
`thickness of 5 to 20 micron [para 50, Yamamoto].
`
`Consider claim 6, modified Yamamoto teaches the layer 15 being made of TiOZ which
`
`having no reflectivity properties and having the thickness of 5 to 500 nm [para 76, Yamamoto].
`
`Claims 6, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Yamamoto (PG Pub 20100200056), and Joshi et al (“optimum oxide thickness for dye-
`
`sensitized solar cells-effect of porosity and porous size. A numerical approach”, 06/2012)
`
`and Suzuka et al (PG Pub 20130199614) as applied to claim 1 above, and further in view of
`
`Duerr et al (PG Pub 20070209696).
`
`Consider claim 6, modified Yamamoto teaches the light-scattering layer as set forth
`
`above, but modified Yamamoto does not teach low light scattering layer having the structure as
`
`claimed.
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1 75 7
`
`Page7
`
`Duerr et al teaches dye-sensitized solar cell comprising plurality of porous
`
`semiconductor layers where the subsequent porous semiconductor layers are increasing opaque
`
`and there are adhesive layers alternative deposited between porous semiconductor layers [para 9-
`
`16]. Also, the adhesive layer is transparent [para 14] with the thickness of 10nm to 1 micron
`
`[para 50]; thus, it is considered to be the adhesive layer is the low scattering layer (transparent
`
`material would allow light coming through).
`
`It would have been obvious to a person of ordinary skill in the art at the time of
`
`invention was filed to add one porous semiconductor layer and adhesive layer of Duerr et al on
`
`the light incident side of the light scattering of modified Yamamoto for increasing light
`
`scattering; thus, improve the cell efficiency.
`
`Consider claim 9—10, modified Yamamoto teaches the adhesive layer (low light
`
`scattering layer) having mean pore diameter of lnm to 100nm [para 59, Duerr et al] which
`
`overlapped the claimed range.
`
`Modified Yamamoto teaches the adhesive layer having mean pore diameter of 1mm to
`
`100nm, but modified Yamamoto does not explicitly teach the adhesive layer having mean pore
`
`diameter of 10 nm or more and 50nm or less.
`
`It would have been obvious to one of ordinary skill in the art at the time of invention
`
`was filed to have selected the overlapping portion of the ranges disclosed by the reference
`
`because selection of overlapping portion of ranges has been held to be a prima facie case of
`
`obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919
`
`F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43
`
`USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
`
`

`

`Application/Control Number: 14/813 ,1 19
`Art Unit: 1757
`
`Page8
`
`Response to Arguments
`
`Applicant's arguments filed 10/19/2017 have been fillly considered but they are not
`
`persuasive. The applicant argues in substance:
`
`0 Yamamoto and Joshi does not teaches pore diameter as claimed since Yun teaches
`
`the range of the pore size is 3 to 6.8 nm which similar to the range disclosed in
`
`Yamamoto.
`
`The examiner respectfully disagrees. Joshi is used Yun as one of the numerical model
`
`showing how the pore diameter would affect the DSSC and Yun is not applied in the
`
`rejection. Also, Joshi is applied to teach the pore size and quantum efficiency would be
`
`established for suitable high current density or increasing the porosity would increasing
`
`the current density Jsc (page 575 col 1 para 3]
`
`0 One skilled in the art would not have looked to modify the teachings of
`
`Yamamoto to the claimed arithmetric mean pore diameter.
`
`The examiner respectfully disagrees. Comparative example 1 of the instant application
`
`show the electrolyte with iodine having the size of macropores smaller than that of other
`
`examples which has different electrolyte. However, the instant application does not show
`
`the electrolyte with iodine having the size of macropores similar to other examples. Thus,
`
`it is uncertain that photoelectric conversion efficiency significantly deteriorates due to
`
`light adsorption by iodine or pore size.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1 75 7
`
`Page9
`
`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 extension fee 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 UYEN M TRAN whose telephone number is (571)270-7602.
`
`The examiner can normally be reached on Monday-Friday 9am-6pm.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessfill, the examiner’s
`
`supervisor, Jeffrey Barton can be reached on 5712721307. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`

`

`Application]Control Number: 14/813 ,1 19
`Art Unit: 1757
`
`Page 1 0
`
`system, see http://pair-directuspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA 0R CANADA) or 571-272-1000.
`
`fUYEN M TRAN/
`
`Primary Examiner, Art Unit 1757
`
`