UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/163,675
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`05/25/2016
`
`NAOKI HAYASHI
`
`PANDP0165US
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`5700
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
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`SLAWSKL MAGALIP
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`ART UNIT
`1721
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/19/2018
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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
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
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`Application No.
`15/163,675
`Examiner
`Magali P Slawski
`
`Applicant(s)
`HAYASHI et al.
`Art Unit
`AIA Status
`1721
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 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.
`|f 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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`Status
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`1). Responsive to communication(s) filed on 14 August 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`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.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`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).
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`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 (f).
`Certified copies:
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`a)D All
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`b)I:J Some**
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`c)C] None of the:
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`1.[:]
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`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`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)).
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`** 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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`1)
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`Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20180914
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 2
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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
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`under the first inventor to file provisions of the AIA.
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`Continued Examination Under 37 CFR 1. 1 14
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August
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`14,2018 has been entered.
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`On August 14, 2018, Applicant amended claim 1.
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`Summary
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`From the office action mailed June 1, 2018, the 103 rejections have been
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`overcome by amendment.
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`New in this office action are 103 rejections necessitated by amendment.
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`The text of those sections of Title 35, U.S. Code not included in this action can
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`be found in a prior Office action.
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`Claim Rejections - 35 USC § 103
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`Claims 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noh
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`et al. ("Nanostructured TiOz/CHsNHstls heterojunction solar cells employing spiro-
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 3
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`OMeTAD/Co-complex as hole-transporting material" J. Mater. Chem. A, 2013, 1,
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`11842—11847), hereinafter Noh, in view of Kawasaki et al. (US 20150380172 A1),
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`hereinafter Kawasaki, Vail et al. (US 20130291941 A1), hereinafter Vail, Cappel et al.
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`("Oxygen-Induced Doping of Spiro-MeOTAD in Solid-State Dye-Sensitized Solar Cells
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`and Its Impact on Device Performance" Nano Lett. 2012, 12, 4925—4931), hereinafter
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`Cappel. Copies of Noh and Cappel were mailed February 22, 2018.
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`Regarding claim 1, Noh teaches a perovskite solar cell (page 11843 left,
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`paragraph 2 top).
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`Noh teaches the structure FTO/bl-TiOz/mp-TiOz/CHsNHstls/spiro-OMeTAD/Au
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`(page 11843 right, paragraph 1 bottom and 11884 figure 1a).
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`Noh's FTO layer is the claimed first electrode.
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`Noh's bl-Ti02 layer, a dense blocking layer of Ti02 (page 11843 left, Solar cell
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`fabrication, top). A plain reading of Noh is that "blocking layer" means "hole-blocking
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`layer;" thus Noh's bl-Ti02 layer is the claimed electron transport layer (ETL) located on
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`the FTC layer, or first electrode. Ti02 is a wide band-gap semiconductor.
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`Noh's CHsNHstls layer is the claimed light-absorbing layer; CHsNHstls is the
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`claimed perovskite. CH3NH3+, Pb2t, and l' respectively are the claimed monovalent
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`cation, divalent cation, and halogen anion. The CHsNHstls, or light absorbing layer, is
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`located on the bl-Ti02 layer, or ETL.
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`Noh's spiro-OMeTAD layer is the claimed hole transport layer (HTL) located on
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`the CHsNHstls layer, or light-absorbing layer.
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`Noh's Au layer is the claimed second electrode located on the spiro-OMeTAD, or
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`HTL.
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 4
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`Claim 1 last paragraph requires that 0.1 mol % to 1.1 mol % of some material in
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`the HTL be oxidized. Noh does not teach this feature. However, why this feature would
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`have been obvious to one of ordinary skill in the art is explained in steps:
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`Noh teaches that the concentration of oxidized spiro-OMeTAD, i.e., hole doping,
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`plays a very important role in determining the charge transport resistance of spiro-
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`OMeTAD and the final photovoltaic (PV) performance of solar cells (page 11845 left,
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`paragraph 2). Noh's teaching shows that the concentration of oxidized spiro-OMeTAD
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`is a result-effective parameter.
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`Noh relates to a solid-state dye-sensitized solar cell (ssDSSC) (page 11842
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`right). Like Noh, Kawasaki relates to a DSSC (paragraph 0205 top). Kawasaki teaches
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`that hole doping the polymer used in the charge transport layer in order to increase its
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`conductivity (paragraph 0193 top). On the other hand, Vail, which also relates to a
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`ssDSSC (title), teaches that p-doping spiro-OMeTAD in order to increase conductivity
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`can also increase charge recombination (paragraph 0011 bottom).
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`In combination,
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`Kawasaki and Vail provide reasons for optimizing the oxidation or hole-doping level of
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`spiro-OMeTAD.
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`Noh credits Cappel with teaching the importance of spiro-OMeTAD hole doping
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`(page 11847 right, item 17). Like Noh, Cappel relates to a ssDSSC (title) and teaches
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`spiro-OMeTAD placed Ti02 (page 4926 figure 2a). Cappel teaches a doping level of
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`0.7 i 0.2 % oxidized spiro-OMeTAD (page 4927 Table 1 last line "after illumination").
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`The range expressed by 0.7 i 0.2 % is 0.5 % to 0.9 %, which overlaps with the claimed
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`range. Cappel's teaching show that a range of concentrations overlapping the claimed
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`range was known when the instant application was filed.
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`In the case where the claimed
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 5
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`ranges overlaps a range disclosed by the prior art a prima facie case of obviousness
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`exists (MPEP 2144.05 | paragraph 1).
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`Therefore, in order to control the charge transport resistance of Noh's spiro-
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`OMeTAD HTL and determine the ultimate PV performance of Noh's solar cells while
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`balancing the effects of increased conductivity and increased recombination, it would
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`have been obvious to one of ordinary skill in the art to optimize the concentration of
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`oxidized spiro-OMeTAD in the HTL layer and, in the course of routine experimentation,
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`select a value within the claimed range.
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`Regarding claim 2, Noh's perovskite comprises CH3NH3+ (title), which is a
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`methylammonium cation.
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`Regarding claim 3, Noh's perovskite comprises Pb2+ (title).
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`Regarding claim 4 and claim 5, Noh's HTL comprises spiro-OMeTAD (page
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`11844 figure 1a). As evidenced by Cappel, spiro-OMeTAD comprises the claimed
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`aromatic amine derivative (page 4925 left, figure 1a, reproduced below). Two of the
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`claimed aryl groups are connected to form a ring structure.
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 6
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`Regarding claim 6, Noh teaches a mesoporous Ti02 (mp-Ti02) film on the bl-
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`Ti02 film, or ETL, between it and the perovskite light absorbing layer (page 11843 left,
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`bottom — right, top). The mp-Ti02 is the claimed porous layer.
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`Regarding claim 7, Noh teaches a Co(lll)-complex in the spiro-OMeTAD HTL
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`(page 11843 right, paragraph 1 middle).
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`Response to Arguments
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`Applicant's arguments filed August 14, 2018 have been fully considered but they
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`are not persuasive.
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`Addressing the 103 rejection of claim 1, Applicant argues that Cappel fails to
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`disclose the claimed ratio. The examiner respectfully disagrees. Cappel teaches a
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`doping level of 0.7 i 0.2 % oxidized spiro-OMeTAD (page 4927 Table 1 last line "after
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`illumination"). The range expressed by 0.7 i 0.2 % is 0.5 % to 0.9 %, which overlaps
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`with the claimed range. Cappel's teaching show that a range of concentrations
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`overlapping the claimed range was known when the instant application was filed.
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`In the
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`case where the claimed ranges overlaps a range disclosed by the prior art a prima facie
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`case of obviousness exists (MPEP 2144.05 | paragraph 1).
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`Still addressing the 103 rejection of claim 1, Applicant appears to argue that one
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`looking to optimize the doping in know would not have selected a doping ratio different
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`from that which Cappel discloses. The examiner respectfully disagrees. Kawasaki
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`provides a rationale for increasing the doping ratio:
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`to increase conductivity. Vail, on
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`the other hand, provides a rationale for decreasing the doping ratio:
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`to prevent charge
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 7
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`recombination. Therefore, depending on the priorities established by the needs of the
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`application, it would have been obvious to one of ordinary skill in the art to choose a
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`doping ratio greater or smaller than what Cappel discloses.
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`While Applicant to date has not argued that the claimed range produces new or
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`unexpected results, for the sake of compact prosecution, the examiner notes that since
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`the range of 0.1 to 0.5 currently recited by claim 1
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`is a subset of an originally claimed
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`range of 0.1 to 1.1, the currently claimed range cannot be critical to the invention.
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`Furthermore, when the data provided by Applicant's Table 1, filed in the specification
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`and reproduced in the Remarks mailed August 14, 2018, are plotted in graphs, the data
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`produce almost linear trends, which suggest that the results are predictable:
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`Initial conversion efficiency (%) vs doping ratio
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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 8
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`Efficency after heating (%) vs doping ratio
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`
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`Since progressively narrowing the claimed range appears unlikely to lead to
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`allowance, the examiner respectfully and cordially encourages Applicant to request an
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`interview before filing a response. We could use the interview to clarify the inventive
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`concept and develop ideas for how to distinguish the claimed invention from the prior art
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`of record.
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 9
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Magali P Slawski whose telephone number is (571)270-
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`3960. The examiner can normally be reached on Monday - Friday 9 am. - 5 pm. EST.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice before filing a response.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jennifer K. Michener can be reached on (571) 272-1424. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
`
`/Maga|i P Slawski/
`Primary Examiner, Art Unit 1721
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`Page 10
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