UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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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`15/493,220
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`04/21/2017
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`MICHIO SUZUKA
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`PANDP0214US
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`7167
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`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
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`TRINH~ THANH TRUC
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`ART UNIT
`1726
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/07/2018
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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.
`15/493,220
`Examiner
`THAN H-TRUC TRINH
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`Applicant(s)
`SUZUKA et al.
`Art Unit
`1726
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`AIA Status
`Yes
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`- 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 7/18/2018.
`[: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*
`5)
`Claim(s)
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`1—2,4—7,15,17 and 19 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) 1—2,4—7,15,17 and 19 is/are rejected.
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`[:1 Claim(s)
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`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 aflowabte. 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) C] 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 20180903
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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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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`1.
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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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`Continued Examination Under 37 CFR 1.114
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`2.
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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 1.17(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 1.17(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 7/18/2018 has been entered.
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`Claim Rejections - 35 US C § 103
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`3.
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`The following is a quotation of 35 U.S.C. 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 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.
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`4.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. 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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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 3
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`5.
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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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`6.
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`Claims 1—2, 4—7, 15, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable
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`over Giles et a1. (“Formamidinium lead trihalide: a broadly tunable perovskite for efficient planar
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`heterojunction solar cells”)
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`Regarding claims 1—2, Giles et al. discloses a light absorption material comprising a
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`compound having perovskite crystal structure represented by ABX3 of FAPnyBrg.y where A site
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`is FA, which is formamidinium (NH2)2CH+ (see second paragraph of second column of page
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`983), B site contains sz”, the X site contains I". Giles et al. teaches the perovskite crystal
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`structure FAPnyBrg.y is tunable between 1.48 eV and 2.23eV (see title and 4th paragraph of
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`second column of page 983), wherein 1.48eV is for FAPb13 or y=3 (see Fig. 1) and 2.23 eV is
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`for FAPbBr3 or y=0 (see Fig. 2e). In other words, Giles et al. teaches the perovskite crystal
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`structure FAPnyBrg.y is tunable between y=3 and y=0.
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`FAPnyBrg.y of Giles et al. corresponds to instant perovskite crystal represent by the
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`chemical formula ((NH2)2CH)PbL1 with y corresponding to instant a.
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`Giles et al. does not show the perovskite having the ratio of the number of atoms of I to
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`the number of atoms of Pb (or instant a, or y value disclosed by Giles et al.) to be 1.8—2.7 or 2.37—
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`2.63 in fig. 2. However, it would have been obvious to one skilled in the art at the time of the
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 4
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`invention was made to have selected the ratio (or instant a, or y value disclosed by Giles et al.) to
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`be 1.8—2.7 or 2.37—2.63 from the range 0—3 in the formula FAPnyBrg.y with y is tunable from 3 to
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`0 disclosed by Giles et al., because Giles et al. explicitly suggests FAPnyBrg.y is tunable by
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`selecting the y—value in the range from 0 to 3. Such selection is nothing more than a mere
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`selecting the overlapping portion of the ranges disclosed by the reference and selection of
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`overlapping portion of ranges has been held to be a prima facie case of obviousness. In re
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`Malagari, 182 USPQ 549.
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`Regarding claims 4 and 17, modified Giles et al. discloses a light absorption material as
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`in claim 1 above, wherein Giles et al. discloses the fluorescence spectrum and a band gap are the
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`properties of instant a values (or y values in the formula of Giles et al., see Fig. 2). Therefore, the
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`perovskite structure of modified Giles et al. in claim 1 above will display the recited properties
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`of a fluorescence spectrum and a band gap as claimed. Same chemical will display the same
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`properties. See MPEP 2112.
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`Regarding claims 5—7, modified Giles et al. discloses a light absorption material as in
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`claim 1 above. Limitations recited in claims 5—7 are directed to specific properties of X—ray
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`diffraction pattern of the claimed perovskite in claim 1. It is noted that Giles et al. discloses the
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`same perovskite as claimed in claim 1 above, therefore the perovskite of Giles et al. will display
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`recited properties of X—ray diffraction pattern as claimed. See MPEP 2112.
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`Regarding claim 15, modified Giles et al. discloses a light absorption material formed of
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`a perovskite crystal as in claim 1 above, Giles et al. further discloses a solar cell comprising a
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`first electrode (see gold in fig. 4a), a second electrode (see FTO in fig. 4a) and a light absorption
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`layer (see Spiro OMeTAD, perovskite and compact TiO2) between the first electrode (gold) and
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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 5
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`the second electrode (FTO), wherein the light absorption layer comprises the perovskite
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`FAPnyBrg.y as in claim 1 above.
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`Regarding claim 19, modified Giles et al. discloses a light absorption material as in claim
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`1 above. The recitation of how the ratio (or a value) is measured by an X—ray photoelectron
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`spectroscopy are directed to process limitations. The light absorption material of perovskite
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`disclosed by modified Giles et al. has the claimed ratio regardless of how it is measured.
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`Response to Arguments
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`7.
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`Applicant’s arguments with respect to claims 1—2, 4—7, 15, 17, and 19have been
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`considered but are moot in view of the new ground of rejection.
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`Applicant argues that Giles et al. shows y from 0 to 1 and does not show y from 1.8 to 2.7
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`or 2.37 to 2.63 as claimed. The examiner replies that Giles et al. teaches the perovskite
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`FAPnyBrg.y is tunable (see the title) by selecting y from 0 to 3. Therefore, one skilled in the art
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`would have found it obvious to have selected y values from 1.8 to 2.7 or 2.37 to 2.63 from the
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`range 0—3 disclosed by Giles et al. See the rejection above.
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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 THANH—TRUC TRINH whose telephone number is (571)272—
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`6594. The examiner can normally be reached on 9:00am — 6:00pm.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 6
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jeffrey T. Barton can be reached on 5712721307. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571—273—8300.
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`
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`THANH-TRUC TRINH
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`Primary Examiner
`Art Unit 1726
`
`/THANH TRUC TRINH/
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`Primary Examiner, Art Unit 1726
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`