UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.mptogov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`15/493,220
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`04/21/2017
`
`MICHIO SUZUKA
`
`PANDP0214US
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`7167
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
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`CLEVELAND, OHIO 44115
`
`Tm: THANH TRUC
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`PAPER NUMBER
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`1756
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/09/2018
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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
`following e-mail address(es):
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`ipdocket@rennerotto.com
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`PTOL-QOA (Rev. 0407)
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`

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`017709 A0110” Summary
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`Application No.
`15/493,220
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`Examiner
`THAN H-TRUC TRINH
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`Applicant(s)
`SUZUKA et al.
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`Art Unit
`1756
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`AIA Status
`Yes
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`- The MAILING DA TE ofthis 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 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).
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`Status
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`1)|:| Responsive to communication(s) filed on
`I:I A declaration(s)laffidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)l:| This action is FINAL.
`2b) I 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 Exparfe Quay/e, 1935 CD. 11, 453 O.G. 213.
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`
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`Disposition of Claims"
`5)
`Claim(s)
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`1-16 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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`6) El Claim(s)
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`is/are allowed.
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`7)
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`8)
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`Claim(s) 1-16is/are rejected.
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`I] Claim(s)
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`is/are objected to.
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`are subject to restriction and/or election requirement
`9) El 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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`http:llwww.uspto.govlpatents/init_events/pphlindex.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:| The specification is objected to by the Examiner.
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`is/are: a)[:| accepted or b)|:| objected to by the Examiner.
`11)|:| 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 (f).
`Certified copies:
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`a)I:I All
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`b)I:I Some“
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`c)I:I 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.
`
`Attachment(s)
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`1) [3 Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTOISBIOSa andfor PTOISBIOBb)
`2)
`Paper No(s)lMail Date 4/21/2017.
`US Patent and Trademark Office
`
`3) |:| Interview Summary (PTO—413)
`Paper No(s)/Mail Date
`4) D Other'
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`PTOL—325 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper NoJMail Date 20180103
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`

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`Application]Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page2
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`DETAILED CORRESPONDENCE
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`Notice ofPre-AIA or AM 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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`Claim Rejections - 35 USC § 112
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`2.
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION7The specification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`3.
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`Claims 2-3 and 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the
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`invention.
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`A broad range or limitation together with a narrow range or limitation that falls within the
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`broad range or limitation (in the same claim) is considered indefinite, since the resulting claim
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`does not clearly set forth the metes and bounds of the patent protection desired. See MPEP §
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`2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex
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`parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is
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`followed by "such as" and then narrow language. The Board stated that this can render a claim
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`indefinite by raising a question or doubt as to whether the feature introduced by such language is
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`(a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required
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`feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131
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`USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche,
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`

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`Application]Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page3
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`86 USPQ 481 (Ed. App. 1949). In the present instance, claims 2-3 depend on claim 1 and recite
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`the broad recitation “the ratio is 1.8 or more” in claim 2 and “the ratio is 2.1 or more” in claim 3,
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`and the claims also recite “the ratio of the number of atoms of I to the number of atoms of Pb ...
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`is 2.7 or less” in lines 5-6 of claim 1, which is the narrower statement of the range/limitation.
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`Similarly, claims 9-10 depend on claim 8 and recite the broad recitation “the ratio is 2.0
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`or more” in claim 9 and “the ratio is 2.3 or more” in claim 10, and the claims also recite the ratio
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`is 2.9 or less in lines 5-6 of claim 8.
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`4.
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`The following is a quotation of 35 U.S.C. 112(d):
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`(d) REFERENCE IN DEPENDENT FORMS.7Subject to subsection (e), a claim in dependent form
`shall contain a reference to a claim previously set forth and then specify a further limitation of the
`subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the
`limitations of the claim to which it refers.
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`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
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`Subject to the following paragraph [i.e., the fifth paragraph ofpre-AIA 35 U.S.C. 112], a claim in
`dependent form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by
`reference all the limitations of the claim to which it refers.
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`5.
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`Claims 2-3 and 9-10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th
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`paragraph, as being of improper dependent form for failing to filrther limit the subject matter of
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`the claim upon which it depends, or for failing to include all the limitations of the claim upon
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`which it depends.
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`Claims 2-3 depend on claim 1 and recite the broad recitation “the ratio is 1.8 or more” in
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`claim 2 and “the ratio is 2.1 or more” in claim 3, and the claims also recite the ratio of the
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`number of atoms of I to the number of atoms of Pb
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`is 2.7 or less in lines 5-6 of claim 1.
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`Claims 2-3 fail to further limit the subject matter of the claim upon which they depend, and fail
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`to include all the limitations of the claim upon which they depend.
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`

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`Application]Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page4
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`Similarly, claims 9-10 depend on claim 8 and recite the broad recitation “the ratio is 2.0
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`or more” in claim 9 and “the ratio is 2.3 or more” in claim 10, and the claims also recite the ratio
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`is 2.9 or less in lines 5-6 of claim 8. Claims 9-10 fail to further limit the subject matter of the
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`claim upon which they depend, and fail to include all the limitations of the claim upon which
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`they depend.
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`Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper
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`dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that
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`the dependent claim(s) complies with the statutory requirements.
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`Claim Rejections - 35 USC § 102
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`6.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless 4
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
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`7.
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`Claims 1-2, 4-10 and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
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`by Giles et al. (“Formamidinium lead trihalide: a broadly tunable perovskite for efficient planar
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`heterojunction solar cells,” Non-patent literature documents Cite No. 2 in IDS 12/ 14/2017).
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`Regarding claims 1 and 8, 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 y : 0-
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`1 (see fig. 2), wherein A site is FA, which is formamidinium (NH2)2CH+ (see second paragraph
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`of second column of page 983), B site contains Pb2+, the X site contains 1-, and the ratio of the
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`number of atoms OH to the number of atoms of Pb is 0, 0.1, 0.2, 0.3, 0.4, 0.8, 0.9 or 1 (see y
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`values in fig. 2). The ratio of 0, 0.1, 0.2, 0.3, 0.4, 0.8, 0.9 or 1 is right within the claimed range of
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`2.7 or less.
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`

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`Application]Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page5
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`Regarding the recitations of how the ratio is measured such as by X-ray photoelectron
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`spectroscopy or by a Rutherford backscattering spectroscopy are directed to process limitations.
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`The light absorption material perovskite disclosed by Giles et a1. has the claimed ratio regardless
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`of how it is measured.
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`Regarding claims 2-3 and 9-10, Giles et al. discloses a light absorption material as in
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`claims 1 and 8 above, wherein Giles et al. discloses a choice of the claimed ratio, e. g. 0-1, the
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`reference is deemed to be anticipatory on the instant claims as instant claims recite other choices
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`of the ratio.
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`Regarding claims 5-7 and 12-14, Giles et a1. discloses a light absorption material as in
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`claims 1 and 8 above. Limitations recited in claims 5-7 and 12-14 are directed to specific
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`properties of X-ray diffraction pattern of the claimed perovskite in claims 1 and 8. It is noted that
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`Giles et al. discloses the same perovskite as claimed in claims 1 and 8 above, therefore the
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`perovskite of Giles et al. will display recited properties of X-ray diffraction pattern as claimed.
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`See MPEP 2112.
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`Regarding claims 15-16, Giles et al. discloses a solar cell comprising a first electrode
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`(gold, see fig. 4a), a second electrode (FTO, see fig. 4a) and a light absorption layer (Spiro
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`OMeTAD, perovskite and compact TiO2) between the first electrode (gold) and the second
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`electrode (FTO), wherein the light absorption layer comprises the perovskite in claims 1 and 8
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`above (see fig. 4).
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`Claim Rejections - 35 USC § 103
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`8.
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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
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`

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`Application/Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page6
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`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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`9.
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`The factual inquiries set forth in Graham 12. John Deere C0,, 383 US. 1, 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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`10.
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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 15 6 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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`11.
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`Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Giles et a1.
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`(“Formamidinium lead trihalide: a broadly tunable perovskite for efficient planar heterojunction
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`solar cells,” Non-patent literature documents Cite No. 2 in IDS 12/ 14/2017).
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`Regarding claims 3 and 11, Giles et al. discloses a light absorption material as in claims 1
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`and 8 above, wherein Giles et a1. discloses tuning the compound FAPnyBr3.y from FAPbI3 to
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`FAPbBr3 by decreasing iodide fraction (see third paragraph of second column of page 986). In
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`other words, Giles et a1. teaches tuning the compound FAPnyBr3,.y from FAPbI3 to FAPbBr3 by
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`

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`Application]Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page7
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`decreasing y value from 3 to 0. Giles et al. also discloses the fluorescence spectrum of
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`FAPnyBr3,.y is moving higher wavelengths as y value increasing (see fig. 2b).
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`Giles et al. does not show the fluorescence spectrum of FAPnyBr3-y where y value is
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`greater than 1 such that the fluorescence spectrum of FAPnyBr3—y has a peak at 880 nm or more
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`and 905 nm or less.
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`However, it would have been obvious one skilled in the art at the time the invention was
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`made to have recognized that the fluorescence spectrum of FAPnyBr3.y will be in the range of
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`880 nm or more and 905 nm or less by increasing the value of y to greater than 1, because Giles
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`et al. specifically discloses the y value is from 3 to 0 to tune the compound FAPnyBrg.y from
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`FAPb13 to FAPbBrg, and the fluorescence spectrum increases as the value of y increases.
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`Conclusion
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`12.
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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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Keith Hendricks can be reached on 5712721401. 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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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`

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`Application]Control Number: 1 5/493 ,220
`Art Unit: 1 75 6
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`Page8
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`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 OR CANADA) or 571-272-1000.
`
`THANH-TRUC TRINH
`
`Primary Examiner
`Art Unit 175 6
`
`/THANH TRUC TRINH/
`
`Primary Examiner, Art Unit 1756
`
`