www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`16/249,000
`
`01/16/2019
`
`Tasuku IShigul‘O
`
`P161190U501
`
`5462
`
`38834
`
`759°
`
`10/28/2019
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`
`8500 Leesburg Pike
`SUITE 7500
`
`BERNIER' LINDSEY A
`
`1726
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/28/2019
`
`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
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`following e—mail address(es):
`
`patentmai1@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`16/249,000
`Examiner
`LINDSEYA BERNIER
`
`Applicant(s)
`Ishiguro et al.
`Art Unit
`1726
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`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).
`
`Status
`
`1). Responsive to communication(s) filed on 10/18/2019.
`[: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.
`
`2b)
`
`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)[:] 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.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—11 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`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
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 1/16/2019 is/are: a). accepted or b)E] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`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:
`
`a). All
`
`b)D Some**
`
`C)D 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. 15/374,291.
`
`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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191022
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`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.
`
`2.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
`
`Election/Restrictions
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`3.
`
`Applicant’s election of Species C, claims 1-11, in the reply filed on 10/18/2019 is
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`acknowledged. Because applicant did not distinctly and specifically point out any
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`supposed errors in the restriction requirement, the election has been treated as an
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`election without traverse (MPEP § 818.01 (a)).
`
`4.
`
`Claims 1 and 8—1 0 are objected to because of the following informalities:
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`Claim Objections
`
`In claim 1
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`line 14, “he” should be changed to “the”.
`
`In claim 8 line 2, “width” should be changed to “a width”.
`
`In claim 8 line 3, “is faces” should be changed to “faces”.
`
`In claim 9 line 3, “is faces” should be changed to “faces”.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 3
`
`In claim 10 line 3, “insulated each other” should be changed to “insulated from
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`each other”.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 1 12
`
`5.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The 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-AlA), 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.
`
`6.
`
`Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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-AlA the applicant regards
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`as the invention.
`
`Claim 10 contains the limitation “the resin layer of the diffusion inhibiting layer”.
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`No resin layer of the diffusion inhibiting layer has been set forth and “the resin layer of
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`the diffusion inhibiting layer” does not have antecedent basis. For the purpose of this
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`Office Action, claim 10 will be treated as if it reads “a resin layer of the diffusion
`
`inhibiting layer”.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`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, if the differences between the
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 4
`
`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.
`
`8.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 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.
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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
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`obviousness or nonobviousness.
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`9.
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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
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`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
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`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.
`
`10.
`
`Claims 1-3, 5-6 and 8-11 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Kardauskas (US 5,994,641) in view of Zhang et al. (US
`
`2013/0139868, on IDS).
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 5
`
`Regarding claim 1, Kardauskas discloses a solar cell module un Figures 3-5
`
`comprising:
`
`a solar cell (4) (column 5 lines 34-35);
`
`a first protection member (cover member 10) provided on a light receiving
`
`surface side of the solar cell (column 5 line 65-column 6 line 6);
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`a second protection member (back protector sheet 6) (column 5 lines 45-51)
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`provided on a rear surface side of the solar cell (Figure 5);
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`an encapsulant layer (14) that includes a first encapsulant layer (front
`
`encapsulant layer) disposed between the solar cell (4) and the first protection member
`
`(10), and a second encapsulant layer (back encapsulant layer) disposed between the
`
`solar cell (4) and the second protection member (6), and seals the solar cell (column 6
`
`lines 7-28).
`
`Kardauskas does not disclose a wavelength conversion substance that is
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`contained in at least the first encapsulant layer, wherein concentration of the
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`wavelength conversion substance in the first encapsulant layer is higher than
`
`concentration of the wavelength conversion substance in the second encapsulant layer.
`
`Zhang discloses a solar cell module in Figure 6 and [117] comprising:
`
`a solar cell (100);
`
`a first protection member (103 on front) provided on a light receiving surface side
`
`of the solar cell (100);
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 6
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`a second protection member (103 on rear) provided on a rear surface side of the
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`solar cell (100);
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`an encapsulant layer (105 and 101) that includes a first encapsulant layer (101)
`
`(see polymer matrix for wavelength conversion material discussed in [117]) disposed
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`between the solar cell (100) and the first protection member (103 on front), and a
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`second encapsulant layer (105 on rear of cells) disposed between the solar cell (100)
`
`and the second protection member (103 on rear), and that seals the solar cell ([117]);
`
`and
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`a wavelength conversion substance (chromophore 102) that is contained in at
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`least the first encapsulant layer (101) of the encapsulant layers ([117] and [30]), and
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`that absorbs light having a specified wavelength, and converts the wavelength ([30]),
`
`wherein concentration of the wavelength conversion substance (chromophore
`
`102) in the first encapsulant layer (101) is higher than concentration of the wavelength
`
`conversion substance in the second encapsulant layer (105 on rear) (No wavelength
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`conversion substance in second encapsulant layer, see Figure 6).
`
`It would have been obvious to one having ordinary skill in the art at the time of
`
`the invention to add a wavelength conversion substance to the first encapsulant layer of
`
`Kardauskas, such that concentration of the wavelength conversion substance in the first
`
`encapsulant layer is higher than concentration of the wavelength conversion substance
`
`in the second encapsulant layer, as taught by Zhang, because the wavelength
`
`conversion substance improves the light absorption of the cells and the efficiency of the
`
`module (Zhang, [24], [26] and [31]).
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 7
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`Kardauskas further discloses a diffusion inhibiting layer (24) constituted from a
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`material having a smaller diffusion coefficient of the wavelength conversion substance
`
`than the diffusion coefficient of resin constituting the first encapsulant layer is provided
`
`between the first encapsulant layer and the second encapsulant layer (Figures 3-5 and
`
`column 6 lines 49-66. The diffusion inhibiting layer is a metal which can be aluminum or
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`silver, column 7 lines 47-64, and the encapsulant layer is EVA, column 6 lines 7-12. The
`
`aluminum or silver material necessarily has a smaller diffusion coefficient of the
`
`wavelength conversion substance than the EVA material.).
`
`Regarding claim 2, modified Kardauskas discloses all of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the material constituting the
`
`diffusion inhibiting layer has a higher storage elastic modulus at 25°C to 90°C than that
`
`of the resin constituting the first encapsulant layer (The diffusion inhibiting layer is a
`
`metal which can be aluminum or silver, column 7 lines 47-64, and the encapsulant layer
`
`is EVA, column 6 lines 7-12. The aluminum or silver material necessarily has a higher
`
`storage elastic modulus at 25°C to 90°C than the EVA material.).
`
`Regarding claim 3, modified Kardauskas discloses all of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the material constituting the
`
`diffusion inhibiting layer has a smaller intermolecular void size at 25°C to 90°C than that
`
`of the resin constituting the first encapsulant layer (The diffusion inhibiting layer is a
`
`metal which can be aluminum or silver, column 7 lines 47-64, and the encapsulant layer
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 8
`
`is EVA, column 6 lines 7-12. The aluminum or silver material necessarily has a smaller
`
`intermolecular void size at 25°C to 90°C than the EVA material.).
`
`Regarding claims 5 and 6, modified Kardauskas discloses all of the claim
`
`limitations as set forth above. Zhang additionally discloses that the wavelength
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`conversion substance is a luminescent metal complex ([32], see dyes with rare earth
`
`materials which are luminescent metal complexes) and that the wavelength conversion
`
`substance is a fluorescence dye ([30]).
`
`Regarding claim 8, modified Kardauskas discloses all of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that a front surface side of the
`
`diffusion inhibiting layer has a concave-convex pattern arranged in a width direction of
`
`the diffusion inhibiting layer, and the front surface side faces the first encapsulant layer
`
`(Figures 3-5 and column 6 lines 49-66).
`
`Regarding claim 9, modified Kardauskas discloses all of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the diffusion inhibiting layer
`
`comprises a metal layer (24) at a front surface side of the diffusion inhibiting layer
`
`(Figures 3-5 and column 4 lines 11-53 and column 6 lines 49-66), and the front surface
`
`side faces the first encapsulant layer (Figures 3-5 and column 6 lines 49-66).
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 9
`
`Regarding claim 10 , modified Kardauskas discloses all of the claim limitations
`
`as set forth above. Kardauskas additionally discloses that a resin layer (22) of the
`
`diffusion inhibiting layer is arranged between the metal layer (24) and the solar cell (4),
`
`and the metal layer (24) and the solar cell (4) are insulated from each other (Figures 3-
`
`5, column 6 lines 49-66, column 7 lines 34-45 and column 9 lines 18-48).
`
`Regarding claim 11, modified Kardauskas discloses all of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the diffusion inhibiting layer
`
`comprising an inorganic compound layer at the front surface side of the diffusion
`
`inhibiting layer (column 11 lines 9-17, the reflective coating can be a dielectric stack
`
`including inorganic compound layers).
`
`11.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kardauskas
`
`(US 5,994,641) in view of Zhang et al. (US 2013/0139868, on IDS), as applied to claim
`
`1 above, in further view of Bourke, Jr. et al. (US 2011/0126889).
`
`Regarding claim 4, modified Kardauskas discloses all of the claim limitations
`
`thereof. Zhang additionally discloses that the wavelength conversion substance can be
`
`a luminescent metal complex ([32], see dyes with rare earth materials which are
`
`luminescent metal complexes) and a fluorescence dye ([30]), but modified Kardauskas
`
`does not disclose that the wavelength conversion substance is an inorganic
`
`semiconductor nanoparticle.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 10
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`Bourke teaches that inorganic semiconductor nanoparticles are alternative
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`equivalent wavelength conversion substances to luminescent metal complexes and
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`fluorescent dyes in photovoltaic devices ([61]-[70]).
`
`Since Bourke recognizes the equivalency of luminescent metal complexes,
`
`fluorescent dyes and inorganic semiconductor nanoparticles as wavelength conversion
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`substances in photovoltaic devices as discussed above, it would have been obvious to
`
`one of ordinary skill in the art at the time the invention was filed to replace the
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`luminescent metal complex and fluorescent dye of modified Kardauskas with an
`
`inorganic semiconductor nanoparticle, as taught by Bourke, since it is merely the
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`selection of functionally equivalent wavelength conversion substances recognized in the
`
`art and one of ordinary skill in the art would have a reasonable expectation of success
`
`in doing so. A substitution of known equivalent materials is generally recognized as
`
`being within the level of ordinary skill in the art.
`
`12.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kardauskas
`
`(US 5,994,641) in view of Zhang et al. (US 2013/0139868, on IDS), as applied to claim
`
`1 above, in further view of Morgan et al. (US 2014/0319377).
`
`Regarding claim 7, modified Kardauskas discloses all of the claim limitations
`
`thereof. Modified Kardauskas does not disclose that the concentration of the
`
`wavelength conversion substance in a first region of the first encapsulant layer closer to
`
`the first protection member is higher than in a second region of the first encapsulant
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`layer closer to the solar cell.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 11
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`Morgan discloses a luminescent photovoltaic solar concentrator in Figure 2
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`comprising a wavelength conversion substance (luminescent dye) in a first encapsulant
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`layer (124) wherein the concentration of the wavelength conversion substance in a first
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`region of the first encapsulant layer (124) closer to the light source (126) is higher than
`
`in a second region of the first encapsulant layer closer to the solar cell (128, [105])
`
`([97])-
`
`It would have been obvious to one having ordinary skill in the art at the time of
`
`the invention to modify the device of modified Kardauskas such that the concentration of
`
`the wavelength conversion substance in a first region of the first encapsulant layer
`
`closer to the first protection member is higher than in a second region of the first
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`encapsulant layer closer to the solar cell, as taught by Morgan, because such a
`
`configuration allows for efficient wavelength conversion of incident light and efficient
`
`solar cell light absorption.
`
`Conclusion
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LINDSEY A BERNIER whose telephone number is
`
`(571)270-1234. The examiner can normally be reached on Monday-Thursday 12-10
`
`pm.
`
`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.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 12
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Jeffrey Barton can be reached on 571 -272-1 307. 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 system, see http://pair-direct.uspto.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 OR CANADA) or 571-272-1000.
`
`/LINDSEY A BERNIER/
`
`Primary Examiner, Art Unit 1726
`
`