UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`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
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`NAOKI HAYASHI
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`PANDP0165US
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`5700
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19mm
`CLEVELAND, OHIO 44115
`UNITED STATES OF AMERICA
`
`SLAWSKL MAGALIP
`
`MW
`
`1721
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/01/2018
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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
`1758
`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 18 May 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] 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 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 20180529
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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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`Summary
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`On May 18, 2018, Applicant filed arguments without amending the claims.
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`From the office action mailed February 22, 2018, the 103 rejections are
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`maintained.
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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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`OMeTAD/Co-complex as hole-transporting material" J. Mater. Chem. A, 2013, 1,
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`11842—11847), hereinafter Noh, in view of Cappel et al. ("Oxygen-Induced Doping of
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`Spiro-MeOTAD in Solid-State Dye-Sensitized Solar Cells and Its Impact on Device
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`Performance" Nano Lett. 2012, 12, 4925-4931), hereinafter Cappel. Copies of Noh
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`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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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 3
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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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`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, which would have been obvious to one of ordinary skill in
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`the art to optimize.
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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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`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 solid-state dye-sensitized
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`solar cell (ssDSSC) (title) and teaches spiro-OMeTAD placed Ti02 (page 4926 figure
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`2a). Cappel teaches a doping level of 0.8 i 0.2 % oxidized spiro-OMeTAD (page 4927
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`Table 1 last line). The range expressed by 0.8 i 0.2 % is 0.6 % to 1.0 %, which
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`overlaps 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 l 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, 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). Two of the claimed aryl groups
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`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 5
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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 May 18, 2018 have been fully considered but they are
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`not persuasive.
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`Addressing the 103 rejection of claim 1, Applicant appears to argue that the
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`claimed range of doping ratios decreases the rate at which the solar cell's conversion
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`efficiency deteriorates over time [Remarks page 4 last paragraph]. Applicant argues
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`that Noh does not teach this result [Remarks page 5 last paragraph].
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`In response to Applicant's argument, the fact that applicant has recognized
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`another advantage which would flow naturally from following the suggestion of the prior
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`art cannot be the basis for patentability when the differences would otherwise be
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`obvious. See Exparte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & lnter. 1985).
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`While addressing the 103 rejection of claim 1, Applicant identifies the retention of
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`conversion efficiency over time as "unexpected" [Remarks page 5 last paragraph —
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`page 6 top].
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`In response to Applicant's argument, allegations of unexpected results
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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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`must be supported by evidence (MPEP 716.02(a)) Applicant has not yet met Applicant's
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`burden of demonstrating that the results are unexpected (MPEP 716.02(b)).
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`Still addressing the 103 rejection of claim 1, Applicant appears to argues that
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`Cappel's teaching of a doping level is not relevant to Noh because Cappel (figure 2)
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`teaches the doped spiro-OMeTAD layer distributed in a porous Ti02 layer, while Noh
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`(figure 1) teaches the doped spiro-OMeTAD sitting on a CHsNHstls layer [Remarks
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`page 6 bottom —page 7 top].
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`In response to Applicant's argument, first, the examiner respectfully disagrees
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`with the contrast Applicant draws between the two references. Noh teaches the
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`structure FTO/bl-TiOz/mp-TiOz/CHsNHstls/spiro-OMeTAD/Au (page 11843 right,
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`paragraph 1 bottom and 11884 figure 1a). Thus the doped spiro-OMeTAD is in direct
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`contact with the CHsNHstls layer, as in Cappel. Also, Noh teaches a porous Ti02 (mp-
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`Ti02) film on the blocking (bl-Ti02) film, between it and the perovskite light absorbing
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`layer (page 11843 left, bottom — right, top), as in Cappel.
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`Second, Cappel is used in the rejection only to show that a range of
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`concentrations overlapping the claimed range was known when the instant application
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`was filed. The rationale for optimizing comes from Noh itself, not Cappel.
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`Addressing the 103 rejection of claim 6, Applicant argues that Cappel shows that
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`the use of porous Ti02 would have resulted in a doping level being higher than the
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`claimed range [Remarks page 7 bottom]. The examiner respectfully disagrees.
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`Cappel's findings may be interpreted as recommending a doping level higher than the
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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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`claimed range.
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`It does not follow that, upon deciding to make Noh's solar cell, one of
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`ordinary skill in the art necessarily would have chosen a doping level higher than the
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`claimed range. Furthermore, a reference may be relied upon for all that it would have
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`reasonably suggested to one having ordinary skill the art, including nonpreferred
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`embodiments (MPEP 2123 I).
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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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 telephone the examiner.
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`

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`Application/Control Number: 15/163,675
`Art Unit: 1721
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`Page 8
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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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`Information regarding the status of an application may be obtained from the
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/Magali P Slawski/
`Primary Examiner, Art Unit 1721
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`