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
`
`15/493,220
`
`04/21/2017
`
`MICHIO SUZUKA
`
`PANDP0214US
`
`7167
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`TRINH~ THANH TRUC
`
`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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`09/20/2019
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`ELECTRONIC
`
`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
`
`PTOL-90A (Rev. 04/07)
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`

`

`0/7709 A0170” Summary
`
`Application No.
`15/493,220
`Examiner
`THAN H-TRUC TRINH
`
`Applicant(s)
`SUZUKA 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
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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).
`
`Status
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`1). Responsive to communication(s) filed on 5/6/2019.
`[: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.
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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
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`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).
`
`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:l Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] 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)
`
`1)
`
`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`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 20190805
`
`

`

`Application/Control Number: 15/493 ,220
`Art Unit: 1726
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`Page 2
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`DETAILED AC 110 N
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`In view of the appeal brief filed on 5/6/2019, PROSECUTION IS HEREBY
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`REOPENED. A new ground of rejection is set forth below.
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`To avoid abandonment of the application, appellant must exercise one of the following
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`two options:
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`(1) file a reply under 37 CFR 1.111 (if this Office action is non —final) or a reply under 37
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`CFR 1.113 (if this Office action is final); or,
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`(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an
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`appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee
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`can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have
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`been increased since they were previously paid, then appellant must pay the difference between
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`the increased fees and the amount previously paid.
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`A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing
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`below.
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`/JEFFREY T BART ON/
`
`Supervisory Patent Examiner, Art Unit 1726
`
`Notice ofPre-AIA 0rAL4 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 ofthe first paragraph of35 U.S.C. 112(a):
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`(a) IN GENERAL—The specification shall contain awritten description ofthe invention, and
`ofthe manner and process ofmaking andusing it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which itpertains, or with which itis most nearly connected, to
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 3
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`make and usethe sane, and shall set forth the best mode contemplatedby theinventor orjointinventor
`of carryin g out the invention.
`
`The following is a quotation ofthe first paragraph ofpre—AIA 35 U.S.C. 112:
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`The specification shall contain a written description ofthe invention, and ofthe manner and
`process ofmaking and using it, in suchfull, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with whichit is most nearly connected, to make and usethe
`same, and shall set forth the best modecontemplated by the inventor ofcarrying outhisinvention.
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`3.
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`Claims 1—2, 4—7, 15, 17 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—
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`AIA), first paragraph, because the specification, while being enabling for perovskite crystal
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`represented by ABX3 (see [0005] of Applicant’s disclosure), does not reasonably provide
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`enablement for the “ perovskite crystal” represented by ((NH2)2CH)PbIat with a being not less
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`than 1.8 and not more than 2.7. When a is less than 3, the perovskite structure has been
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`decomposed and become amorphous (see second column of page 306 of evidentiary reference to
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`Huang et al., “Evolution of Chemical Composition Morphology and Photovoltaic Efficiency of
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`CH3NH3PbI3 Pervoskite under Ambient Conditions”). In addition, the specification, while
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`being enable for the recited properties in claims 4—7 and 17 and I/Pb ratio in the range of 1.8 to
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`2.7 or 2.37 to 2.63 at the surface the perovskite crystal FAPbI3 are the characteristic of the
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`FAPbI3 perovskite crystals (see examples 1—10, and specifically [0050]) , does not reasonably
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`provide enablement for the recited properties in claims 4—7 and 17 are the
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`properties/characteristic of a perovskite crystal represented by the chemical formula
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`((NH2)2CH)PbIat with a being not less than 1.8 and not more than 2.7. It is also noted that a
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`perovskite crystal is commonly known to be represented by chemical formula ABX3. The
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`specification does not enable any person skilled in the art to which it pertains, or with which it is
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`mo st nearly connected, to use the invention commensurate in scope with these claims.
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`Claim Rejections - 35 USC § 103
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`

`

`Application/Control Number: 15/493 ,220
`Art Unit: 1726
`
`Page 4
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`4.
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`The following is a quotation of35 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 aclaimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, ifthe differences between the claian invention and the
`prior art are such that the claian invention as awhole would havebeen obviousbefore the effective
`filing date ofthe claian invention to aperson having ordinary skill in the art to which the claian
`invention pertains. P atentability shall not be 11 egated by the man ner in which the in vention was mad e.
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`5.
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`The factual inquiries set forth in Graham v. John Deere C0. , 383 U.S. 1, 148 USPQ 459
`
`(1966), that are applied for establishing a background for determining obviousne ss 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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`6.
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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 applic ability 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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`7.
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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 Bakr et al. (WO 2016/151535) in view of Raga et a1. (“ Rapid perovskite formation by
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`CH3 NH2 gas—induced intercalation and reaction of Pb12”).
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 5
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`Regarding claims 1—2 and 19, Bakr et al. discloses a light absorption material formed of a
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`perovskite crystal represented by AMX3, where A is MA or FA, M is Pb and X is I (see
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`paragraphs 4‘h and 5 ‘h of page 7). Bakr et al. also teaches AMX3 includes FAPbI3 (see last
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`paragraph of page 7), wherein the perovskite crystal is formed by using precursor MX2 and AX
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`(see 4‘h paragraph in page 8). It is noted that FAPbI3 is ((NH2)2CH)PbI3.
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`Bakr et al. does not teach the ratio ofI/Pb, or the value a, to be less than 1.8 and not more
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`than 2.7; nor do they teach the ratio of I/Pb, or the value a, to be not less than 2.37 and not more
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`than 2.63 as claimed.
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`Qi et al. teaches a perovskite crystal formed by using MX2 (e. g. Pblz) and AX (e. g.
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`CH3NH3PbI) precursors (see abstract, “Results and discussion” on page 2496), andthe resulted
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`perovskite is tested using an X—ray photoelectron spectroscopy (or XPS) to obtain the I/Pb ratio
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`was close to 2.5 (see column 1 ofpage 2499), and the deviation fromthe expected ratio of 3
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`occurs because XPS is surface sensitive and the surface chemical composition is different from
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`the bulk chemical composition. (See column 1 ofpage 2499).
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`It would have been obvious to one skilled in the art at the time of the invention was made
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`to have formed the light absorption material of perovskite material AMX3 having formula
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`FAPbI3 (or ((NH2)2CH)Pb13) of Bakr et al. by using precursors MX2 and AX, e.g. Pbl2 and
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`((NH2)2CH)I for FAPbI3 , such that the I/Pb ratio (or the value a) of the perovskite is found to be
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`close to 2.5 under X—ray photoelectron spectroscopy as taught by Qi et al. , because Bakr et al.
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`explicitly suggests forming the AMX3 perovskite crystal from MX2 and AX precursors, and Qi
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`et al. teaches such method would form uniform perovskite films in ambient air over a large area
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`within merely a few seconds and exhibits multiple advantages (see “Introduction”), and the
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`obtained perovskite would have the value a (or I/Pb ratio) close to 2.5 deviated from the
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 6
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`expected value of 3 under X—ray photoelectron spectroscopy as a result of the X—ray
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`photoelectron spectroscopy (or XPS) being surface sensitive and the chemical composition at the
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`surface, which is tested under XPS, is different from the bulk. In such modification, the light
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`absorption material perovskite crystal at the surface of FAth of modified Bakr et al. is
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`represented by the chemical formula ((NH2)2CH)PbIat with a is 2.5 under X—ray photoelectron
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`spectroscopy (or surface sensitive XPS), and 2.5 is right within the claimed ranges of 1.8—2.7 and
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`2.37-2.63.
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`Regarding claims 4—7, modified Bakr et al. discloses the same light absorption material as
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`in claim 1 above, e. g. FAPbIZs or ((NH2)2CH)PbIz.5. Therefore, the light absorption material of
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`modified Bakr et al. will display the recited properties in the instant claims. See MPEP 2 l 12.
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`Regarding claim 15, modified Bakr et al. discloses a light absorption material of
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`perovskite crystal as in claim 1 above, wherein Bakr et al. discloses the perovskite crystal is used
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`in photovoltaic devices (see 3rd paragraph ofpage 7) or solar cells (see 211d paragraph ofpage 10),
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`and a photodetector having a perovskite layer (e. g. MAPbCl3) between first and second
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`electrodes (e.g. Pt top electrode and Ti/Au bottom electrode, see page 29, second paragraph). It is
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`noted that that photodetector is a solar cell as the photodetector converts light to electricity (see
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`page 29, second paragraph). Therefore, the perovskite (e. g. MAPbCl3) is the light absorbing
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`layer comprising a light absorbing material and converting incident light into a charge (see page
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`29, second paragraph). Bakr et al. does not explicitly teach using the light absorbing material as
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`in claim 1 above in the photodetector described in page 29. However, Bakr et al. discloses
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`replacing MAPbCl3 (or MAPbX3) with FAPbI3 would provide the most efficient perovskite
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`solar cell (see first paragraph of page 58 of Bakr et al.). Therefore, it would have been obvious to
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`one skilled in the art at the time the invention was made to have used the FAth having surface
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`

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`Application/Control Number: 15/493 ,220
`Art Unit: 1726
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`Page 7
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`composition represented by formula ((NH2)2CH)PbIZ.5 (or FAPbIZs) of modified Bakr et al. in
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`claim 1 above between two electrodes in the photodetector (or solar cell) described in page 29 to
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`form the most efficient perovskite solar cell as explicitly suggested by Bakr et al.
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`Regarding claim 17, modified Bakr et al. discloses the same light absorption material of
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`perovskite crystal as in claim 1 above. Therefore, the light absorption material of modified Bakr
`
`et al. will display the recited properties in the instant claim. See MPEP 2112. Furthermore, Bakr
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`et al. discloses black FAPbI3 having a bandgap of 1.4 eV (see fig. 4.3A and first paragraph of
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`page 6 1).
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`Double Patenting
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`8.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the “ right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where
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`the conflicting claims are not identical, but at least one examined application claim is not
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`patentably distinct from the reference claim(s) because the examined application claim is either
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`anticipated by, or would have been obvious over, the reference claim(s). See, e. g., In re Berg,
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`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046,29 USPQ2d
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`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
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`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.32 1 (d) may
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`be used to overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent either is shown to be commonly owned with the
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 8
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`examined application, or claims an invention made as a result of activities undertaken within the
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`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
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`under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP
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`§§ 706.02(l)(1) — 706.02(l)(3) for applications not subject to examination under the first inventor
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`to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1 .3 2 1(b).
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`The USPT 0 Internet website contains terminal disclaimer forms which may be used.
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`Please visit www.uspto.gov/patent/patents—forms. The filing date of the application in which the
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`form is filed determines what form (e.g., PT O/SB/25, PT O/SB/26, PT O/AIA/25, or
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`PT O/AIA/26) should be used. A web—based eT erminal Disclaimer may be filled out completely
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`online using web—screen s. An eT erminal Disclaimer that meets all requirements is auto —
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`processed and approved immediately upon submission. For more information about eTerminal
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`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eT D—info—I.jsp.
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`9.
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`Claims 1—2, 4—7, 15, 17 and 19 are provisionally rejected on the ground of nonstatutory
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`double patenting as being unpatentable over claims 1—9 of copending Application No. 16/28 9722
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`(reference application). Although the claims at issue are not identical, they are not patentably
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`distinct from each other because claims 1—9 of copending Application No. 16/289722 recite all
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`the limitations of claims 1—2, 4—7, 15, 17 and 19 of the instant Application.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have not in fact been patented.
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`Response to Amuments
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 9
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`10.
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`Applicant’s arguments with respect to claims 1—2, 4—7, 15, 17 and 19 have been
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`considered but are moot because the arguments do not apply to any of the references being used
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`in the current rejection.
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`Applicant argues Giles does not teach the claimed formula. However, Applicant’s
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`argument is moot in view ofthe new ground of rejections.
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`Conclusion
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`1 1.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to T HANH—TRUC T RINH whose telephone number is (5 7 1)272—
`
`6594. The examiner can normally be reached on 9:00am — 6:00pm.
`
`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.
`
`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.
`
`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
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`system, contact the Electronic Business Center (EBC) at 866 —217—9197 (toll—free). If you would
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
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`Page 10
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`like assistance from a USPT 0 Customer Service Representative or access to the automated
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`information system, call 800—786—9 199 (IN USA OR CANADA) or 571—272—1000.
`
`T HANH-T RUC T RINH
`
`Primary Examiner
`Art Unit 1726
`
`/T HANH T RUC T RINH/
`
`Primary Examiner, Art Unit 1726
`
`