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
`19mm
`CLEVELAND, OHIO 44115
`UNITED STATES OF AMERICA
`
`TRINH~ THANH TRUC
`
`MW
`
`1726
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/07/2018
`
`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):
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`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/493,220
`Examiner
`THAN H-TRUC TRINH
`
`Applicant(s)
`SUZUKA et al.
`Art Unit
`1756
`
`AIA 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 3/28/2018.
`[: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.
`
`2b) C] 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)
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`1—18 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.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`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 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
`
`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
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`is/are: a)D accepted or b)l:] 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:
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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.[:]
`
`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)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
`
`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
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180501
`
`

`

`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 2
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`DETAILED CORRESPONDENCE
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`Notice ofPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
`
`Status of claims
`
`2.
`
`Amendment to claims filed on 3/28/2018 is acknowledged. Claims 1—3 and 8—10 are
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`amended. Claims 17—18 are newly added. Currently claims 1—18 are pending in instant
`
`application.
`
`3.
`
`Claims 1—18 are rejected below.
`
`Claim Rejections - 35 US C § 112
`
`4.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) IN GENERAL.7The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor
`of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre—AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`5.
`
`Claims 1—18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s) contains
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`subject matter which was not described in the specification in such a way as to reasonably
`
`convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre—AIA the
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`inventor(s), at the time the application was filed, had possession of the claimed invention.
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`

`

`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 3
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`As amended, claims 1 and 8 recites “a compound having a perovskite crystal structure
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`represented by ABX3 where A site represent (NH2)2CH+, the B site represent Pb2+, and the X site
`
`represent I", wherein the X site is partially deficient in I— and a ratio of the number of atoms of I
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`to the number of atoms of Pb
`
`is 2.9 or less” in lines 2—5. Applicant has no support for a
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`perovskite structure ABX3 with X represent I" and partially deficient in I" to have a ratio of I
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`atoms to Pb atoms to be less than 2.9. If X represents I and B represents Pb in the formula ABX3,
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`then the ratio is 3 according to the formula, not less than 2.9 as claimed.
`
`Claims 2—7 and 9—18 are rejected on the same ground as claims 1 and 8.
`
`6.
`
`Claims 1—18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—AIA), first
`
`paragraph, because the specification, while being enabling for X site of the perovskite structure
`
`ABX3 to include I— and other element to maintain the perovskite structure of ABX3, does not
`
`reasonably provide enablement for the X site of a ABX3 to represent I— and having a deficiency
`
`of I— so that the ratio is less than 2.9, because if X represents I and B represents Pb in the formula
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`ABX3, then the ratio is 3 according to the formula ABX3, not less than 2.9 as claimed. The
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`specification does not enable any person skilled in the art to which it pertains, or with which it is
`
`most nearly connected, to make the invention commensurate in scope with these claims.
`
`7.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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.
`
`

`

`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 4
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`8.
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`Claims 1—18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
`
`invention.
`
`As amended, claims 1 and 8 recite “a compound having a perovskite crystal structure
`
`represented by ABX3 where A site represent (NH2)2CH+, the B site represent Pb2+, and the X site
`
`represent 1', wherein the X site is partially deficient in I—, and a ratio of the number of atoms of I
`
`to the number of atoms of Pb
`
`is 2.9 or less” in lines 2—7. The metes and bounds of the
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`limitation cannot be determined. If B represents Pb2+ and X site represents 1' in the formula
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`ABX3, the formula ABX3 is APblg. The ratio of I atoms to Pb atoms is 3 according to the
`
`formula, and cannot be 2.9 or less as claimed. If the ratio is less than 2.9, B site represents Pb
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`and X site represents I—, the compound is no longer a perovskite crystal structure represented by
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`formula ABX3.
`
`Claims 2—7 and 9—18 are rejected on the same ground as claims 1 and 8.
`
`For the purpose of this office action, “the X site represents I—” is interpreted as “the X site
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`includes 1'”
`
`Claim Rejections - 35 US C § 102
`
`9.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`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 ,
`
`(a)(l) 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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`

`

`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 5
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`10.
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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
`
`by Giles et al. (“Formamidinium lead trihalide: a broadly tunable perovskite for efficient planar
`
`heterojunction solar cells,” Non—patent literature documents Cite No. 2 in IDS 12/14/2017).
`
`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 is
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`shown to be from 0 to 1 (see fig. 2), wherein A site is FA, which is formamidinium (NH2)2CH+
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`(see second paragraph of second column of page 983), B site contains sz”, the X site contains 1—
`
`, and the ratio of the number of atoms of I to the number of atoms of Pb is 0, 0.1, 0.2, 0.3, 0.4,
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`0.8, 0.9 or 1 (see y 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
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`the claimed range of 2.7 or less. When the ratio is less than 3, the X site is partially deficient in 1.
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`Regarding the recitations of how the ratio is measured such as by X—ray photoelectron
`
`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 al. has the claimed ratio regardless
`
`of how it is measured.
`
`Regarding claims 2—3 and 9—10, Giles et al. discloses a light absorption material as in
`
`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
`
`of the ratio.
`
`Regarding claims 5—7 and 12—14, Giles et al. discloses a light absorption material as in
`
`claims 1 and 8 above. Limitations recited in claims 5—7 and 12—14 are directed to specific
`
`properties of X—ray diffraction pattern of the claimed perovskite in claims 1 and 8. It is noted that
`
`Giles et al. discloses the same perovskite as claimed in claims 1 and 8 above, therefore the
`
`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 6
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`perovskite of Giles et al. will display recited properties of X—ray diffraction pattern as claimed.
`
`See MPEP 2112.
`
`Regarding claims 15 —16, Giles et al. discloses a solar cell comprising a first electrode
`
`(gold, see fig. 4a), a second electrode (FTO, see fig. 4a) and a light absorption layer (Spiro
`
`OMeTAD, perovskite and compact TiO2) between the first electrode (gold) and the second
`
`electrode (FTO), wherein the light absorption layer comprises the perovskite in claims 1 and 8
`
`above (see fig. 4).
`
`Claim Rejections - 35 US C § 103
`
`11.
`
`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 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.
`
`12.
`
`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. l, 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 obviousness or
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`nonobviousness.
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`13.
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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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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 7
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`14.
`
`Alternatively, claims 2—3 and 9—10 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Giles et al. (“Formamidinium lead trihalide: a broadly tunable perovskite for
`
`efficient planar heterojunction solar cells,” Non—patent literature documents Cite No. 2 in IDS
`
`12/14/2017).
`
`Regarding claims 2—3 and 9—10, Giles et al. discloses a light absorption material as in
`
`claims 1 and 8 above, wherein Giles et al. teaches the perovskite structure having a formula of
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`FAPnyBr3-y, in which y is varies from 0 to 3 (See the formula and the name “trihalide” in the
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`title).
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`Giles et al. does not show the perovskite having the ratio of the number of atoms of I to
`
`the number of atoms of Pb (or y value) to be 1.8—2.7, 2.1—2.7, 2.0—2.9 or 2.3—2.9 in fig. 2.
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`However, it would have been obvious to one skilled in the art at the time of the invention was
`
`made to have selected the ratio (or y value) to be 1.8—2.7, 2.1—2.7, 2.0—2.9 or 2.3—2.9 in the
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`formula FAPnyBrg.y such that the total number of halide to be 3 (or trihalide), because such
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`selection is nothing more than a mere selecting the overlapping portion of the ranges disclosed
`
`by the reference and selection of overlapping portion of ranges has been held to be a prima facie
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`case of obviousness. In re Malagari, 182 USPQ 549.
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 8
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`15.
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`Claims 3, 11 and 17—18 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Giles et al. (“Formamidinium lead trihalide: a broadly tunable perovskite for efficient planar
`
`heterojunction solar cells,” Non—patent literature documents Cite No. 2 in IDS 12/14/2017).
`
`Regarding claims 3 and 11, Giles et al. discloses a light absorption material as in claims 1
`
`and 8 above, wherein Giles et al. discloses tuning the compound FAPnyBrg.y from FAPb13 to
`
`FAPbBrg by decreasing iodide fraction (see third paragraph of second column of page 986). In
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`other words, Giles et al. teaches tuning the compound FAPnyBrg.y from FAPb13 to FAPbBrg by
`
`decreasing y value from 3 to 0. Giles et al. also discloses the fluorescence spectrum of
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`FAPnyBrg.y is increased as y value increases (see fig. 2b).
`
`Giles et al. does not show the fluorescence spectrum of FAPnyBrg.y where y value is
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`greater than 1 such that the fluorescence spectrum of FAPnyBrg.y has a peak at 880 nm or more
`
`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
`
`made to have recognized that the fluorescence spectrum of FAPnyBrg.y will be in the range of
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`880 nm or more and 905 nm or less by selecting the value of y to greater than 1, because Giles 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.
`
`Regarding claims 17—18, Giles et al. discloses a light absorption material as in claims 1
`
`and 8 above, wherein Giles et al. discloses tuning the compound FAPnyBrg.y from FAPb13 to
`
`FAPbBrg by decreasing iodide fraction (see third paragraph of second column of page 986). In
`
`other words, Giles et al. teaches tuning the compound FAPnyBrg.y from FAPb13 to FAPbBrg by
`
`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 9
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`decreasing y value from 3 to 0. Giles et al. also discloses the absorbance wavelengths or the
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`fluorescence spectrum of FAPnyBrg.y is increased as y value increases (see fig. 2b).
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`Giles et al. does not show the absorbance wavelengths or the fluorescence spectrum of
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`FAPnyBrg.y where y value is greater than 1 such that the bandgap of the compound is from 1.35
`
`eV to 1.45 eV (or the absorbance wavelengths to be (855—919 nm)
`
`However, it would have been obvious one skilled in the art at the time the invention was
`
`made to have tuned the perovskite compound of FAPnyBrg.y disclosed by Giles et al. by
`
`selecting the y value to be greater than 1 to obtain the bandgaps of 1.35 eV to 1.45 eV (or
`
`wavelengths of 855—919nm), because Giles et al. specifically discloses tuning the compound
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`FAPnyBrg.y from FAPb13 to FAPbBr3 by varying the y value is from 3 to 0, and the fluorescence
`
`spectrum increases as the value of y increases. Such tuning would mount nothing more than a
`
`mere selecting the overlapping portion of the ranges disclosed by the reference and selection of
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`overlapping portion of ranges has been held to be a prima facie case of obviousness. In re
`
`Malagari, 182 USPQ 549.
`
`Response to Arguments
`
`16.
`
`Applicant’s arguments with respect to claims 1—18 have been considered but are moot
`
`because the arguments do not apply to any of the references being used in the current rejection.
`
`Applicant argues that Giles et al. discloses the X site includes 1— but not the X site
`
`represents 1— in the formula ABX3 and the X site is partially deficient in I— to have the ratio of the
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`I atoms to the Pb atoms of less than 2.9 as claimed. The examiner replies that Applicant does not
`
`even disclose X represents 1— such that the X site is partially deficient in I— to have the ratio of
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`less than 2.9, because if the X represents 1— then the ratio is 3 according to the formula ABX3
`
`with B represents Pb and X represents I—, and if the ratio of less than 2.9 and X represents 1— then
`
`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 10
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`the compound is no longer ABX3. Applicant cannot have both conditions, e.g. the ratio less than
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`2.9 and the formula ABX3, when X site represents 1—. Therefore, the claims are rejected under
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`ll2(a) and ll2(b) and the limitations are interpreted as the X site includes 1— in order to satisfy
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`the ratio being less than 2.9 and the formula of ABX3.
`
`Conclusion
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`17.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
`
`Applicant is reminded of the extension of time policy as set forth in 37 CFR l.l36(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
`
`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR l.l36(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to THANH—TRUC TRINH whose telephone number is (571)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.
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`

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`Application/Control Number: 15/493,220
`Art Unit: 1726
`
`Page 11
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jeffrey T Barton can be reached on 5712721307. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571—273—8300.
`
`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.
`
`THANH-TRUC TRINH
`
`Primary Examiner
`Art Unit 1756
`
`/THANH TRUC TRINH/
`
`Primary Examiner, Art Unit 1726
`
`