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
`
`16/289,722
`
`03/01/2019
`
`MICHIO SUZUKA
`
`PANDP0214USA
`
`6521
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`TRINH~ THANH TRUC
`
`ART UNIT
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`01/ 1 6/2020
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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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`

`

`0/7709 A0170” Summary
`
`Application No.
`16/289,722
`Examiner
`THANH-TRUC TRINH
`
`Applicant(s)
`SUZUKAetal.
`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
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`1). Responsive to communication(s) filed on 11/7/2019.
`CI 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) D 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 Expade 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)
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`1—3 and 9 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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`
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`[:1 Claim(ss)
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`is/are allowed.
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`Claim(ss) 1 —3 and 9 is/are rejected.
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`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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
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`10)|:l The specification is objected to by the Examiner.
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`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
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`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:] Some**
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`c)l:i None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3D 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) [3 Notice of References Cited (PTO-892)
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`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] 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 20191127
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`

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`Application/Control Number: 16/289,722
`Art Unit: 1726
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013,
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`is being examined under the
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`first inventor to file provisions of the AIA.
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`Status of claims
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`2.
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`The amendment filed on 11/7/2019 is acknowledged. Claims 4—8 are canceled. Claims 1—
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`3 and 9 are currently pending in the instant application.
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`3.
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`4.
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`Previous 112 (a) rejection of claims 4—8 is withdrawn due to the cancelation of the claims.
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`Previous prior art and double patenting rejection of claims 1—3 and 9 are maintained since
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`Applicant’s argument is not persuasive and a terminal disclaimer has not been filed. See
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`response to arguments below.
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`Response to Arguments
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`5.
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`Applicant's arguments filed 11/7/2019 have been fully considered but they are not
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`persuasive.
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`Applicant argues the combination of Bakr and Raga would not result in a crystal
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`represented by the chemical formula ((NH2)2CH)PbIa because Raga teaches measuring both
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`I/Pb and N/Pb ratios for AMX3 with A to be MA, and not FA, and both I/Pb and N/Pb ratios are
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`varied from stoichiometric. The examiner replies that Applicant does not point out where in
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`Raga that Raga teaches I/Pb ratio is varied from stoichiometric. The ratio I/Pb is the ratio of X/M
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`in the formula AMX3, which is stoichiometrically independent from A as X/M (or I/Pb) ratio
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`does not include A. The difference between Applicant claimed (perovskite) crystal formula
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`((NH2)2CH)PbIa and the perovskite crystal measured by Raga, CH3NH3PbI3, is A, or Raga uses
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`AMX3 of CH3NH3 (or A is MA) instead of ((NH2)2CH) (or A is FA). As explained above, the
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`

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`Application/Control Number: 16/289,722
`Art Unit: 1726
`
`Page 3
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`ratio I/Pb at a surface of APbI3 perovskite crystal does not vary from stoichiometric, because the
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`I/Pb (or M/X) ratio stoichiometrically does not depend on A, whether A is (NH2)2CH) or
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`CH3NH3. Furthermore, Applicant has not submit any subjective evidence to show that a
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`perovskite crystal AMX3 made by using Pbl2 and AI precursors taught by Raga would have
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`X/M ratio such as I/Pb ratio stoichiometrically depending on A and would not result in a
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`perovskite crystal with a surface composition measured by XPS to have a ratio I/Pb of 2.5 as
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`taught by Raga. It is noted that when a value (or ratio of I/Pb) of AMXa is less than 3, the
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`composition AMXa is not for a crystal material, but an amorphous material (see evidentiary
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`reference to Huang et al., “Evolution of Chemical Composition, Morphology, and Photovoltaic
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`Efficiency of CH3Nh3PbI3 Perovskite under Ambient Conditions” attached in co—pending
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`Application No. 15/493220, as Huang et al. teaches exposing perovskite crystal under ambient
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`air, the perovskite crystal AMX3 is degraded to have the I/Pb ratio, e.g. a value, less than 3 of
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`amorphous products).
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`Accordingly,
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`the previous prior rejection is maintained since Applicant’s argument is not
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`persuasive as explained above. The obviousness double patenting rejection is also maintained
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`since terminal disclaimer is not filed.
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`Below is the copy of the prior rejection and obvious double patenting rejection of claims
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`1—3 and 9.
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`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstandingthat 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.
`
`

`

`Application/Control Number: 16/289,722
`Art Unit: 1726
`
`Page 4
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`7.
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`The factual inquiries set forth in Graham v. John Deere C0. , 383 U.S. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill
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`in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobvious ne s s .
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`8.
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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 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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`9.
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`Claims 1—3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bakr et al.
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`(WC 2016/ 151535)
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`in view of Raga et a1. (“Rapid perovskite formation by CH3NH2 gas—induced
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`intercalation and reaction of Pb12”).
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`Regarding claims 1—3, 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 4th and 5th 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 MXZ and AX
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`(see 4th paragraph in page 8). It is noted that FAPbI3 is ((NH2)2CH)Pb13.
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`

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`Application/Control Number: 16/289,722
`Art Unit: 1726
`
`Page 5
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`Bakr et al. does not teach the ratio of I/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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`Raga 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), and the 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 of page 2499), and the deviation from the 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.
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`(See column 1 of page 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)PbI3) 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 Raga et al., because Bakr et al.
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`explicitly suggests forming the AMX3 perovskite crystal from MX2 and AX precursors, and
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`Raga et al. teaches such method would form uniform perovskite films in ambient air over a large
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`area 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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`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,
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`the light
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`absorption material perovskite crystal at the surface of FAPbI3 of modified Bakr et al.
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`is
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`represented by the chemical formula ((NH2)2CH)PbIat under X—ray photoelectron spectroscopy
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`

`

`Application/Control Number: 16/289,722
`Art Unit: 1726
`
`Page 6
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`(or surface sensitive XPS) with a is 2.5, 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 claim 9, 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 of page 7) or solar cells (see 211d paragraph of page 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
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`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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`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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`Double Patenting
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`10.
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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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`

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`Application/Control Number: 16/289,722
`Art Unit: 1726
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`Page 7
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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
`
`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
`
`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Th0ringt0n,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 1.321(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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`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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`1.321(b).
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`The USPTO 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., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
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`PTO/AIA/26) should be used. A web—based eTerminal Disclaimer may be filled out completely
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`online using web—screens. An eTerminal 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/eTD—info—I.jsp.
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`

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`Application/Control Number: 16/289,722
`Art Unit: 1726
`
`Page 8
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`11.
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`Claims 1—3 and 9 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1—2, 4—7, 15, 17 and 19 of copending Application
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`No. 15/493220. Although the claims atissue are not identical,
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`they are not patentably distinct
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`from each other because claims 1—2, 4—7, 15, 17 and 19 of copending Application No. 15/493220
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`recite all the limitations of claims 1—9 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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`Conclusion
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`12.
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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 TWO
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`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 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`13.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to THANH—TRUC TRINH whose telephone number is (571)272—
`
`6594. The examiner can normally be reached on 9:00am — 6:00pm.
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`Examiner interviews are available via telephone,
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`in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`

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`Application/Control Number: 16/289,722
`Art Unit: 1726
`
`Page 9
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`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`htth/WWW.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`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 htth/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 1726
`
`/THANH TRUC TRINH/
`
`Primary Examiner, Art Unit 1726
`
`