Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE STANFORD T. OVSHINSKY AND DAVID ADLER
Appeal No. 86-0712
January 3, 1989
HEARD: October 20, 1988
Application for Patent filed March 13, 1985. Serial No. 710,947, which is a continuation of Serial No. 427,757, filed September 29, 1982, and a continuation of Serial No. 206,580, filed November 13, 1980, both abandoned. Multiple Cell Photoresponsive Amorphous Alloys and Devices.
Marvin S. Siskind for appellants
Primary Patent Examiner--Aaron Weisstuch
Before Winters, Meros and Metz
This appeal was taken from the examiner's decision refusing to allow claims 24 through 31, which are all the claims remaining in this application.
Claim 24 is representative:
24. An improved photoresponsive tandem multiple cell device, said device comprising:
at least a first and second superimposed cell of various materials,
said first cell being formed of a silicon alloy material,
said second cell including an amorphous silicon alloy semiconductor cell body h aving an active photoresponsive region in which radiation can impinge to produc e charge carriers, said amorphous cell body including at least one density of s tates reducing element, said element being fluorine, said amorphous cell body f urther including a band gap adjusting element therein at least in said photores ponsive region to enhance the radiation absorption thereof, said adjusting elem ent being germanium, the band gap of said cell being adjusted for a specified p hotoresponse wavelength threshold function different from said first cell,
said second cell being a multi-layer body having deposited semiconductor layers of opposite (p and n) conductivity type, the n-type layer being formed by introducing during the deposition of the layer an n-dopant element and the p-type layer being formed by introducing during deposition of the layer a p-dopant element, and having deposited between said p and n doped layers a substantially intrinsic amorphous alloy layer with at least a portion of said intrinsic layer containing said amorphous cell body, and
said first cell being formed with said second cell in substantially direct junction contact therebetween, said first and second cells designed to generate substantially matched currents from each cell from a light source directed through said first cell and into said second cell.
The single prior art reference relied on by the examiner is:
Dalal 4,377,723 issued March 22, 1983
filed May 2, 1980
The issue presented for review is whether the examiner correctly rejected all of the appealed claims under 35 USC 102(e) as anticipated by Dalal.
Appellants take the position that Dalal is not available prior art in this case in view of a showing of facts under Rule 131 which, according to appellants, antedates the reference. Specifically, appellants assert that the showing of facts establishes "conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date ... to the filing of the [parent] application". See 37 CFR 1.131(b). In this regard, the effective date of the Dalal reference is its May 2, 1980 filing date and the filing date of appellants' parent application Serial No. 206,580 is November 13, 1980. The showing of facts or documentary evidence on which appellants rely is identified in the record as exhibits A through I as follows: (a) the notes of Dr. Adler, exhibit A, (b) the 537 patent disclosure notes, exhibit B, (c) the 538 patent disclosure notes, exhibit C, (d) the notes of Mr. Citkowski, exhibit D, (e) the Citkowski declaration, exhibit E, (f) the Ovshinsky declaration, exhibit F, (g) the Cannella declaration, exhibit G, (h) the Adler declaration, exhibit H, and (I) the Winburn declaration, exhibit I.
*2 Having carefully reviewed the evidence in its entirety, we agree that appellants have shown conception coupled with due diligence in the manner required by Rule 131. We agree, therefore, that appellants' showing is sufficient to remove the Dalal patent as a reference.
With respect to the issue of conception, we note particularly paragraph no. 3 of the Citkowski declaration and paragraph no. 3 of the Cannella declaration. These declarations, which corroborate the declarations of the inventors in this case, establish disclosure of each and every feature of the claimed invention at a meeting at Energy Conversion Devices, Inc. before May 2, 1980. Considering the Citkowski and Cannella declarations together with the other declarations of record, as well as Exhibits A through D in the form of "notes", we conclude that appellants have established conception of the claimed invention prior to the effective date of the reference.
Apparently, the examiner has dissected the evidence and considered only Exhibits A through D in the form of "notes" as having probative value. According to the examiner, these "notes" are appellants' "proofs" and the "proofs" considered alone are insufficient to establish conception of the claimed invention prior to the effective date of the reference. This failure to give probative weight to the Rule 131 declarations constitutes reversible error. We point out to the examiner that (1) all the evidence must be considered in its entirety, including the Rule 131 declarations and accompanying exhibits, records and "notes", (2) an accompanying exhibit need not support all of the claimed limitations but rather a missing feature may be supplied by the declaration itself. Ex parte Swaney, 89 USPQ 618 (PO Bd.App.1950), and (3) it is entirely appropriate for appellants to rely on a showing of facts set forth in the Rule 131 declarations themselves to establish conception of the invention prior to the effective date of the reference. This appellants have done.
With respect to the issue of diligence, we note the requirement in Rule 131(b) that appellants show "due diligence from prior to said date [the effective date of the reference] ... to the filing of the application". Appellants have done just that in the Winburn declaration, identified in the record as exhibit I. Note particularly the 17 page attachment to exhibit I, wherein attorney Winburn documents by way of time records over 70 days from before May 2, 1980 through November 12, 1980 when he worked on a series of closely related patent applications. This series includes parent application Serial No. 206,580, filed November 13, 1980. On the facts of this case, we conclude that appellants have shown reasonable attorney diligence through the relevant time period and to the filing of parent application Serial No. 206,580. We also note that work continued in the laboratories of Energy Conversion Devices, Inc. on appellants' disclosed and claimed subject matter from prior to May 2, 1980 to and including November 13, 1980. See the Ovshinsky declaration, exhibit F, final paragraph. Here, as in Rines v. Morgan, 116 U.S.P.Q. 145 (CCPA 1957), the record reflects that the inventors and their attorney worked diligently during the relative time period on a series of closely related patent applications including the one in issue.
*3 In our judgment, the Rule 131 evidence is sufficient to remove Dalal as a reference in this case. We therefore do not reach the question whether Dalal anticipates the subject matter of appealed claims 24 through 31 within the meaning of 35 USC 102.
The examiner's decision is reversed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
Edward J. Meros
Andrew H. Metz