Unrrep States PATENT AND TRADEMARK OFFICE 11022350 ‘ono7a011 ‘Aaron Barks SBSETIASIS (OOOBTOUS) osm KILPATRICK TOWNSEND & STOCKTON LLP POs TWO EMBARCADERO CENTER BOURKE, ALLISON EIGHTH FLOOR — SAN FRANCISCO, CA 941 11-3834 cay ee ormai 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 communi following e-mail address(es): ipefiling @kilpatricktownsend.com ilhice @kilpatrick.foundationip.com ion was sent electronically on above-indicated "Notification Date” to the PTOL-9OA (Rev.0407)‘Application Wo. ‘Applicants) 131022,350, BARKHOUSE ET AL. Office Action Summary Eraminer Be Unit | AR aT ALLISON BOURKE 1755 cmon = The MAILING DATE of this communication appears on the cover sheet with 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. xcncions of ine maybe avalable under he prvlons ct 37 OFA 1.136(3). In poet, however, may ply be nly has IVNo para loopy spate soo, he astra slay paid lal ae wil xsi SX (2) MONTHS tom the malig dal of ie communictn Fae mn str evened ey ny snl eae apton to ore ABANDONED 6 US §19) fumed patent em asusimant S037 Tra Status 1)13] Responsive to communication(s) filed on 6/12/2014. CIA declaration(s)iaffidavit(s) under 37 CFR 1.130(b) was/were fled on___. 2a)C] This action is FINAL. 20)B8] This action is non-final 3)0 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)C 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 Ex parte Quayle, 1985 C.D. 11, 453 0.G. 213 Disposition of Claims* 5) Claim(s) 1:33 is/are pending in the application. 5a) Of the above claim(s) 6 and 29 is/are withdrawn from consideration 610 Claim(s) __ is/are allowed. 7) Clain(s) 1,8.4,7-10,13-22 and 24-33 s/are rejected, 8)B%) Claim(s) 25.11 and 12 is/are objected to. 9) Claim(s) are subject to restriction andior election requirement, * if any claims have been determined allowable, you may be eligible to benef from the Patent Prosecution Highway program at a Participating intellectual property office forthe corresponding application, For more information, please see htpu/ww uspto.covipatents/nit events/aphvindexise or send an inquity to PPHtesdback@uspto, Application Papers 10)L] The specification is objected to by the Examiner. 11)§%] The drawing(s) filed on 2/7/2011 is/are: a)C) accepted or b)§RJ objected to by the Examiner. ‘Applicant may not request that any objection tothe drawing(s) be held in abeyance. See 87 GFR 1.85(a) Replacement drawing sheet{s) including the correction is required if the crawing(s) is objected to. See 37 GFR, 1.121(d) Priority under 35 U.S.C. § 119 12)L] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f Certified copies: a)QAN 6)L] Some" c)L] None of the: 1.00 Certified copies of the priority documents have been received, 2.0) Certified copies of the priority documents have been received in Application No. __ 3.01 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)) “ S00 the attached detailed Office action fr a list ofthe catified copies nat received. Attachment(s) 1) Bi Notice of Reteences Cited (PTO-892) 3) D inervow Summary (P7O-413) Paper No(s}Mal Date, 2) Bi intrmaton Disclosure Statements) (PTOIS8O8a andor PTOXSEIO8) Paper No(s}Mail Date 9) Dother: (otc Action SummaryApplication/Control Number: 13/022,350 Page 2 Art Unit: 1755 DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application is being examined under the pre-AIA first to invent provisions. Election/Restrictions 2. Applicant's election without traverse of Species A-1 and B-1 in the reply filed on 5/12/2014 is acknowledged 3. Claims 6 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/12/2014. Drawings 4. Figure 1a and 1b should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. 5. The drawings are objected to because Fig. 2: shadings are too similar and blend together, Fig. 3: shadings are too similar and blend together, Fig. 7: shadings are too similar and blend together and text is too small to read, Fig. 8 and 10: text is too small toApplication/Control Number: 13/022,350 Page 3 Art Unit: 1755 read. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet" or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 6. The following is a quotation of 35 U.S.C. 112(b): {b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distintly 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 specication shall conciude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as hi invertion. 7. Claims 13-19, 26-28, 30, 32 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Application/Control Number: 13/022,350 Page 4 Art Unit: 1755 distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA. the applicant regards as the invention. Regarding claim 13, it is unclear if the sublayers are the layers of transparent and conductive hole/electron accepting layers of claim 1, because the instant specification does not have support for the layers of transparent and conductive hole/electron accepting layers comprising sublayers. For the purposes of this office action, the sublayers are assumed to be the layers of transparent and conductive hole/electron accepting layers. Additionally, it is not clear where the work function decrease starts from, but only towards. Regarding claim 14, it is unclear the electron accepting semiconductor layer of which cell is referring to. Regarding claims 15-18, itis unclear the light-absorbing semiconductor layer of which cell is referring to. Regarding claims 19 and 26-28, 30, itis unclear the electron accepting semiconductor layer and the light-absorbing semiconductor layer of which cell is referring to. Regarding claim 26, it is not clear what is required by “sufficiently different magnitudes”. Dependent claims discloses differences of 1.5-5 eV, which is examiner is assuming is the sufficiently different magnitudes. Regarding claim 32, it unclear what is required for molybdenum(Mo/MoSe3) and indium tin oxide (ITO, indium tin oxide/poly(3,4-ethylene dioxythiophene (ITO/PEDOT))Application/Control Number: 13/022,350 Page 5 Art Unit: 1755 Is it the combination in the parentheses? Or just the first group listed? For the purposes of this office action, the latter is assumed. Claim Rejections - 35 USC § 103 8 The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of ths tle, i the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains, Patentability shall not be negatived by the manner in which the invention was made. 9. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 36 U.S.C. 103(a) 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. 3, Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 10. This application currently names joint inventors. In considering patentability of the claims under pre-AIA 36 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner toApplication/Control Number: 13/022,350 Page 6 Art Unit: 1755 consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a), 11 Claims 1, 3-4, 7-10, 13, 20-22, 24, 29, 31-33 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Sivananthan et al (US 2010/0096001) in view of Foll, H. (Semiconductors) Regarding claims 1 and 13, Sivananthan discloses a multijunction energy- converting device (Fig. 1) comprising: (a) first and second electrodes (109, 101), (b) a photovoltaic stack (112, 110) in electrical contact with said first and second electrodes and comprising a plurality of photovoltaic junctions (Fig. 1), each said photovoltaic junction comprising an electron-accepting semiconductor layer (107, 103) and a light- absorbing semiconductor layer (106, 102) having a substantially larger work function than said electron- accepting semiconductor layer (p-doped has a higher work function than n-doped), said photovoltaic junctions are separated by (c) a recombination region (111) comprising a layer of a transparent and conductive hole-accepting layer (105) in ohmie contact with said light-absorbing semiconductor layer of said first photovoltaic junction (Fig. 1) and a transparent and conductive electron-accepting layer (104) in ohmic contact with said electron-accepting semiconductor layer of said second photovoltaic junction (Fig. 1); said recombination region forming a gradient in work function from said transparent and conductive hole-accepting layer in ohmic contact with said light-absorbing semiconductor layer of said first photovoltaic junction to said transparent and conductive electron-accepting layer in ohmic contact with said electron- accepting semiconductor layer of said second photovoltaic junction (p-doped has aApplication/Control Number: 13/022,350 Page 7 Art Unit: 1755 higher work function than n-doped), but does not disclose a thickness with respect to a debye length. Foll discloses the Debye length gives the typical length within which a small deviation from equilibrium in the total charge density - which for doped semiconductors is always dominated by the majority carriers - is relaxed or screened; in other words is no longer felt (General Band-Bending and Debye Length). It would have been obvious to one having ordinary skill in the art at the time of the invention to make the recombination region of Sivananthan on the order of magnitude of the debye length of the material in order to increase the total charge density, Regarding claim 3, modified Sivananthan discloses all the claim limitations as set forth above but does not disclose the difference in work function and the adjacent semiconductor. Examiner notes that work function of the recombination region is dependent upon doping concentration and Sivananthan discloses a highly doped recombination region [0046] and that the work function is defined as the energy required to move an electron from the Fermi level to vacuum energy level. It would have been obvious to one having ordinary skill in the art to optimize the doping concentration in the recombination region to be near the work function of the semiconductor in order to reduce the energy requirement. Regarding claim 4, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses said gradient work function is a stepwise gradient having at least two steps (104 and 105)Application/Control Number: 13/022,350 Page 8 Art Unit: 1755 Regarding claims 7-10, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses each of said layers of said recombination region, independently in each instance, have a thickness of about 10 nm to about 50 nm [0046] Regarding claims 20-22, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses said photovoltaic stack contains exactly two of said photovoltaic junctions (Fig. 1). Regarding claim 24, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses said light-absorbing semiconductor layer of a first photovoltaic junction in said photovoltaic stack absorbs light of a first wavelength band and said light-absorbing semiconductor layer of a second photovoltaic junction in said photovoltaic stack absorbs light at wavelengths outside said first wavelength band [0043] Regarding claim 29, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses the light-absorbing semiconductor layer of one of said pair of adjacent photovoltaic junctions absorbs light with wavelengths between about 400 nm and about 800 nm and the light-absorbing semiconductor layer of the other of said pair of adjacent photovoltaic junctions absorbs light with wavelengths between about 400 nm and about 1600 nm (inherent of Si and CaTe). Regarding claim 31, modified Sivananthan discloses all the claim limitations as set forth above but does not disclose the specific conductance of the recombinationApplication/Control Number: 13/022,350 Page 9 Art Unit: 1755 region. Because the recombination regions purpose is to serially connect 2 cells of tandem structure, it would have been obvious to one having ordinary skill in the art at the time of the invention to maximize the conduction, in order to maximize the electricity being transmitted. Regarding claim 32, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses the first electrode is ITO [0049] Regarding claim 33, modified Sivananthan discloses all the claim limitations as set forth above and Sivananthan additionally discloses the second electrode is aluminum [0049]. 12. Claims 1, 3-4, 13-22, 24-31 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reddy (US 2008/0230120) in view of Foll, H. (Semiconductors). Regarding claims 1 and 13, Reddy discloses a multijunction energy-converting device (Fig. 8, 17) comprising: (a) first and second electrodes (809, 810), (b) a photovoltaic stack (860-880, 840) in electrical contact with said first and second electrodes and comprising a plurality of photovoltaic junctions (Fig. 8), each said photovoltaic junction comprising an electron-accepting semiconductor layer (880, nanoparticles of 840) and a light-absorbing semiconductor layer (870, and TiO» nanotubes: (0072}) having a substantially larger work function than said electron- accepting semiconductor layer (p-doped has a higher work function than i-type and PbS nanoparticles have higher work function than TiOz), said photovoltaic junctions are separated by (c) a recombination region (850 with N+, Fig. 9) comprising a layer of a transparent and conductive hole-accepting layer (N+) in ohmic contact with said light-Application/Control Number: 13/022,350 Page 10 Art Unit: 1755 absorbing semiconductor layer of said first photovoltaic junction (Fig. 9) and a transparent and conductive electron-accepting layer (P+) in ohmic contact with said electron-accepting semiconductor layer of said second photovoltaic junction (Fig. 9); said recombination region forming a gradient in work function from said transparent and conductive hole-accepting layer in ohmic contact with said light-absorbing semiconductor layer of said first photovoltaic junction to said transparent and conductive electron-accepting layer in ohmic contact with said electron-accepting semiconductor layer of said second photovoltaic junction (p-doped has a higher work function than n- doped), but does not disclose a thickness with respect to a debye length Foll discloses the Debye length gives the typical length within which a small deviation from equilibrium in the total charge density - which for doped semiconductors is always dominated by the majority carriers - is relaxed or screened; in other words is no longer felt (General Band-Bending and Debye Length). It would have been obvious to one having ordinary skill in the art at the time of the invention to make the recombination region of Reddy on the order of magnitude of the debye length of the material in order to increase the total charge density. Regarding claim 3, modified Reddy discloses all the claim limitations as set forth above but does not disclose the difference in work function and the adjacent semiconductor. Examiner notes that work function of the recombination region is dependent upon doping concentration and Reddy discloses a highly doped recombination region [0087-0088] and that the work function is defined as the energy required to move an electron from the Fermi level to vacuum energy level. It would haveApplication/Control Number: 13/022,350 Page 11 Art Unit: 1755 been obvious to one having ordinary skill in the art to optimize the doping concentration in the recombination region to be near the work function of the semiconductor in order to reduce the energy requirement. Regarding claim 4, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses said gradient work function is a stepwise gradient having at least two steps (N+ and P+). Regarding claim 14, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses electron-accepting semiconductor layer is an n-type material comprising a-Si [0068] Regarding claims 15-19, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses said electron-accepting semiconductor layer is titanium dioxide [0072] and said light-absorbing semiconductor layer comprises lead chalcogenide colloidal quantum dots [0069] Regarding claims 20-22, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses said photovoltaic stack contains exactly two of said photovoltaic junctions (Fig. 8). Regarding claim 24, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses said light-absorbing semiconductor layer of a first photovoltaic junction in said photovoltaic stack absorbs light of a first wavelength band and said light-absorbing semiconductor layer of a second photovoltaic junction in said photovoltaic stack absorbs light at wavelengths outside said first wavelength band [0026]Application/Control Number: 13/022,350 Page 12 Art Unit: 1755 Regarding claim 25, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses each of said photovoltaic junctions in said photovoltaic stack contains p-type light-absorbing nanoparticles that absorb light of wavelengths that are different from the wavelengths of light absorbed by p-type light- absorbing nanoparticles of any of the other photovoltaic junctions in said photovoltaic stack (Fig. 17) Regarding claims 26-28, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses said electron-accepting semiconductor layer and said light-absorbing semiconductor layer have bandgaps of sufficiently different magnitudes to cause said electrical junction therebetween to be substantially depleted of free electrons and free holes when said junction is not illuminated, said bandgap of said electron-accepting semiconductor layer is greater than said bandgap of said light-absorbing semiconductor layer by from about 1.5eV to about 5eV (examiner notes that same materials are used in Reddy from instant: TiO, and PbS nanoparticles, so therefore the claim limitations are met) Regarding claim 29, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses the light-absorbing semiconductor layer of one of said pair of adjacent photovoltaic junctions absorbs light with wavelengths between about 400 nm and about 800 nm and the light-absorbing semiconductor layer of the other of said pair of adjacent photovoltaic junctions absorbs light with wavelengths between about 400 nm and about 1600 nm (inherent of Si and PdS- IR nanoparticles [0022))Application/Control Number: 13/022,350 Page 13, Art Unit: 1755 Regarding claim 30, modified Reddy discloses all the claim limitations as set forth above and Reddy additionally discloses the electron-accepting semiconductor layer comprises an n-type metal oxide [0072] and the light-absorbing semiconductor layer comprises p-type nanoparticles [0069] having a substantially larger work function than said n-type metal oxide, and at least one side of the electrical junction therebetween is substantially depleted of free electrons and free holes when said junetion is not illuminated (examiner notes that same materials are used in Reddy from instant: TiO2 and PbS nanoparticles, so therefore the claim limitations are met). Regarding claim 31, modified Reddy discloses all the claim limitations as set forth above but does not disclose the specific conductance of the recombination region. Because the recombination regions purpose is to serially connect 2 cells of tandem structure, it would have been obvious to one having ordinary skill in the art at the time of the invention to maximize the conduction, in order to maximize the electricity being transmitted. Allowable Subject Matter 13. Claims 2, 5, 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion 14, Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON BOURKE whose telephone number isApplication/Control Number: 13/022,350 Page 14 Art Unit: 1755 (671)270-1232. The examiner can normally be reached on Monday-Thursday 9am-5pm and every other Friday 9am-5pm, If attempts to reach the examiner by telephone are unsuccesstul, the examiner's supervisor, Jonathan Johnson can be reached on (571) 272-1177. The fax phone number for the 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. /ALLISON BOURKE! Examiner, Art Unit 1755