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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`14/504,771
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`10/02/2014
`
`Peter John COUSINS
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`10031.004211
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`3342
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`Okamoto & Benedicto LLP
`PO. Box 641330
`San Jose, CA 95164-1330
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`P LAY, DEVINA
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`ART UNIT
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`1755
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`MAIL DATE
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`03/21/2016
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`PAPER NUIVIBER
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`DELIVERY MODE
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`PAPER
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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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`PTOL—90A (Rev. 04/07)
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`

`

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`Application No.
`Applicant(s)
`
` 14/504,771 couers, PETER JOHN
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1755DEVINA PILLAY first“
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If 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).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 1-20.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I 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 Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)|XI Claim(s) 1-20 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)I:l Claim(s) _ is/are rejected.
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`8)I:I Claim(s)
`is/are objected to.
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`9)|XI Claim(s 1-20 are subject to restriction and/or election requirement.
`I
`* If any claims have been determined allowable, 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
`htt
`://www.usoto. ov/ atents/init events"
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`
`
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`h/index.‘s or send an inquiry to PPI-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I 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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)I:I 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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`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`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.
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`Attachment(s)
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`
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`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20160317
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`

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`Application/Control Number: 14/504,771
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`Page 2
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`Art Unit: 1755
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`DETAILED ACTION
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`Election/Restrictions
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`2.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`l. Claims 1-14, drawn to a solar cell, classified in H01 L31/022425.
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`ll. Claims 15-20, drawn to a method of fabricating a solar cell, classified in
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`H01 L31/182.
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`The inventions are distinct, each from the other because of the following reasons:
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`3.
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`Inventions II and l are related as process of making and product made. The
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`inventions are distinct if either or both of the following can be shown: (1) that the
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`process as claimed can be used to make another and materially different product or (2)
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`that the product as claimed can be made by another and materially different process
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`(MPEP § 806.05(f)).
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`In the instant case the product as claimed can be made by another
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`and materially different process. For example, the substrate can be formed on the first
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`tunnel dielectric.
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`4.
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`Restriction for examination purposes as indicated is proper because all these
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`inventions listed in this action are independent or distinct for the reasons given above
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`and there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`

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`Application/Control Number: 14/504,771
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`Page 3
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`Art Unit: 1755
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`(a) the inventions have acquired a separate status in the art in view of their
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`different classification;
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`(b) the inventions have acquired a separate status in the art due to their
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`recognized divergent subject matter;
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`(c) the inventions require a different field of search (for example, searching
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`different classes/subclasses or electronic resources, or employing different search
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`queries);
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`(d) the prior art applicable to one invention would not likely be applicable to
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`another invention;
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`(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C.
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`101 and/or 35 U.S.C. 112, first paragraph.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a invention to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`and specifically point out supposed errors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. lf claims are added after
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`

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`Application/Control Number: 14/504,771
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`Page 4
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`Art Unit: 1755
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`showing the inventions to be obvious variants or clearly admit on the record that this is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`5.
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`The examiner has required restriction between product or apparatus claims and
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`process claims. Where applicant elects claims directed to the product/apparatus, and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims
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`that include all the limitations of the allowable product/apparatus claims should be
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`considered for rejoinder. All claims directed to a nonelected process invention must
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`include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the
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`product/apparatus claims and the rejoined process claims will be withdrawn, and the
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`rejoined process claims will be fully examined for patentability in accordance with 37
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`CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for
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`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all
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`claims to the elected product/apparatus are found allowable, an otherwise proper
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`restriction requirement between product/apparatus claims and process claims may be
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`

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`Application/Control Number: 14/504,771
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`Page 5
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`Art Unit: 1755
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`maintained. Withdrawn process claims that are not commensurate in scope with an
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`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
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`Additionally, in order for rejoinder to occur, applicant is advised that the process claims
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`should be amended during prosecution to require the limitations of the
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`product/apparatus claims. Failure to do so may result in no rejoinder. Further, note
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`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
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`where the restriction requirement is withdrawn by the examiner before the patent
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`issues. See MPEP § 804.01.
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`Conclusion
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`6.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DEVINA PILLAY whose telephone number is (571 )270-
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`1180. The examiner can normally be reached on Monday thru Friday 7:30am -5:00pm
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`(EST). Examiner Fax Number is (571)270-2180.
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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 571 -272—1307. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 14/504,771
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`Page 6
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`Art Unit: 1755
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272—1 000.
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`/DEVINA PILLAY/
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`Primary Examiner, Art Unit 1755
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`