Ex Parte Gaudiana et alDownload PDFPatent Trial and Appeal BoardSep 16, 201611167763 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/167,763 0612712005 Russell Gaudiana 30407 7590 09/16/2016 BOWDITCH & DEWEY, LLP 311 MAIN STREET P.O. BOX 15156 WORCESTER, MA 01615-0156 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 310470.3018-100 POS/276 2221 EXAMINER TRINH, THANH TRUC ART UNIT PAPER NUMBER 1755 MAILDATE DELIVERY MODE 09/16/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUSSELL GAUDIANA, DANIEL PATRICK MCGAHN, and CHARLES H. CELLA Appeal2015-001330 Application 11/167,763 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the Examiner's decision finally rejecting claims 1-3, 10, 45--47, 54, 184, and 185 under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The real party in interest is stated to be Merck Patent GmbH (Br. 5). Appeal2015-001330 Application 11/167,763 Claims 1 and 185 are illustrative of the appealed subject matter (emphasis added to highlight key limitations): 1. A method, comprising: providing a sensor in association with a photovoltaic facility to form a sensor-pv facility, the photovoltaic facility comprising first, second, and third photovoltaic cells, the second photovoltaic cell having a first corner and a second corner opposite the first corner; and providing the sensor-pv facility in a kit to be deployed in a home environment, wherein the first and second photovoltaic cells are joined at the first corner by a first connection that can rotate so that the first and second photovoltaic cells can rotate over each other; the second and third photovoltaic cells are joined at the second corner by a second connection that can rotate so that the second and third photovoltaic cells can rotate over each other; and the first connection comprises an electrical connection between the first and second photovoltaic cells or the second connection comprises an electrical connection between the second and third photovoltaic cells. 184. The method of claim 1 wherein the photovoltaic cells are rectangular and the second corner is diagonally opposite the first corner. (Br. 21, 23; Claims App.) The Examiner maintains, and Appellants appeal, the following rejection under 35 U.S.C. § 103(a): Claims 1-3, 10, 45--47, 54, 184, and 185 are rejected as unpatentable over Batts-Gowins (US 2002/0171391 Al, published Nov. 21, 2002) (hereinafter "Batts-Gowins") in view ofLiebeskind (US 4,114,307, issued 2 Appeal2015-001330 Application 11/167,763 Sept. 19, 197 8) (hereinafter "Liebeskind"), and further in view of Seefluth (DE 10127292 Al, published Dec. 12, 2002) (hereinafter "Seefluth"). Appellants' arguments urging reversal of the§ 103 rejection focus on limitations common to independent claims 1 and 45 (Br. 5-16; 19). In the absence of arguments specific to their patentability, dependent claims 2, 3, 10, 46, 4 7, and 54 stand or fall with each of their respective independent claims. 37 C.F.R. § 41.37(c)(l)(iv). Appellants present separate arguments urging reversal of the§ 103 rejection of claims 184 and 185 (Br. 16-19). ANALYSIS Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusion that the subject matter of Appellants' claims 1 and 45 are unpatentable over the applied prior art. We sustain the Examiner's§ 103 rejection of claims 1-3, 10, 45--47, and 54 for essentially the reasons set out by the Examiner in the Answer. On the other hand, we agree with Appellants that the Examiner has not shown that each and every limitation of claims 184 and 185 is either described or suggested by the prior art, and we reverse the Examiner's § 103 rejection with respect to claims 184 and 185. We add the following primarily for emphasis. With respect to claims 1 and 45, Appellants contend that the Examiner's relied upon passages in Batts-Gowins merely refer to the folding properties of Batts-Gowins' hinged solar panel (Br. 11 ). Therefore, according to Appellants, Batts-Gowins fails to teach or suggest "two panels connected such that they 'can rotate over each other' as claimed" (id.). This 3 Appeal2015-001330 Application 11/167,763 argument is not persuasive, because, as pointed out by the Examiner, Batts- Gowins' hinged solar panels teach photovoltaic cells "'rotating over each other' along a side, or an edge of the panel, where the hinges are located" (Ans. 2). Appellants further contend that the combination of Batts-Gowins and Liebeskind does not teach or suggest three photovoltaic cells rotating at two different comer connections, where the second photovoltaic cell has a second comer connection that is opposite the first comer connection (Br. 12-15).2 This argument is not persuasive, because, as pointed out by the Examiner, Liebeskind teaches rotation at a pivot along a side which can be viewed as substantially at a comer, and locating pivots at both comers of Batts-Gowins as a modification for the hinged-folding mechanism of Batts- Gowins would have been reasonably inferred by the skilled artisan as one way to fold over the solar panel as desired by Batts-Gowins (Ans. 3 (citing Liebeskind Figs. 1--4); see also Ans. 5---6). In evaluating references, it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968); see also In re Keller, 642 F.2d 413, 425-26 (CCP A 1981) ("The test for obviousness ... is what the combined teachings of the references would have suggested to those of ordinary skill in the art."); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non- obviousness cannot be established by attacking references individually 2 The Examiner relies on Seefluth "for teaching [that] a connection, where the rotation occurs, also comprises an electrical connection" (Ans. 5). 4 Appeal2015-001330 Application 11/167,763 where the rejection is based upon the teachings of a combination of references."). Appellants do not provide any persuasive technical reasoning or credible evidence to refute the Examiner's determination that it would have been prima facie obvious to modify the hinged attachment of Batts-Gowins to include pivot connections substantially at opposite comers (of the same side) since pivot connections are well known and are exemplified in Liebeskind, for the known advantages of easier storage of solar panels as suggested by Batts-Gowins (e.g., Final Act. 4--5; Ans. 3-5; generally Br.). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417--418 (2007) (using prior art elements or steps according to their established function is ordinarily obvious; further, the "inferences and creative steps that a person of ordinary skill in the art would employ" can be taken into account). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. On the other hand, with respect to claims 184 and 185, Appellants argue that the combination of Batts-Gowins and Liebeskind does not teach or suggest three photovoltaic cells rotating at two different comer connections, where the second photovoltaic cell has a second comer connection that is diagonally opposite the first comer connection as required by claims 184 and 185 (Br. 16-19). A preponderance of the evidence supports Appellants' position. The Examiner acknowledges that modified Batts-Gowins does not specifically disclose that the second comer is diagonally opposite the first comer (Final Act. 7). The Examiner, however, determined that it would have been obvious to the ordinary skilled artisan to modify the solar panels 5 Appeal2015-001330 Application 11/167,763 of Batts-Gowins by arranging the pivots of rotation at the diagonally opposite comers, "because such modification would involve nothing more than a mere rearrangement of parts" (id. at 7). On the record before us, the Examiner has not shown that each and every limitation of claims 184 and 185 is either described or suggested by the prior art or would have been obvious based on the knowledge of the ordinary artisan. The Examiner states that arranging rotatable solar panel connections such that the second comer is diagonally opposite the first comer "involve[ s] nothing more than a mere rearrangement of the connections for [a] point rotation mechanism" (Ans. 6-7). While one of ordinary skill in the art would have reasonably inferred from the applied prior art that solar panels may rotate over each other via rotatable pivots located substantially at opposite comers on the same side of a solar panel to fold up for easier storage, the Examiner has not directed us to adequate evidence on this record suggesting that solar panels may rotate over each other via rotatable pivots located at diagonally opposite comers. Therefore, we agree with Appellants that the combination of Batts-Gowins, Liebeskind, and Seefluth does not teach three photovoltaic cells rotating at two different comer connections, where the second comer is diagonally opposite the first comer. As such, we cannot sustain the obviousness rejection of claims 184 and 185. Accordingly, the Examiner's 35 U.S.C. § 103 rejection of claims 184 and 185 is reversed. 6 Appeal2015-001330 Application 11/167,763 DECISION The Examiner's§ 103 rejection as applied to claims 1-3, 10, 45--47, and 54 is affirmed. The Examiner's § 103 rejection of claims 184 and 185 is reversed. The Examiner's decision is affirmed-in-part. ORDER AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation