Ex Parte Jacobs et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201412145166 (P.T.A.B. Feb. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/145,166 06/24/2008 Gregory F. Jacobs 07-171-US 2841 20306 7590 02/18/2014 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 02/18/2014 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 GREGORY F. JACOBS, WAYNE E. SHAW and MARYANN C. KENNEY __________ Appeal 2013-000636 Application 12/145,166 Technology Center 1700 ___________ Before MARK NAGUMO, KAREN M. HASTINGS, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-000636 Application 12/145,166 2 Appellants1 appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1, 2, 10-12, 14, 15, 18-20, 22, 24, 26-29, and 31-38, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). An oral argument was held on January 30, 2014. A transcript of the hearing will be placed in the record in due course. We AFFIRM-IN-PART. STATEMENT OF THE CASE The subject matter on appeal is directed generally to photovoltaic devices, and more particularly to photovoltaic devices having cover elements controlling the amount of light reaching the photoelectric cells and thus the amount of power generated. Spec. ¶ [0002]. Representative claims 1 and 20 are reproduced below from the Claims Appendix of the Appeal Brief. 1. A photovoltaic device comprising: a photovoltaic element having an active face, an active area on the active face and an operating wavelength range; and a cover element attached to the photovoltaic device and disposed over the active area of the active face of the photovoltaic element, the cover element having an opacity of at least about 90% within the operating wavelength range of the photovoltaic element and is removably attached to the photovoltaic device. 20. A photovoltaic device comprising: a photovoltaic element having an active face, an active area on the active face and an operating wavelength range; and a cover element comprising an electrochromic material disposed over the active area of the active face of the photovoltaic element, wherein the 1 Appellants identify the real party in interest as CertainTeed Corporation. Appeal Brief dated July 16, 2012 (“App. Br.”) at 3. Appeal 2013-000636 Application 12/145,166 3 electrochromic material has at least 25% opacity within the operating wavelength range of the photovoltaic element in the presence of an electric field or in the absence of an electric field. The Examiner maintains the following grounds of rejection:2,3 A. Claims 1-2, 10, 14-15, 18-19, 26, and 31-33 under 35 U.S.C. § 103(a) as unpatentable over Takabayashi4 in view of Hihi,5 Harris,6 Kuznetsov,7 and Lewis;8 B. Claims 11-12 under 35 U.S.C. § 103(a) as unpatentable over Takabayashi, Hihi, Harris, Kuznetsov, and Lewis as applied to claims 1-2, 10, 14- 15, 18-19, 26, and 31-33 above, and in view of Hiraishi.9 C. Claims 27-28 under 35 U.S.C. § 103(a) as unpatentable over Takabayashi, Hihi, Harris, Kuznetsov, and Lewis as applied to claims 1-2, 10, 14- 15, 18-19, 26, and 31-33 above, and in view of Pineda.10 2 Examiner’s Answer mailed August 7, 2012 (“Ans.”). 3 Although the Examiner rejected claims 19 and 26 as indefinite in the Final Office Action mailed November 25, 2011 (“OA”), an Amendment was entered removing the term “substantially,” which was the basis of the rejection of claim 19. No explanation was provided in the Final Rejection or in the Answer of why claim 26 is indefinite. Under these circumstances, we conclude that there is no indefiniteness rejection before us. 4 US 6,093,581, issued to Takabayashi on July 25, 2000. 5 US 2006/0037639 A1, published in the name of Hihi on February 23, 2006. 6 DANIEL C. HARRIS, QUANTITATIVE CHEMICAL ANALYSIS 503 (3d ed. 1991). 7 Vyacheslav N. Kuznetsov & Nick Serpone, Visible Light Absorption by Various Titanium Dioxide Specimens, 110 J. PHYS. CHEM. B 25203-25209 (2006). 8 PETER A. LEWIS, PIGMENT HANDBOOK VOLUME I - PROPERTIES AND ECONOMICS 1-3 (2d ed. 1988). 9 US 6,455,347 B1, issued to Hiraishi et al. on September 24, 2002. 10 US 5,347,768, issued to Pineda on September 20, 1994. Appeal 2013-000636 Application 12/145,166 4 D. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Takabayashi, Hihi, Harris, Kuznetsov, and Lewis as applied to claims 1-2, 10, 14-15, 18-19, 26, and 31-33 above, in view of Wotherspoon.11 E. Claims 20, 22, 24, and 37-38 under 35 U.S.C. § 103(a) as unpatentable over Byker12 in view of Hihi and Harris. F. Claims 34-35 under 35 U.S.C. § 103(a) as unpatentable over Byker in view of Hihi, Harris, and Teowee;13 G. Claim 36 under 35 U.S.C. § 103(a) as unpatentable over Byker in view of Hihi, Harris, and Teowee as applied to claims 34-35, and in view of Heuer.14 ANALYSIS The Appellants’ arguments focus on the “Electrochromic Cover Element Claims”, i.e. independent claims 20 and 34 and their dependent claims, App. Br. 10-13, and the “Removable Substantially Opaque Cover Element Claims”, i.e. independent claims 1 and 33 and their dependent claims. App. Br. 13-15. For purposes of this appeal, to the extent that the claims on appeal are separately argued, we will address them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be asked is “whether 11 US 4,040,211, issued to Wotherspoon on August 9, 1977. 12 US 5,805,330, issued to Byker et al. on September 8, 1998. 13 US 5,604,626, issued to Teowee et al. on February 18, 1997. 14 US 6,157,479, issued to Heuer et al. on December 5, 2000. Appeal 2013-000636 Application 12/145,166 5 the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 417. Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). It is well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in this art would have reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992). Electrochromic Cover Element: Independent Claims 20 and 34 Appellants argue that the rejection of independent claims 20 and 34 in view of Byker in combination with various other references is improper. App. Br. 10- 13. Specifically, Appellants argue that “the Office confuses what is theoretically possible within the broad teachings of Byker with what Byker actually teaches to the person of skill.” Id. at 10. Regarding claim 20, the Examiner finds that Byker discloses a photovoltaic element having an active face, an active area on the active face and an operating wavelength range, and a cover element attached to the photovoltaic device and disposed over the active area of the active face of the photovoltaic element. OA 14. The Examiner further finds that Byker discloses that the electrochromic material has the properties of reducing the amount of light traveling through the medium. Id. The Examiner makes similar findings regarding claim 34 with respect to the electrochromic cover element. Id. at 16-18. The Examiner concludes that it would have been obvious for one of ordinary skill in the art to Appeal 2013-000636 Application 12/145,166 6 adjust the electrochromic material to the desired opacity, including the opacity recited in the present claims. Id. at 15, 18. Appellants argue that the placement of the photovoltaic cells in the chamber 24 in Byker is accomplished by having a seal disposed around the assembly 22 to ensure that there is no contact with the electrochromic media 28. App. Br. 11. Appellants further argue that the lack of an explicit statement in Byker that the electrochromic material cannot be disposed over the photovoltaic cells cannot reasonably be construed as an affirmative statement that the electrochromic material can be disposed over the photovoltaic cells, id. at 12; In re Evanega, 829 F.2d 1110, 1112 (Fed. Cir. 1987). Finally, the Appellants argue that the Examiner has demonstrated no “seal” that would result in the photovoltaic cells being covered by the electrochromic material. App. Br. 12. Appellants submit the Declaration of Gregory F. Jacobs (“Decl.”), stating that if electrochromic material were disposed over the photovoltaic cells, it would occlude the photovoltaic cells as it darkens and limit the darkening power of the windows. Id.; Decl. ¶ 6-8. “Such a configuration,” Jacobs explains, “is in direct opposition to the problem Byker attempts to address (i.e., an efficiently darkening window.)” Decl. ¶ 8. Appellants, relying on the Declaration, contend that the portion of Byker cited by the Examiner (col. 9, ll. 53-59) does not give one of ordinary skill in the art a reason to configure Byker’s device so that the photovoltaic cells operate inefficiently. App. Br. 13. The Examiner responds that Byker discloses that it is possible to place the photovoltaic cells “in the center of the chamber 24” containing the electrochromic material, which means that the electrochromic material is disposed over the photovoltaic cells. Ans. 4; Byker, col. 7, ll. 31-37. The Examiner also responds that nothing in Byker excludes the electrochromic material being disposed over the Appeal 2013-000636 Application 12/145,166 7 photovoltaic cells. Ans. 5. The Examiner finds that Byker’s window can be tinted at all times, whether exposed to light or not, id. at 6; Byker col. 9; and this disclosure that the window is tinted at all times does not render Byker’s device inoperable. Ans. 7. Byker explicitly discloses that photovoltaic cells 22 may be disposed within chamber 24, and that chamber 24 is filled with an electro-optic medium 28. Byker, col. 7, ll. 31-37; col. 6, ll. 21-25. However, this teaching does not result in a configuration in which “a cover element comprising an electrochromic material” is “disposed over the active area of the active face of the photovoltaic element” as required by claim 20 or “disposed over the active face of the photovoltaic element” as required by claim 34. Given the constraints of the Byker disclosure in the record before us, we are not persuaded that one of ordinary skill in the art would have been motivated to position photovoltaic assembly 22 such that the “photovoltaic cells are centered not only with respect to lateral directions of the chamber, i.e. the left and right sides of as well as front and back sides, but also with respect to the top and bottom portions of the chamber,” as the Examiner concluded. Ans. 4. Appellants’ arguments and Jacob’s Declaration successfully rebut the Examiner’s finding that the photovoltaic assembly of Byker could or would be covered by electrochromic material 28, as would be necessary to meet Appellants’ claim limitations. Thus, we reverse the Examiner’s rejection as to claims 20 and 34 and their dependent claims 22, 24, and 35-38. Removable Substantially Opaque Cover Element: Claims 1 and 33 The Examiner finds Takabayashi discloses a photovoltaic device comprising a photovoltaic element having an active face, an active area on the active face and an operating wavelength range, and an adhesive peelable layer formed from a Appeal 2013-000636 Application 12/145,166 8 polymeric material disposed on the photovoltaic device. OA 3-4. The Examiner further finds that with respect to the opacity of at least 90% within the operating wavelength range, Takabayashi discloses a white film, Lewis discloses that titanium dioxide is a common pigment used to attain a white color, and Harris teaches that titanium dioxide has near 100% absorption in the lower end of the visible range. Id at 4. The Examiner concludes: given that Takabayashi discloses the use of films which are white in color, and given that Lewis discloses titanium dioxide as a common white pigment, it would have been obvious to one of ordinary skill in the art to utilize titanium dioxide in the white films disclosed by Takabayashi in order to obtain the desired film opacity. Id. Appellants have failed to direct us to any evidence to the contrary. Appellants contend, generally, that “Takabayashi makes much of the fact that its films are light-transmissive (i.e., transparent or translucent), such that electrical testing can be performed while the adhesive film is in place.” App. Br. 13. Appellants further contend that Examiner must show either that Takabayashi teaches at least about 90% opacity or that the person of ordinary skill in the art would have used a light-transmissive film as disclosed by Takabayashi. Id. at 14. Additionally, Appellants contend, Takabayashi teaches away from the use of an opaque cover element because such an opaque cover element would not allow for testing before removal of the protective film. Id. The Examiner responds that an opacity of at least 90% implies that the presently claimed films have a degree of light transmittance of 10%. Ans. 7. Although the claims recite ‘opacity’ rather than ‘translucency,’ both terms concern the passage of light. Id. at 11. Thus, the Examiner concludes, Takabayashi does not teach away from utilizing opaque films, but rather discloses opaque films. Id. at 12, see also In re Nehrenberg, 280 F.2d 161 (CCPA 1960). Moreover, Appeal 2013-000636 Application 12/145,166 9 Takabayashi does disclose that during electrical testing the coloration of films is varied. Ans. 13; Takabayashi col. 8, ll. 16-25. Takabayashi teaches transparent as well as translucent (i.e. partially opaque) films. Clearly, Takabayashi is concerned with films that are less than 100% transparent. Appellants fail to point to any portion of the record to refute the Examiner’s finding that Takabayashi teaches a white film and leaves open the content and pigment of such a white film. One of ordinary skill in the art would be aware of commonly available white pigments, such as titanium dioxide, and the proper use of such pigments to achieve a desired translucence or opacity. Appellants have not directed us to any evidence or any portions of Takabayashi that indicate otherwise. Accordingly, as we are unpersuaded that the Examiner has reversibly erred in concluding claims 1 and 33 and their dependent claims 2, 10-12, 14, 15, 18, 19, 26-29, 31, and 32 would have been obvious, we will sustain the Examiner’s rejection. Claim 1815 Appellants take issue with the Examiner’s position that Takabayashi discloses a cover layer with a skid- or slip-resistant top surface. App. Br. 15-16. The Examiner responds that Takabayashi’s polyethylene films necessarily have a coefficient of friction, and that Appellants have not defined what is encompassed by slip or skid resistivity, or disclosed a required coefficient of friction for Appellants’ films. Ans. 14. Appellants have not pointed to any portion of the record that would require a particular coefficient of friction different than those 15 We note in passing that claim 18, as presented in the claims appendix, depends from canceled claim 9. App. Br. 18, Claims App’x. We trust this irregularity will be dealt with appropriately. Appeal 2013-000636 Application 12/145,166 10 possessed by Takabayashi’s polyethylene films. We thus find no convincing merit in Appellants’ arguments that Takabayashi would not have suggested the features recited in claim 18. For the reasons expressed in the Answer and above, the weight of the evidence supports the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection of claim 18 is sustained. CONCLUSION The rejection of claims 20 and 34 and their dependent claims 22, 24, and 35- 38 as unpatentable under 35 U.S.C. § 103(a) is reversed. The rejection of claims 1 and 33 and their dependent claims 2, 10-12, 14, 15, 18, 19, 26-29, 31, and 32 as unpatentable under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART bar Copy with citationCopy as parenthetical citation