Ex Parte Jacobs et al

Patent Trial and Appeal Board

Feb 18, 2014

12145166 (P.T.A.B. Feb. 18, 2014)

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

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Application 12/145,166

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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.
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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.
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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.
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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
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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
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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
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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,
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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.
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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

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