Ex Parte Reilly et alDownload PDFPatent Trials and Appeals BoardApr 22, 201913932721 - (D) (P.T.A.B. Apr. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/932,721 07/01/2013 26875 7590 04/24/2019 WOOD, HERRON & EV ANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 FIRST NAMED INVENTOR Richard T. Reilly 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. ROUGH-15US 8823 EXAMINER GONZALEZ RAMOS, MA YLA ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 04/24/2019 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 communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte RICHARDT. REILLY and WILLIAM L. VIETAS Appeal2018-007239 Application 13/932, 721 Technology Center 1700 Before JEFFREY B. ROBERTSON, BRIAND. RANGE, and MICHAEL G. McMANUS, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-9, 12, and 13. (Appeal Br. 1.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 This Decision includes citations to the following documents: Specification filed July 1, 2013 ("Spec."); Final Office Action dated December 1, 2016 ("Final Act."); Appeal Brief filed September 1, 2017 ("Appeal Br."); Examiner's Answer dated May 10, 2018 ("Ans."); and Reply Brief filed July 6, 2018 ("Reply Br."). 2 Appellant is the Applicant, RBI Solar, Inc., which is identified as the real party in interest. (Appeal Br. 1.) Appeal2018-007239 Application 13/932, 721 THE INVENTION Appellant states that the invention relates to a solar mounting system and more particularly, to grounding of solar panels that are mounted using the solar mounting system. (Spec. ,r 1.) Claim 1 is representative and reproduced below from the Claims Appendix to the Appeal Brief ( with emphases added to highlight disputed claim terms): 1. A solar mounting system, comprising: at least one solar panel including at least one photovoltaic cell and a panel frame manufactured from a conductive material and supporting the at least one photovoltaic cell; and a support structure including a plurality of support members configured to support the at least one solar panel above a base surface and at least one elongated support rail supported by at least one of the plurality of support members and including a grounding structure defining a raised edge formed from material of the at least one elongated support rail, wherein the at least one elongated support rail includes a first supporting surface extending along a plane, with the at least one elongated support rail defining a thickness at the first supporting surface, and the raised edge projects outwardly from the first supporting surface of the at least one elongated support rail such that the raised edge extends in a direction perpendicular to the plane an additional height above the thickness of the at least one elongated support rail and towards the at least one solar panel, wherein when the at least one solar panel is secured with the at least one elongated support rail with the panel frame abutting the first supporting surface, the raised edge of the grounding structure on the at least one elongated support rail embeds into the panel frame as a result of projecting the additional height above the 2 Appeal2018-007239 Application 13/932, 721 thickness of the at least one elongated support rail, thereby to provide direct electrical contact with the conductive material of the panel frame to ground the at least one solar panel. (Appeal Br. 12, Claims Appendix.) REJECTIONS The Examiner rejected claims 1, 2, 4--6, 8, 9, 12, and 13 under 35 U.S.C. § 103 as obvious over Poivet (US 2014/0041321 Al, published on February 13, 2014), O'Brien et al. (US 2012/0275066 Al, published on November 1, 2012, "O'Brien"), and DeLiddo et al. (US 2012/0266400 Al, published on October 29, 2009, "DeLiddo"). The Examiner rejected claim 7 under 35 U.S.C. § 103 as obvious over Poivet, O'Brien, DeLiddo, and Berry et al. (US 2013/0146554 Al, published on June 13, 2013, "Berry"). We limit our discussion largely to claim 1, which is sufficient to dispose of this appeal. ISSUE The Examiner found, inter alia, that Poi vet in view of DeLiddo disclose a solar mounting system as recited in claim 1 with the exception of a grounding structure defining a raised edge formed from a material of at least one elongated support rail. (Ans. 5-8.) The Examiner found that O'Brien discloses a grounding system for photovoltaic arrays, where the grounding structure in the form of grounding clip 14 defines a raised edge (serrated portion 50). (Ans. 8-9; O'Brien, Figs. 1, 5-9.) The Examiner determined that it would have been obvious to one of ordinary skill in the art 3 Appeal2018-007239 Application 13/932, 721 to have modified the mounting system of Poi vet to include a raised edge as disclosed in O'Brien in order to provide a suitable path for electrical current to ground the solar panels. (Ans. 9.) Appellant argues that neither Poi vet nor O'Brien provides a suggestion to perform the grounding function without requiring a separate insert or component, such as a star washer, a clip, or a clamp. (Appeal Br. 1-2.) Appellant argues that there is no indication in the art of record that would suggest incorporation of raised edges as grounding structures in the elongated support rails themselves. (Id.) Accordingly, the dispositive issue on appeal is: Has Appellant identified reversible error in the Examiner's position that it would have been obvious to incorporate the raised edge in the form of the serrated portion of the grounding clip disclosed in O'Brien into the elongated support rail of Poi vet? OPINION Rejection 1 We are persuaded by Appellant's arguments that sufficient reasoning is lacking for incorporating the serrated portion 50 of the clip 14 disclosed in O'Brien into the elongated support rail of Poivet. In particular, the Examiner's position is the longitudinal supporting component (LSC) of Poivet can have the function of electrical conductor to provide electrical grounding. (Ans. 20, citing Poivet ,r,r 156, 589.) The Examiner acknowledged that Poivet discloses a clamp to achieve electrical grounding, but found that Poivet is not limited to providing grounding through a clamp in view of the teaching that the LSC can provide grounding. (Id.) The 4 Appeal2018-007239 Application 13/932, 721 Examiner further stated that because Poivet is silent as to how the conductive LSC achieves grounding, it would have been obvious to have included the raised edge of O'Brien in the LSC to create an electrical path to provide grounding. (Id. at 20-21.) However, Poivet discloses only that the "LSC can have the function of electrical conductor (for example to form the electrical grounding)." (Poivet ,r 156.) Poivet discloses that the "LSC supports panels, for example attached by a clamp ... provide electrical grounding through the LSC." (Poivet ,r 589.) In view of these disclosures, we agree with Appellant that Poi vet's disclosure with respect to the LSC indicates that the LSC is part of the grounding path, which would still require the presence of a separate piece in the form of a clamp. (Reply Br. 2-3.) We do not subscribe to the Examiner's position that Poivet as a whole discloses different embodiments for providing grounding capabilities through the LSC alone. Likewise, 0 'Brien discloses a grounding clip as a replacement for the use of the conventional star washer, screw, and nut combinations, which is again, in the form of a separate piece. (O'Brien, ,r,r 5, 7, 26, 30, 35; Figs. 1, 5-9.) Therefore, in view of Poivet's disclosure of a clamp, and O'Brien's disclosure of a grounding clip, we are of the view that the Examiner has not provided sufficient reasoning to incorporate only the serrated portion from the grounding clip of O'Brien into the LSC of Poivet. Accordingly, we reverse the Examiner's decision to reject claim 1, and claims 2, 4---6, 8, and 9 dependent therefrom. Independent claim 12 also recites "a grounding structure defining a raised edge formed from material of the first supporting surface." Thus, we reverse the Examiner's rejection of claim 12, as well as the Examiner's 5 Appeal2018-007239 Application 13/932, 721 rejection of claim 13, dependent therefrom, for the same reasons as discussed above for claim 1. Accordingly, we reverse the Examiner's rejection of claims 1, 2, 4---6, 8, 9, 12, and 13. Rejection 2 Claim 7, the subject of Rejection 2, depends indirectly from claim 1. The Examiner's additional citation to Berry does not remedy the deficiencies identified above with respect to claim 1. Accordingly, we reverse the Examiner's decision to reject claim 7 for the same reasons as discussed above for claim 1. DECISION We reverse the Examiner's decision rejecting claims 1, 2, 4--9, 12, and 13. REVERSED 6 Copy with citationCopy as parenthetical citation