Ex Parte Seery et al

Patent Trial and Appeal Board

Nov 29, 2016

13788829 (P.T.A.B. Nov. 29, 2016)

United States Patent and Trademark Office
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.
13/788,829 03/07/2013 Martin Seery 361421.00301 3338
58076 7590 12/01/2016
RFFD SMTTH T T P
EXAMINER
101 Second Street NGUYEN, CHI Q
Suite 1800
SAN FRANCISCO, CA 94105 ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
ipdocket-chi @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN SEERY and ROBERT H. J. MIROS
Appeal 2015-0037031
Application 13/788,8292
Technology Center 3600
Before ROBERT L. KINDER, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 30-40. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed Sept. 15,
2014) and the Examiner’s Answer (“Ans.,” mailed Dec. 1, 2014) and Final
Office Action (“Final Act.,” mailed Nov. 18, 2013).
2 Appellants identify SunLink Corp. as the real party in interest. Br. 1.
Appeal 2015-003703
Application 13/788,829
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to a system for
mounting and installing photovoltaic solar panels, and more particularly, to a
mounting support system that can support photovoltaic solar panels
manufactured by different vendors.” Spec. 1,11. 6—8.
Claims 30 and 37 are the independent claims on appeal. Claim 30,
reproduced below, is illustrative:
30. A mounting clamp for solar panels comprising:
a top section comprising:
at least one elongated slot for aligning with a
mounting hole on a solar panel; and
a spacer fin configured to provide a fixed gap
between adjacent solar panels;
a rear section; and
mounting hardware to attach the top and rear sections
together around a support member.
REJECTIONS
Claims 30-34 and 36—39 are rejected under 35 U.S.C. § 102(b) as
anticipated by Button (US 2,550,001, iss. Apr. 24, 1951).
Claims 35 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Button.
ANALYSIS
Anticipation
Independent Claims 30 and 37, and Dependent Claims 31—34, 36, 38, and
39
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 30 and 37 under 35 U.S.C. § 102(b) because
Button does not disclose “a spacer fin configured to provide a fixed gap
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Appeal 2015-003703
Application 13/788,829
between the adjacent solar panels,” as recited in claim 30, and similarly
recited in claim 37. Br. 6. The Examiner cites element 33 of Button as
disclosing the argued spacer fin. Final Act. 2—3.
Button relates to improvements in adjustable clamps adapted to be
secured to standpipes of various diameters. Button, col. 1,11. 1—5. With
reference to Figure 1 of Button, the clamp includes bracket 20, resilient strap
21, cylindrical nuts 23, and screw bolts 24. Id. at col. 1,11. 51—58. Bracket
20 is shaped out of a single piece of metal which is bent and reversely bent
to form a central channel 26 and outer channels 27 and 28. Id. at col. 2,
11. 6—9, Fig. 1. Bracket 20 is strengthened by providing outer channels 27
and 28 with reversely bent upstanding lips or flanges 32 and 33. Id. at
col. 3,11. 3-6.
The Examiner finds that Button’s lip 33 is “capable of fixing a gap
between two solar panels when each of the solar panels is positioned on each
side of the spacer fin,” and, thus, constitutes a spacer fin. Ans. 2. As used in
this application, the claim language “configured to” requires a structure that
is made to perform the function — i.e., to provide a fixed gap between the
adjacent solar panels. See In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir.
2014). But we find nothing in Button that discloses that lip 33 constitutes or
is made to be “a spacer fin configured to provide a fixed gap between
adjacent solar panels,” as recited in claims 30 and 37.
In view of the foregoing, we do not sustain the rejection of claims 30
and 37 under 35 U.S.C. § 102(b). For the same reasons, we also do not
sustain the rejection of claims 31—34, 36, 38, and 39, which depend
therefrom.
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Appeal 2015-003703
Application 13/788,829
Obviousness
Dependent Claims 35 and 40
Claims 35 and 40 depend from independent claims 30 and 37,
respectively. We are persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 30 and 37 under 35 U.S.C. § 102(b) as
anticipated by Button. Further, the Examiner does not persuasively establish
that it would have been obvious to modify the prior art system (Button’s lip
33) to arrive at the claimed system. We do not sustain the Examiner’s
rejection of claims 35 and 40 under 35 U.S.C. § 103(a) as unpatentable over
Button for substantially the same reasons.
DECISION
The Examiner’s rejection of claims 30-34 and 36—39 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner’s rejection of claims 35 and 40 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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