Ex Parte Temchenko et al

Patent Trial and Appeal Board

Nov 9, 2016

12243259 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/243,259 10/01/2008
13181 7590 11/14/2016
Madico, Inc.
Finch & Maloney
50 Commercial St., Suite 300
Manchester, NH 03101
FIRST NAMED INVENTOR
Marina Temchenko
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.
MA05.732CIP 9950
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
11/14/2016 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):
docketing@finchmaloney.com
sfinch@finchmaloney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARINA TEMCHENKO,
DAVID WILLIAM AVISON, FRANK ANTHONY MANNARINO,
SAMUEL LIM, and SHOGO SUGIURA
Appeal2015-004759
Application 12/243,259
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and
BRIAND. RANGE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner (1) finally rejected claims 1-11 of Application
12/243,259 under 35 U.S.C. § 103(a) as obvious, (2) rejected claims 1 and 2
for obviousness-type double patenting (OTDP), and (3) provisionally
rejected claims 1-11 for OTDP. Final Act. (March 18, 2014). Appellants 1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Madico, Inc. is identified as the real party in interest. Appeal Br. 3.
Appeal2015-004759
Application 12/243,259
BACKGROUND
The '259 Application relates to protective backing sheets for
photovoltaic modules. Spec. i-f 2.
Claim 1 is representative of the '259 Application's claims and is
reproduced below:
1. A backing sheet for a photovoltaic module comprising:
a substrate; and
a layer comprising fluoropolymer cured on the substrate,
wherein the layer comprising fluoropolymer includes a
hydrophobic silica.
Appeal Br. 16 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, and 5-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Higuchi2 and Ying.3 Final
Act. 3.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Higuchi, Ying, and Rautschek. 4 Final Act. 6.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Higuchi, Ying, and Debergalis. 5 Final Act. 7.
2 WO 2007/010706 Al, published January 25, 2007. We cite EP 1 938 967
Al as the English-language equivalent.
3 US 6,194,098 Bl, issued February 27, 2001.
4 US 2006/0020082 Al, published January 26, 2006.
5 US 2007/0154704 Al, published July 5, 2007.
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4. Claims 1 and 2 are rejected on the ground of obviousness-type
double patenting as unpatentable over the combination of claims
1-12 of Kemander '7076 and Ying. Final Act. 9.
5. Claims 1 and 2 are rejected on the ground of OTDP as
unpatentable over the combination of claims 1--4 of Kemander
'0837 and Ying. Final Act. 10.
6. Claims 1-11 are provisionally rejected on the ground of OTDP as
unpatentable over the combination of claims 1-5, 7, 9, 33-37, and
39--44 of the '962 Application. 8 Final Act. 10.
7. Claims 1 and 2 are provisionally rejected the ground of OTDP as
unpatentable over the combination of claims 24--27 of the '120
Application9 and Ying. Final Act. 11.
8. Claims 1 and 6-11 are provisionally rejected on the ground of
OTDP as unpatentable over the combination of claims 1-3, 5-7,
and 9-14 of the '893 Application10 and Ying. Final Act. 12.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, and 5-11 as
unpatentable over the combination of Higuchi and Ying. Final Act. 3.
Because the Examiner's rejection is based upon several erroneous factual
findings, we reverse.
6 US 7,338,707 B2, issued March 4, 2008.
7 US 7 ,579 ,083 B2, issued August 25, 2009.
8 US Application 12/011,962, filed January 30, 2008.
9 US Application 12/504,120, filed July 16, 2009.
10 US Application 12/977,893, filed December 23, 2010.
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Application 12/243,259
First, the Examiner erred in finding that Ying is analogous art to
Higuchi. A reference may only be used as part of a § 103 rejection if it is
either (1) in the field of the inventors' endeavor or (2) reasonably pertinent
to the particular problem with which the inventors were concerned. In re
Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
Here, the Examiner found that Ying is in the field of Appellants'
endeavor:
First of all, Higuchi and Ying and are in the same field of
Appellant's endeavor. Appellant's claimed invention is
directed toward a polymeric sheet used as a protective layer.
Applicant's field of endeavor is not a photovoltaic cell. The
claims recite the intended use of the polymeric sheet in the solar
cell, but there is no structural limitation of the solar cell.
Higuchi teaches a polymeric sheet used as a protective layer for
the solar cell. Ying teaches adding pigment to a polymeric
protective layer with adding pigment being explicitly suggested
by Higuchi. The field of endeavor in Higuchi and Ying are
polymeric protective layer which is the same as Appellant's
field of endeavor. Secondly, Higuchi and Ying both are
concerned about increasing mechanical strength of a polymeric
protective layer which is also concerned by Appellant.
Lowering water vapor transmission rate correlates to the
increase in mechanical strength of the polymeric protective
layer (see paragraph 0003 of Higuchi). It is noted that the
polymeric protective layer of Ying coats the surface of a porous
layer so that only limited soluble material can pass through the
pores as intended, but not through the solid portion of
polymeric protective layer which functions as a protection.
Answer 4 (emphasis added).
The Examiner erred by finding that Appellants' field of endeavor is
polymeric sheet materials used as protective layers. The Examiner
mistakenly defined the field of endeavor solely by considering the '259
Application's claims. See Answer 4. An application's specification must be
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Application 12/243,259
considered in making this determination. In re Mettke, 570 F.3d 1356, 1359
(Fed. Cir. 2009). In this case, a review of the '259 Application's
Specification reveals that Appellants' field of endeavor is photovoltaic
modules. Spec. i-f 2.
The Examiner also erred by finding that Ying is reasonably pertinent
to the problem which concerned the inventors. Answer. 4. As demonstrated
by a review of the '259 Application's Specification, Appellants were
concerned with providing a protective backing sheet with desirable weather
resistance, heat resistance, color retention, adhesion between layers and
encapsulant, and scratch resistance. Spec. i-f 10. Ying, on the other hand,
was concerned with separators for electrochemical cells. Abstract. Because
such separators are located inside the cell, Ying would not have been
concerned with the weather resistance or color retention of the sheet material
used in the separators. Indeed, the separators used in electrochemical cells
typically are porous. See Ying col. 1, 11. 42-59.
The Examiner further erred by finding that a "[l]ower[] water vapor
transmission rate correlates to the increase in the mechanical strength of the
polymeric protective layer (see paragraph 0003 of Higuchi)." Answer 4.
The cited portion of Higuchi does not support the Examiner's assertion.
Rather, it states that the backing sheet of a photovoltaic cell serves two
purposes: increasing the cell's mechanical strength and preventing water
vapor permeation. Higuchi i-f 3.
Second, even if Ying were analogous art that could be used in an
obviousness rejection of the '259 Application's claims, the Examiner erred
by failing to provide sufficient reasoning to support a finding that a person
of ordinary skill in the art would have had a reason to combine Higuchi and
Ying. In re Kahn, 441 F .3d at 988 ("[R ]ejections on obviousness grounds
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Application 12/243,259
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.").
In particular, the Examiner found that Higuchi describes the addition
of pigments to the fluoropolymer layer of its backing sheet for a
photovoltaic module. Final Act. 3 (citing Higuchi i-fi-1 46, 49). Higuchi,
however, does not describe using hydrophobic silica as a pigment that can be
used. Id. The Examiner then turns to Ying, which identifies hydrophobic
silica as a pigment that can be added to the protective layer of its separator
sheet. Id. at 3--4 (citing Ying, col. 20, 11. 4--19).
According to the Examiner:
It would have been obvious to one skilled in the art at the
time the invention was made to modify the backing sheet of
Higuchi et al. by adding a pigment such as hydrophobic silica
taught by Ying et al. to the fluoropolymer layer, because
Higuchi et al. explicitly suggests adding a pigment to the
fluoropolymer layer and Ying et al. teaches adding the pigment
such as hydrophobic silica would obtain a desired mechanical
strength or some other improvement in the properties of the
protective layer (see col. 20 lines 4--19 of Ying et al.).
Final Act. 4.
This argument is insufficient to support the combination of Higuchi
and Ying. Higuchi includes pigments on a list of additives that can be
blended into the coating composition containing a fluorine-containing
polymer. Higuchi i1 46. Higuchi, however, explains why a pigment should
be added: "It is strongly desired to add a pigment from the viewpoint of
making appearance of a solar cell module beautiful." Id. i1 49. On the other
hand, Ying contains a general statement that the addition of a pigment may
increase mechanical strength or some other improvement in the properties of
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the protective coating layer of its battery electrode separator. The battery
electrode separator is sandwiched between the electrodes of an
electrochemical cell. The Examiner has not adequately explained why a
person having ordinary skill in the art looking to improve the appearance of
a solar cell module would have turned to a reference describing an internal
component of an electrochemical cell which has no effect on the appearance
of the electrochemical cell as a whole. Thus, the Examiner erred in finding
that a person having ordinary skill in the art would have had a reason to
combine Higuchi and Ying.
In view of the erroneous factual findings discussed above, 11 we
reverse the rejection of claims 1, 2, and 5-11 of the '259 Application as
unpatentable over the combination of Higuchi and Ying.
Rejections 2 and 3. These rejections depend upon the Examiner's
factual findings regarding Ying. See Final Act. 6-8. As discussed above,
several of these findings are erroneous. Thus, the record before us mandates
reversal.
Rejections 4 and 5. These OTDP rejections depend upon the
Examiner's factual findings regarding Ying. See Final Act. 9-10. As
discussed above, several of these findings are erroneous. Thus, the record
before us mandates reversal.
Rejection 6. The Examiner provisionally rejected claims 1-11 for
OTDP over claims 1-5, 7, 9, 33-37, and 39--44 ofthe'962 Application.
11 Because the Examiner's conclusion that claims 1, 2, and 5-11 of the '259
Application are prima facie obvious over the combination of Higuchi and
Ying is based upon erroneous findings of fact, we do not express any
opinion regarding whether Appellants' allegedly unexpected results are
sufficient to overcome a prima facie case of obviousness.
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Final Act. 10-11. The '962 Application was abandoned as of September 13,
2016. Thus, this rejection is moot.
Rejection 7. The Examiner provisionally rejected claims 1 and 2 for
OTDP as unpatentable over the combination of claims 24--27 of the '120
Application and Ying. Final Act. 11. On March 8, 2011, the '120
Application issued as US 7,901,779 B2 ("Kemander '779"). Because the
'120 Application has issued as Kemander '779, this rejection no longer is
provisional. Claims 24--27 of the '120 Application have been renumbered as
claims 1--4 in Kemander '779. See' 120 Application Prosecution History,
Index of Claims (December 21, 2010).
Our review of the respective prosecution histories reveals that neither
claims 1and2 of the '259 Application nor claims 24--27 of the '120
Application (now claims 1--4 of Kemander '779) have been substantively
amended since the Examiner first entered this rejection in the January 19,
2011 Non-Final Office Action.
In view of the foregoing, we consider whether the Examiner erred in
rejecting claims 1 and 2 of the '259 Application for OTDP over the
combination of claims 1--4 of Kemander '779 and Ying.
This OTDP rejection is based, in large part, upon the Examiner's
findings of fact concerning Ying. As discussed above, we have determined
that several of these factual findings are erroneous. Accordingly, we cannot
sustain this OTDP rejection of claims 1 and 2 on the record before us.
Rejection 8. The Examiner provisionally rejected claims 1 and 6-11
for OTDP as unpatentable over the combination of claims 1-3, 5-7, and 9-
14 of the '893 Application and Ying. Final Act. 12. The '893 Application
was abandoned as of September 25, 2015. Thus, this rejection is moot.
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CONCLUSION
For the reasons set forth above, we reverse (1) the rejection of claims
1, 2, and 5-11 as unpatentable over the combination of Higuchi and Ying,
(2) the rejection of claim 3 as unpatentable over the combination Higuchi,
Ying, (3) the rejection of claim 4 as unpatentable over the combination of
Higuchi, Ying, and Debergalis, and ( 4) the OTDP rejections of claims 1 and
2 over the combination of Ying and various claims of Kemander '083,
Kemander '707, or Kemander '779.
The provisional OTDP rejections (a) of claims 1-11 as unpatentable
over certain claims of the '962 Application and (b) of claims 1 and 6-11 as
unpatentable over the combination of certain claims of the' 893 Application
and Ying are moot.
REVERSED
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