SOUTHERN TAIWAN UNIVERSITY OF SCIENCE AND TECHNOLOGY

Patent Trials and Appeals Board

Dec 10, 2020

2019006109 (P.T.A.B. Dec. 10, 2020)

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.
14/272,819 05/08/2014 RUEI-TANG CHEN MR957-2754 1006
4586 7590 12/10/2020
ROSENBERG, KLEIN & LEE
3458 ELLICOTT CENTER DRIVE-SUITE 101
ELLICOTT CITY, MD 21043
EXAMINER
AYAD, TAMIR
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
ptoactions@rklpatlaw.com
ptoactions@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUEI-TANG CHEN, CHONG-YOU LIAO, HONG-MING SYU,
and LIEN-YI WANG1
____________

Appeal 2019-006109
Application 14/272,819
Technology Center 1700
____________

Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4–6, and 9–11. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to solar modules having uniform
light transmission. E.g., Spec. 1:4–10; Claim 1. The Specification discloses
that such modules may be useful when used on, for example, the roof of a

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Southern Taiwan University of Science and Technology. Appeal Br. 1.
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greenhouse, because the module generates power but still allows sunlight
into the greenhouse. Id. at 1:4–10, 21–23. Claim 1 is reproduced below
from page 37 (Claims Appendix) of the Appeal Brief:
1. A solar module having uniform transmitted light mounted to a
roof portion of a greenhouse, comprising:
a transparent substrate formed by a transparent plastic film as a
bottom-most layer of the solar module;
a diffusion film disposed on the transparent substrate;
at least one solar chip disposed on the diffusion film, an area of
the solar module corresponding to the at least one solar chip
defining an opaque region thereof that produces a shaded area of
the solar module corresponding to portions of the diffusion film
and substrate disposed beneath the at least one solar chip, the
solar module having a light transmittable region surrounding the
opaque region, wherein the light transmittable region accounts
for 5% to 70% of the area of the solar module;
a transparent cover plate covered on the at least one solar chip,
wherein the transparent cover plate is an ironless glass having a
thickness less than 1 mm; and
a hot melt adhesive film joining the at least one solar chip and
the transparent cover plate;
wherein the diffusion film at the light transmittable region is
aligned with a bottom portion of the at least one solar chip and
the light transmittable region has a transmittance ranging from
20% to 99%, and the diffusion film scatters sunlight travelling
through the light transmittable region to the shaded area of the
solar module to generate light transmitted through the
transparent substrate that is uniform with respect to both the light
transmittable region and the shaded area.
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REJECTIONS ON APPEAL2
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1, 2, 4, 6, 9, and 10 over Ricaud (US 5,254,179, issued
Oct. 19, 1993), Hunter (US 2007/0227573 A1, published Oct. 4, 2007),
Kalkanoglu (US 2008/0006323 A1, published Jan. 10, 2008), Chuang
(US 8,186,100 B2, issued May 29, 2012), and Kalejs (US 2009/0178704 A1,
published July 16, 2009). Ans. 10–11.
2. Claim 5 over Ricaud, Hunter, Kalkanoglu, Chuang, and Chu (US
2010/0215931 A1, published Aug. 26, 2010). Ans. 8.
3. Claims 6 and 9 over Ricaud, Hunter, Kalkanoglu, Chuang, and
Kalejs. Ans. 9.
4. Claim 11 over Ricaud, Hunter, Kalkanoglu, Chuang, and Seligman
(US 8,026,637 B2, published Sept. 27, 2011). Ans. 10.
5. Claims 1, 2, 4, and 10 over Ricaud, Hunter, Kalkanoglu, and
Chuang. Ans. 3.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in Rejections 1, 2, and 4, which
encompass all of the claims on appeal. We affirm those rejections for

2 What we have listed as Rejection 1 is a New Ground of Rejection in the
Examiner’s Answer. See Ans. 10–11. Rejection 1 differs from what we
have listed as Rejection 5 only in that Rejection 1 adds the Kalejs reference
to provide further support for the Examiner’s findings as to one claim
limitation. Because the Examiner’s addition of Kalejs results in a more
comprehensive basis for rejection, we have listed the ground that includes
Kalejs as Rejection 1.
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reasons set forth below, in the Non-Final Action dated August 21, 2017
(“Office Act.”), and in the Examiner’s Answer. See generally Office
Act. 2–11; Ans. 3–13. We decline to address Rejections 3 and 5 for reasons
set forth below.
Rejection 1
The Appellant argues the claims as a group. We select claim 1 as
representative, and the remaining claims subject to Rejection 1 will stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s rejection of claim 1 appears at pages 10–14 of the
Answer. Of particular relevance to the Appellant’s arguments concerning
this rejection, the Examiner finds that Ricaud’s “protective insulating layer
15” corresponds to the claimed diffusion film. Ans. 11 (citing Ricaud at
4:58; Fig. 5 (element 15)). The Examiner finds that Ricaud “does not
explicitly disclose that the protective insulating layer [15]” scatters sunlight
to generate light that is “uniform with respect to both the light transmittable
region and the shaded area,” as recited by claim 1. Ans. 13–14. The
Examiner finds, however, that Kalejs discloses a similar solar module with a
diffusion film made of materials that are the same as materials disclosed by
the Appellant as suitable for carrying out the light scattering function recited
by claim 1. Id. at 14 (citing Kalejs ¶ 136 for its disclosure of ethyl vinyl
acetate (EVA) with light scattering particles). The Examiner determines that
it would have been obvious to use EVA with light scattering particles, as
taught by Kalejs, as the material of layer 15 of Ricaud, “because as taught by
Kalejs, any light scattered . . . will be redirected toward an adjacent solar
cell.” Ans. 14.
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As to the requirement of claim 1 that the “transparent cover plate” be
made of “ironless glass having a thickness less than 1 mm,” the Examiner
finds that Ricaud discloses a transparent glass cover plate but does not
specify that it is ironless glass having a thickness less than 1 mm. Ans. 11.
The Examiner finds, however, that Hunter discloses a similar solar module
having a transparent cover plate made of ironless glass with a thickness less
than 1 mm. Id. The Examiner determines that it would have been obvious
to use Hunter’s cover plate in the solar module of Ricaud “because as taught
by Hunter, the cover plate has adequate hail resistance and optimum
transmissivity.” Id. at 12.
In view of those and other findings less relevant to the arguments
raised by the Appellant in this appeal, the Examiner concludes that the
subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art.
The Appellant first argues that “Ricaud clearly fails to teach the
transmission of light in a uniform fashion.” Appeal Br. 12; Reply Br. 13.
That argument is unpersuasive because the Examiner relies on the
combination of Ricaud and Kalejs—not Ricaud alone—as yielding a layer
structure that would transmit light in a way that falls within the scope of
claim 1. See Ans. 14; see also In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
The Appellant also argues that Kalejs’ light scattering film “is a
reflective film which redirects the incident light from the surface of the
reflective film 132, but does not permit the light to scatter within its body.”
Reply Br. 22.
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That argument is not persuasive for at least two reasons. First, the
Examiner finds that, because the material of Kalejs is the same as a material
disclosed by the Appellant as suitable for carrying out its light scattering
function, the material of Kalejs would naturally result in a film that performs
the recited light scattering function. See Ans. 14 (“[W]hen the structure
recited in the reference is substantially identical to that of the claims,
claimed properties or functions are presumed to be inherent.”); compare
Kalejs ¶ 136 (disclosing ethyl vinyl acetate with scattering particles), with
Appeal Br. 39 (claim 6) (reciting a diffusion film made from polyethylene
vinyl acetate resin with scattering particles). The Appellant fails to address
that rationale or otherwise show error in it. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”).
Second, the Appellant’s argument that Kalejs’s film “does not permit
the light to scatter within its body” is attorney argument unsupported by any
citations to Kalejs or other evidence of record. See Reply 21–22; see also In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Kalejs describes its film 132 as “a
light scattering film.” E.g., Kalejs ¶ 119. Particularly in view of the fact
that the Appellant does not persuasively dispute the Examiner’s finding that
Kalejs discloses a material (EVA with scattering particles) equivalent to a
material recited by the Appellant’s Specification as suitable for carrying out
the light scattering function, the Appellant’s unsupported argument that
Kalejs’s material does not scatter light in a way that falls within the scope of
claim 1 is not persuasive. See Jung, 637 F.3d at 1365.
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The Appellant also argues that “Hunter does NOT use an ironless
glass,” and that Hunter’s cover plate is “made of a highly reflective
material.” Appeal Br. 17; Reply Br. 18.
That argument is not persuasive because, as the Examiner explains,
see Ans. 23–24, Hunter explicitly discloses the use of “clear iron free” glass
“with a minimum of reflectance.” See Hunter ¶ 51. The Appellant fails to
address those disclosures in Hunter.
The Appellant also raises various arguments attacking the references
individually. E.g., Appeal Br. 17 (arguing that Ricaud does not teach a hot
melt adhesive), 18 (arguing that Kalkanoglu fails to disclose certain claim
limitations), 19 (arguing that Chuang’s layer structure is not the same as the
claimed layer structure).
Those arguments are not persuasive because, as explained above, “one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.” See Keller,
642 F.2d at 426.
We have carefully considered each of the Appellant’s arguments, but
we are not persuaded of reversible error in the Examiner’s rejection. See
Jung, 637 F.3d at 1365.
Rejections 2 and 4
The Appellant argues that the Examiner’s additional reliance on Chu
(Rejection 2) and Seligman (Rejection 4) “fails to remedy” the alleged
deficiencies in Rejection 1, discussed above. See Appeal Br. 24, 29; Reply
Br. 31, 34. Because we are not persuaded by the Appellant’s arguments
concerning Rejection 1, and the Appellant raises no distinct arguments as to
Rejections 2 and 4, we affirm Rejections 2 and 4.
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Rejection 3
Rejection 3 concerns claims 6 and 9, and it involves the same prior art
as Rejection 1. Compare Ans. 10–11 (Rejection 1), with Ans. 9
(Rejection 3). Rejection 3 appears to be redundant of Rejection 1, which
also addresses claims 6 and 9. Compare Ans. 14–15 (addressing claims 6
and 9 in the context of Rejection 1), with Ans. 9 (addressing claims 6 and 9
in the context of Rejection 3). Because we affirm the Examiner’s rejection
of claims 6 and 9 in the context of Rejection 1 above, we decline to
separately address Rejection 3.
Rejection 5
Rejection 5 is similar to Rejection 1 but fails to include the Kalejs
reference and does not encompass claims 6 and 9. Because Rejection 1
encompasses all of the claims and all of the prior art references subject to
Rejection 5, and we affirm Rejection 1 above, we decline to separately
address Rejection 5.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
1, 2, 4, 6,
9, 10 103
Ricaud, Hunter,
Kalkanoglu, Chuang,
Kalejs
1, 2, 4, 6,
9, 10
5 103 Ricaud, Hunter, Kalkanoglu, Chuang, Chu 5
6, 9 103
Ricaud, Hunter,
Kalkanoglu, Chuang,
Kalejs

11 103 Ricaud, Hunter, Kalkanoglu, Chuang, 11
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Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
Seligman
1, 2, 4, 10 103 Ricaud, Hunter, Kalkanoglu, Chuang
Overall
Outcome
1, 2, 4–6,
9–11
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED