Anthony Charles. Martin et al.

Patent Trials and Appeals Board

Jun 12, 2020

2019002291 (P.T.A.B. Jun. 12, 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.
14/833,709 08/24/2015 Anthony Charles Martin EE057CON 6720
54698 7590 06/12/2020
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
WHITE, SADIE
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
06/12/2020 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY CHARLES MARTIN, MARTIN FORNAGE, and
HO GENE CHOI1
____________

Appeal 2019-002291
Application 14/833,709
Technology Center 1700
____________

Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM IN PART.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we also enter a
NEW GROUND OF REJECTION of claims 1–20 under 35 U.S.C. § 112,
¶ 2.

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
Enphase Energy, Inc. Appeal Br. 3.
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BACKGROUND
The subject matter on appeal relates to systems and apparatuses for
flexibly mounting a power conversion module to a photovoltaic (PV)
module. E.g., Spec. ¶ 2; Claims 1, 10. Claim 1 is reproduced below from
page 14 (Claims Appendix) of the Appeal Brief:
1. An apparatus for flexibly mounting a power conversion module
to a photovoltaic (PV) module, comprising:
a plurality of distributed mounting points that, when adhered to
a face of the PV module and coupled to the power conversion
module, mechanically couple the power conversion module to
the PV module by flexibly retaining the power conversion
module such that the PV module is able to flex without
subjecting the power conversion module to stress from flexure
of the PV module.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1, 2, 7, 10, 11, 17, and 20 under 35 U.S.C. § 102(a) as
anticipated by Fornage (US 2010/0263704 A1, published Oct. 21, 2010).
2. Claims 1–6, 8, 10–16, 18, and 20 under 35 U.S.C. § 102(b) as
anticipated by Toyomura (US 6,066,797, issued May 23, 2000).
3. Claims 8, 9, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Fornage.
4. Claims 1, 2, 4, 5, 7, 10, 11, 14–16, and 17 for nonstatutory double
patenting over claims 1–4, 10–13, 17, 18, and 20 of Martin (US 9,118,273
B2, issued Aug. 25, 2015).
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ANALYSIS
Rejections 1–3
The primary point of dispute between the Examiner and the Appellant
as to Rejections 1–3 is whether the prior art teaches “mounting points”
within the scope of the claims. We summarily reverse Rejections 1–3,
without reaching the merits of the rejections, and enter a new ground of
rejection under 35 U.S.C. § 112, ¶ 2, because, due to lack of claim clarity,
we are unable to meaningfully assess whether the prior art falls within the
scope of the claims. In such a situation, it is not appropriate to sustain a
prior art rejection. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). “[D]uring patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.” See In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989); see also In re Packard, 751 F.3d 1307,
1314 (Fed. Cir. 2014) (affirming rejection, among other reasons, because the
appellant did not “show why, on close scrutiny, the existing claim language
really was as reasonably precise as the circumstances permitted”); In re
Collier, 397 F.2d 1003, 1005 (CCPA 1968) (affirming rejection for
indefiniteness where claim involved recitations of “intended uses,
capabilities, and structure which will result upon the performance of future
acts”).
Claim 1 recites:
a plurality of distributed mounting points that, when adhered to
a face of the PV module and coupled to the power conversion
module, mechanically couple the power conversion module to
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the PV module by flexibly retaining the power conversion
module such that the PV module is able to flex without
subjecting the power conversion module to stress from flexure
of the PV module.
Appeal Br. 14 (Claims Appendix). We refer to this limitation as the
“mounting points” limitation. Claim 10—the only other independent claim
involved in this appeal—recites a “system” rather than an “apparatus” but
includes the “mounting points” limitation reproduced above. Id. at 15.
The Appellant does not meaningfully explain the scope of the term
“mounting points,” and we are unable to discern it. The plain meaning of
the term “mounting point” could simply be a position or a location (i.e., a
“point”)2 at which two structural elements meet to perform the function of
mounting. Portions of the written description are consistent with that
understanding.
Paragraph 27, for example, includes the following disclosure: “The
coupled plug 314/connector 304 provides a rigid mounting point for the
power module 102.” Spec. ¶ 27 (emphasis added). That disclosure does not
identify specific structure for a “mounting point” but instead suggests that
the “mounting point” is the point or position at which two different
structural elements, the plug 314 and connector 304, meet. See id.; see also
Spec. Fig. 3.
Paragraph 29 includes the following disclosure: “The pads 306 thus
provide flexible (i.e., non-rigid) mounting points for the power module 102”
(emphasis added). Paragraph 29 does not disclose that the “pads” are

2 Cf. https://www.dictionary.com/browse/point (providing more than 50
definitions for the noun “point,” one of which is “any definite position, as in
a scale, course, etc.”) (last accessed June 3, 2020).
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themselves a structural “mounting point”; it discloses that the pads
“provide” a mounting point. Id. ¶ 29. Figures corresponding to
paragraph 29 fail to identify a structural “mounting point” or clarify, in
terms of structure, what is intended by the term. For example, Figure 3
depicts pads 306 with grooves 308, and Figure 5 depicts feet 312 that couple
with grooves 308 creating gaps 502 and 504. See id. Figs. 3, 5. A
“mounting point” is not identified, and the “mounting point” appears to be
the position (or “point”) at which feet 312 engage grooves 308 of pad 306.
In the “Summary of Claimed Subject Matter” section of the Appeal
Brief, the Appellant asserts that pads 306 are “mounting points.” See
Appeal Br. 4. As discussed above, however, the Specification describes
element 306 as a “pad” that provides a mounting point; not as a mounting
point itself. E.g., Spec. ¶¶ 24–29.
We also observe that paragraph 47 of the Specification uses the term
“means for” in association with the terms “pads” and “mounting points.” Id.
¶ 47. Specifically, it discloses that “pads are examples of means for
providing non-rigid mounting points for the power module.” Id. (emphasis
added). Paragraph 47, particularly in combination with the fact that the
claims define “mounting points” using functional language, suggests that the
“mounting points” limitation arguably could be interpreted as invoking 35
U.S.C. § 112, ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1347–51 (Fed. Cir. 2015). The word “means,” however, does not appear in
the claims.3

3 If, in the event of further examination of the application on appeal, the
Appellant and/or the Examiner ultimately determine that the “mounting
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Turning to the specific language of the “mounting points” limitation,
we observe that the language following the words “mounting points” is
functional and simply describes the functional role of the mounting points,
i.e., a mounting point may “adhere[]” to a face of a PV module and
“mechanically couple” a power conversion module to a photovoltaic
module. Although certain apparently structural elements are recited, i.e., a
“PV module” and a “power conversion module,” it is reasonably clear from
the claims that neither the PV module nor the power conversion module is a
structural element of the recited “mounting point.” Thus, the claims
themselves do not provide sufficient structural clarity to the “mounting
points” limitation beyond identifying the function of the mounting points.
It is not adequately clear what structure is encompassed by the
“mounting points” limitation. As set forth above, the written description
appears to use the term “mounting points” in ways that are inconsistent with
the Appellant’s identification of a “pad” as constituting a “mounting point.”
The written description also indicates that a “mounting point” may
encompass positions or interfaces of two structural elements rather than
itself being a structural element.
On the record before us, we determine that the claims are not as
“reasonably precise as the circumstances permit[],” Packard, 751 F.3d at
1314, and that this is a scenario in which “ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed,” Zletz,
893 F.2d at 321. Because of the lack of clarity as to the “mounting points”

points” limitation invokes 35 U.S.C. § 112, ¶ 6, that would appear to
implicate “single means” claiming, at least as to claim 1, as described in In
re Hyatt, 708 F.2d 712, 714–15 (Fed. Cir. 1983).
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limitation, we are unable to determine whether the “mounting points” of the
prior art identified by the Examiner fall within the scope of the claims.
Accordingly, we summarily reverse the Examiner’s rejections under 35
U.S.C. § 103 (Rejections 1–3), without reaching the merits of the rejections,
but we enter a new ground of rejection of claims 1–20 under 35 U.S.C. §
112, ¶ 2, for failure to particularly and distinctly claim the subject matter
which the applicant regards as his invention.
Rejection 4
The Appellant does not contest the nonstatutory double-patenting
rejection and instead states that, in previous communications with the
Office, the “Appellant provisionally agreed to submit a terminal disclaimer
upon indication of allowable subject matter in the present application.”
Appeal Br. 11–12. Because the Appellant does not assert that a terminal
disclaimer has already been submitted, and because the Appellant does not
contest the merit of the rejection, we summarily affirm the nonstatutory
double-patenting rejection.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference/Basis Affirmed Reversed
New
Ground
1, 2, 7,
10, 11,
17, 20
102(a) Fornage
1, 2, 7,
10, 11,
17, 20

1–6, 8,
10–16,
18, 20
102(b) Toyomura
1–6, 8,
10–16,
18, 20

8, 9, 18,
19 103(a) Fornage
8, 9, 18,
19
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Claims
Rejected
35
U.S.C. § Reference/Basis Affirmed Reversed
New
Ground
1, 2, 4, 5,
7, 10, 11,
14–17

Nonstatutory
Double
Patenting
1, 2, 4, 5,
7, 10, 11,
14–17

1–20 112, ¶ 2 Indefiniteness 1–20
Overall
Outcome
1, 2, 4, 5,
7, 10, 11,
14–17
3, 6, 8, 9,
12, 13,
18–20
1–20
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the prosecution will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED IN PART
37 C.F.R. § 41.50(b)