Ex Parte 7,987,641 B2 et al

Patent Trial and Appeal Board

Jun 30, 2014

95001704 (P.T.A.B. Jun. 30, 2014)

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.
95/001,704 08/18/2011 7,987,641 B2 08002.RE3 9891
26379 7590 07/01/2014
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/01/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

ZEP SOLAR, INC.,1
Respondent, Requester

v.

ANDALAY SOLAR, INC.,2
Appellant, Patent Owner
________________

Appeal 2014-000058
Reexamination Control 95/001,704
Patent No. US 7,987,641 B23
Technology Center 3900
_______________

Before JAMES T. MOORE, STEVEN D.A. McCARTHY and
DANIEL S. SONG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 According to a press release, Zep Solar, Inc. was acquired by
SolarCity Corp. in or about October 2013. (Press Release dated October 15,
2013, reproduced at http://ir.andalaysolar.com/releasedetail.cfm?ReleaseID
=797377 (last visited March 13, 2014)).

2 The Appellant/Patent Owner identifies itself as “Andalay Solar Inc.
doing business as Westinghouse Solar Inc.” (Appeal Brief dated September
18, 2012 at 1).

3 Issued August 2, 2011 to Barry Cinnamon (the “′641 patent”). The
′641 patent issued from Appl. 11/851,914, filed September 7, 2007.
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STATEMENT OF THE CASE 1
The Appellant/Patent Owner Andalay Solar Inc. appeals under 35 2
U.S.C. § 134(b) (2011) and 35 U.S.C. § 315(a) (2011) from the Examiner’s 3
final rejection of claims 1-3. (Ans. 3; App. Br. 14). None of claims 1-3 were 4
added or amended during the proceeding. We have jurisdiction under § 134 5
and § 315. 6
We sustain the Examiner’s decision adopting the Requester’s proposal 7
to reject claims 1 and 2 under 35 U.S.C. § 102(b) (2011) as being anticipated 8
by Hartman (US 2002/0112435 A1, published Aug. 22, 2002) (Ans. 5 9
(Ground # 1)) or Ito (JP H10-266499 A, publ. Oct. 6, 1998)5 (Ans. 6 10
(Ground # 3)). In the alternative, we also sustain the rejection of claim 2 11
under 35 U.S.C. § 103(a) (2011) as being unpatentable over Hartman (Ans. 12

4 References to “Ans.” will be to the Examiner’s Answer mailed June
20, 2013. References to “RAN” will be to the Right of Appeal Notice
mailed June 20, 2012.

The Requester, Zep Solar, Inc., did not participate in the appeal.
Therefore, references to “Appeal Brief” or “App. Br.” will be to the Appeal
Brief of the Patent Owner dated September 18, 2012. References to “Reb.
Br.” will be to the “Reply Brief”, that is, the Rebuttal Brief, of the Patent
Owner dated July 22, 2013. This opinion will also refer to the “Third Party
Requester’s Comments on Patent Owner’s Response” dated December 23,
2011 (“Requester’s Comments” or “Req’r Comments”); and to the
“Replacement Request for Inter Partes Reexamination of U.S. Patent No.
7,987,641 under 35 U.S.C. §§ 311-318 and 37 C.F.R. § 1.902 et seq.” dated
August 18, 2011 (“Request”). The Patent Owner does not cite to any
declaration evidence in the briefs.

5 References to “Ito” will be to a translation prepared by Patent
Translations, Inc., which was submitted with the Request. A copy of the
translation is in the reexamination file.

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9 (Ground # 11)); Ito (Ans. 9-10 (Ground # 12)); Hartman and Erickson 1
(Ans. 10 (Ground # 13)); or Ito and Erickson (Ans. 10-11 (Ground # 15)). 2
Since these grounds of rejection are dispositive of the appeal as to claims 1 3
and 2, we do not reach the remaining grounds of rejection of claims 1 and 2 4
set forth in the Answer. (See Ans. 6-9 (Grounds # 4, 5 and 7-106)). See 37 5
C.F.R. § 41.77(a) (2011). 6
We do not sustain the Examiner’s decision adopting the Requester’s 7
proposal to reject claim 3 under § 102(b) as being anticipated by either 8
Erickson (Ans. 5 (Ground # 2)) or Ito (Ans. 6 (Ground # 3)). Neither do we 9
sustain the Examiner’s decision adopting the Requester’s proposal to reject 10
claim 3 under § 103(a) as being unpatentable over either Hartman or Ito, 11

6 These remaining grounds of rejection include the rejection of claim 1
under § 102(b) as being anticipated by either:
Nath (US 5,232,518 A, issued Aug. 3, 1993); or
Voges (US 4,312,325, issued Jan. 26, 1982) (Grounds # 4 and #5).
The remaining grounds of rejection also include the rejections of claim 1
under 35 U.S.C. § 103(a) (2011) as being unpatentable over:
Hartman and Poddany (US 6,959,517 B2, issued Nov. 1, 2005)
(Ground #7);
Nath and Ohtsuka (US 6,269,596 B1, issued Aug. 7, 2001) (Ground
#8);
Voges and Vandenbossche (US 4,310,182, issued Jan. 12, 1982)
(Ground #9); or
Rawlings (US 5,338,369 A, issued Aug. 16, 1994) and Aresty (US
4,155,346, issued May 22, 1979) (Ground #10).

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alone (Ans. 9-10 (Grounds # 11 and # 12), or alternatively, in view of 1
Erickson. (Ans. 10-11 (Grounds # 13 and # 15)). 2
We are informed that the Patent Owner and the Requester were parties 3
to concurrent litigation involving the ´641 patent as well as a parent patent, 4
Cinnamon (US 7,406,800 B2, issued Aug. 5, 2008), as follows: 5
Akeena Solar, Inc., et al v. ZEP Solar Inc., et al., 6
Case No. 3:09-cv-05040-JSW (N.D. Ca1.); 7
ZEP Solar, Inc. v. Westinghouse Solar, Inc., et al., 8
Case No. 3: ll-cv-06493-JSW (N.D. Ca1.); 9
ZEP Solar, Inc., et al. v. Westinghouse Solar, Inc., et al., 10
Case No. 3:11-cv-03800-JSW (N.D. Ca1.); 11
In the matter of Certain Integrated Solar Power Systems and 12
Components Thereof, United States International Trade 13
Commission Investigation No. 337-TA-811. 14
All of these cases are said to have been settled pursuant to a confidential 15
settlement agreement. (See App. Br. 1). 16
17
THE ′641 PATENT 18
The ´641 patent discloses a solar panel 100 comprising: 19
a plurality of solar modules [102a, 102b, 102c] and 20
a plurality of internal splices [104] for coupling the 21
plurality of solar modules together. The plurality 22
of internal splices [104] provide a way to make the 23
connected modules [102a, 102b, 102c] 24
mechanically rigid both during transport to the 25
roof and after mounting for the lifetime of the 26
system[;] provide wiring connections between 27
modules[;] provide an electrical grounding path for 28
the modules[;] provide a way to add modules to 29
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the panel [100;] and provide a way to remove or 1
change a defective module. 2
(′641 patent, col. 6, ll. 34-43). 3
Claims 1-3 recite: 4
1. A solar module comprising: 5
a body portion having a frame; 6
one or more splices, wherein each splice 7
couples the frame of the body portion rigidly to a 8
frame of the body portion of an adjacent solar 9
module; 10
a bracket that securely attaches the solar 11
module to a roof wherein the bracket is located 12
along any portion of the frame; 13
wherein each splice further comprises a 14
body for coupling the frames of the solar module 15
and the adjacent solar module together and a 16
securing mechanism for securing the frames of the 17
solar module and the adjacent solar module 18
together. 19
20
2. The solar module of claim 1, wherein 21
the securing mechanism further comprises one of a 22
screw, a cam type compression device, a press fit 23
barb device, a toothed barb device, a spring clip 24
attachment, a through pin and an expandable 25
section at each end of the splice. 26
27
3. The solar module of claim 1 further 28
comprising a coupling mechanism for coupling the 29
frames of the solar module and the adjacent solar 30
module together, the coupling mechanism further 31
comprises one of a screw, a cam type compression 32
device, a press fit barb device, a toothed barb 33
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device, a spring clip attachment, a through pin and 1
an expandable section at each end of the splice. 2
(App. Br. 37 (Claims App’x.)). 3
4
ISSUES 5
Only those arguments actually made by the Patent Owner have been 6
considered in this decision. Arguments that the Patent Owner could have 7
made but chose not to make have not been considered and are deemed to be 8
waived. See 37 C.F.R. § 41.67(c)(1)(vii) (2011). Five issues are dispositive 9
of the appeal: 10
First, does Hartman describe a “splice” that “couples the 11
frame of the body portion rigidly to a frame of the body portion 12
of an adjacent solar module”; and “a bracket that securely 13
attaches the solar module to a roof wherein the bracket is 14
located along any portion of the frame” as recited in claim 1? 15
(App. Br. 5-8). 16
Second, does Ito describe a “splice” that “couples the 17
frame of the body portion rigidly to a frame of the body portion 18
of an adjacent solar module”; and “a bracket that securely 19
attaches the solar module to a roof wherein the bracket is 20
located along any portion of the frame” as recited in claim 1? 21
(App. Br. 11-15). 22
Third, is each claim element of claim 3 found, expressly 23
or inherently, in Ito or Erickson? 24
Fourth, does Hartman or Ito teach or suggest all the 25
claim limitations of claims 2 and 3? (App. Br. 29-31). 26
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Fifth, do the teachings of Erickson remedy the 1
deficiencies in the teachings of Hartman or Ito as applied to 2
dependent claim 3? (App. Br. 31-33). 3
4
FINDINGS OF FACTS 5
The record supports the following findings of fact (“FF”) by a 6
preponderance of the evidence. 7
8
Hartman 9
1. Hartman anticipates claims 1 and 2. 10
2. Hartman discloses a solar module including a body portion 11
having a frame. The body portion includes a pair of parallel beams 31. 12
Cross braces 52 connect the beams 31 to create a “box beam frame” for a 13
solar panel. (Hartman, para. 78).7 14
3. Each beam 31 is in the form of an “angled I beam.” In other 15
words, each beam 31 has a web 37 ending at opposite ends in upper and 16
lower flanges 32, 42 extending perpendicularly with respect to the height of 17
the web 37. Obliquely-extending angles 36, 46 cooperate with the flanges 18
32, 42 to define dovetailed channels 41, 51. Each dovetailed channel 41, 51 19
opens adjacent a corresponding one of the flanges on the same side of the 20
web 37. (Hartman, para. 52 and Fig. 1A). 21
4. The Examiner correctly finds that the relatively rigid connector 22
91 described by Hartman corresponds to a splice as recited in claim 1. The 23

7 Paragraph 78 of Hartman refers to Fig. 3A of the drawing as depicting
the box beam frame described in the paragraph. Figure 3A does not appear
in Hartman.
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Patent Owner does not appear to dispute this characterization in this appeal. 1
(See generally App. Br. 6-8; Reb. Br. 4-5). 2
5. Each splice 91 described by Hartman comprises a body 91F, 3
91D, 91C for coupling the frames adjacent solar modules (represented by the 4
beams 31C, 31D) together. (Hartman, para. 109 and Fig. 8). More 5
specifically, each relatively rigid connector 91 is an elongated extrusion 6
having a major arched portion 91F surrounded on opposite ends by minor 7
arched portions 91B of opposite curvature. (Id.) 8
7. The Examiner also correctly finds that Hartman’s bracket 92 9
corresponds to a bracket as recited in claim 1. (Hartman, para. 109 and Figs. 10
7 and 8). Hartman’s bracket 92 as depicted in Figures 7 and 8 is 11
approximately “T”-shaped, defining upper and lower bracket surfaces 92B 12
and 92D. The upper portion of the bracket 92 defines bracket ends 92C. 13
(Hartman, para. 111 and Figs. 7 and 8). 14
8. When Hartman’s splice or relative rigid connector 91 and the 15
bracket 92 are used to secure adjacent solar panels together, the splice 91 16
rests on the upper surface 92B of the bracket 92. The minor arched portions 17
91B of the splice 91 and the bracket ends 92C of the bracket 92 extend into 18
lower dovetailed channels defined below angles 46C, 46D of the facing 19
beams 31C, 31D of the solar panels. 20
9. Each splice 91 described by Hartman also includes a securing 21
mechanism 93, 93A for securing the frames of the solar module and the 22
adjacent solar module together. Hartman describes an embodiment in which 23
the securing mechanism includes carriage bolts 93, 93A. (Hartman, para. 24
110 and Figs. 7 and 8). 25
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10. When the carriage bolts 93, 93A are inserted through aligned 1
openings 91D, 92A through the splice 91 and the bracket 92, respectively, 2
and then tightened, the bolts 93, 93A flatten the major arched portion 91F of 3
the splice 91 toward the upper surface 92B of the bracket 92. The flattening 4
of the major arched portion 91F rotates the minor arched portions 91B of the 5
splice 91 upwardly within the lower dovetailed channels defined below 6
angles 46C, 46D of the facing beams 31C, 31D. 7
11. As Hartman describes this process, the 8
upper bracket surface 92B serves to resist and 9
deflect movement of minor arched portions [91B] 10
during actuation to lock tip portions 91C into 11
engagement with lower angles 46C and 46D. In 12
FIG. 7, [the] pair of bracket ends 92C engage 13
lower bulbs 43C and 43D [at the facing ends of the 14
lower flanges of the beams 31C, 31D] to secure the 15
panels, resist lateral movement, and [resist] wind 16
uplift of the roof deck. 17
(Hartman, para. 111; see also id., paras. 137 and 138). 18
12. The Patent Owner contends that the splice or relatively rigid 19
connector 91 of Hartman does not couple the frame of the body portion 20
rigidly to a frame of the body portion of an adjacent solar module. (App. Br. 21
6). More specifically, the Patent Owner argues that: 22
For example, the beams 31C, 31D when secured 23
by the connector 91 can move in a lateral direction 24
into and out of the page in Figure 7 and the beams 25
31C, 31D can flex/twist clockwise and 26
counterclockwise and all of these movement[s 27
mean] that the solar panels are not rigidly secured 28
to each other. Furthermore, the downward 29
pressure against the lower bulbs 43C, 43D and the 30
pressure against the lower angles 46C, 46D does 31
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not rigidly couple the frames (beams 31C, 31D) to 1
each other. 2
(App. Br. 6). The Patent Owner does not cite to any persuasive evidence or 3
technical reasoning as support for its technical assertions. 4
13. The Examiner correctly finds that that each splice 91 couples 5
the frame of the body portion of one solar module (represented by the beam 6
31C) rigidly to a frame of the body portion of an adjacent solar module 7
(represented by the beam 31D). (Ans. 5). 8
14. Hartman teaches that the connection provided by the splice 91 9
in cooperation with the bracket 92 “resists lateral movement.” (Hartman, 10
para. 111). This teaching is more persuasive than the Patent Owner’s 11
unsupported assertion that “the beams 31C, 31D when secured by the 12
connector 91 can move in a lateral direction into and out of the page in 13
Figure 7.” (App. Br. 6). Likewise, the Patent Owner’s unsupported 14
assertion that “the beams 31C, 31D can flex/twist clockwise and 15
counterclockwise” is not persuasive. 16
15. The Examiner’s finding that Hartman’s splice 91 rigidly 17
couples the frames of adjacent solar panels to each other (Ans. 5), based 18
once again on the teachings of Hartman (see Ans. 11 (adopting the proposed 19
findings set forth by the Requester on pages 2-5 of the Requester’s 20
Comments); Req’r Comments 4 (citing Hartman, para. 111)), is more 21
persuasive than the Patent Owner’s argument that “the downward pressure 22
against the lower bulbs 43C, 43D and the pressure against the lower angles 23
46C, 46D does not rigidly couple the frames (beams 31C, 31D) to each 24
other” (App. Br. 6). 25
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16. The Patent Owner also contends that the bracket 92 of Hartman 1
is not "a bracket that securely attaches the solar module to a roof wherein the 2
bracket is located along any portion of the frame." (App. Br. 7). The Patent 3
Owner argues that the bracket 92 of Hartman requires the connector 91, the 4
bolt 93, the lower angles 46C, 46D and the lower bulbs 43C, 43D to secure 5
the solar panels to the roof. Consequently, in the Patent Owner’s view, 6
Hartman’s bracket 92 is not a bracket that securely attaches a solar panel to a 7
roof. (Id.) 8
17. The Examiner correctly finds that Hartman’s bracket 92 is a 9
bracket that securely attaches a solar panel to a roof. More specifically, the 10
Examiner correctly adopts the Requester’s position that brackets nearly 11
always require additional hardware. (See Ans. 5 and 11; see also Req’r 12
Comments 5). 13
18. Hartman teaches that the adjacent solar panels (represented by 14
the beams 31C, 31D) are attached to girders 72B. (Hartman, para. 108). As 15
depicted in Figures 7 and 8 of Hartman, the lower surface 92D of the bracket 16
92 sits on the upper surface of a flange 72C of one of the girders 72B. 17
(Hartman, para. 111). The girders 72B support the roof deck 73. (See 18
Hartman, ¶ 90 and Fig. 4). Hartman explicitly teaches that the “structural 19
bracket 92 works with the connector 91 to clamp and secure the beams 31C 20
and 31D to each other and to flange 72C.” (Hartman, para. 109). Thus, the 21
Examiner correctly finds that brackets 92 as described by Hartman attach the 22
solar panels to the roof. 23
Ito 24
19. Ito anticipates claims 1 and 2. 25
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20. Ito discloses a solar module that includes a body portion in the 1
form of a solar cell plate 1 having a frame 2. The frame 2 includes a ridge-2
side frame part 3 as well as left and right vertical frame parts 5A, 5B. (Ito, 3
paras. 1 and 9 and Fig. 3; see also App. Br. 11). 4
21. As depicted in Figure 9, vertical frame part 5A includes 5
outwardly-facing channels defined by top and bottom projecting parts 5a, 6
5b. A downwardly bent engaging protrusion or lip 5c depends from the 7
outer end of the top projection part 5a. (Ito, para. 14 and Fig. 9). When 8
solar modules are placed next to one another, the right vertical frame part 5A 9
of one module and the left vertical frame member 5A of the adjacent module 10
combine to form an enclosed, inverted-U shaped channel or insertion 11
coupling part 5B between the modules. (Id.) 12
22. Ito describes a “gutter-like” coupling member 12 to couple 13
adjacent solar modules to each other. (Ito, para. 14). Ito additionally 14
teaches solidly coupling one solar module to an adjacent module by inserting 15
a coupling member 12 into the U shaped coupling part 5B defined by the 16
abutting vertical frame parts 5A of the two modules. (See Ito, para. 0015). 17
23. The Examiner correctly finds that the coupling member 12 18
described by Ito corresponds to a splice as recited in claim 1. (Ans. 6). The 19
Patent Owner does not appear to dispute this characterization in this appeal. 20
(See generally App. Br. 13-14; Reb. Br. 6-8). 21
24. The Patent Owner contends that the coupling member 12 of Ito 22
does not couple the frame 2 of one solar module rigidly to a frame of an 23
adjacent solar module. (App. Br. 13-14). More specifically, the Patent 24
Owner argues that, 25
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as shown in Figure 9 and 12 of Ito, there is a gap 1
between the coupling member 12 and the frame 2
member of the solar cell panel so that the coupling 3
member cannot rigidly couple the solar module 4
frame together. Furthermore, one solar cell can 5
move along the long axis of the coupling member 6
while the other solar cell panel is held in place so 7
that the coupling member 12 does not provide the 8
claimed rigidity. 9
(App. Br. 13-14). The Patent Owner does not cite to any persuasive 10
evidence or technical reasoning as support for its technical assertions. 11
25. Ito teaches that, 12
if a solar cell plate is mounted and provided with a 13
frame that reinforces and supports the periphery 14
thereof, and both left and right vertical frame parts, 15
which are included in said frame, and which face 16
each other when said solar cell plates are installed 17
adjacently to the left and right along a roof face, 18
are provided with . . . insertion coupling part into 19
which a coupling member can be inserted, in the 20
eave-to-ridge direction, which couples the adjacent 21
vertical frame parts to each other in a waterproof 22
manner, the space between the left and right solar 23
cell plates that are coupled by the coupling 24
member is extremely small, so that the amount of 25
rainwater that infiltrates can be limited to very 26
small qualities, and the rainwater that infiltrates via 27
the gap can easily flow towards the eave by way of 28
the run-off part constituted by the coupling 29
30
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member or the insertion coupling part,8 in addition 1
to which the strength of the mounting of the left 2
and right solar cell plates is also strengthened. 3
(Ito, para. 6). 4
25. The Examiner correctly adopts the Requester’s position that the 5
disclosure in Ito of a waterproof coupling between adjacent solar modules 6
due to the action of the coupling member 12 implies that coupling member 7
12 must rigidly couple the adjacent modules. (See Ans. 12; Req’r 8
Comments 9-10). Were such rigidity lacking, the extremely small spacing 9
between the left and right solar cell plates might be expected to vary 10
sufficiently so as to result in leakage. 11
26. As the Requester points out (Req’r Comments 10), Ito’s 12
teachings that “by inserting the coupling member [12] into the insertion 13
coupling part . . . that is formed between the adjacently disposed [roof 14
members], the roof members that are adjacent to each other to the left and 15
the right are solidly coupled to each other” (Ito, para. 15), as well as Ito’s 16
teaching that “the strength of the mounting of the left and right solar cell 17
plates is also increased” by the action of the coupling member 12 (Ito, para. 18
6), provides some additional evidentiary support for the finding that the 19
coupling member 12 rigidly coupled the frames of adjacent solar modules. 20

8 This supports the finding that Ito describes the coupling member 12 as
“gutter-like” (see Ito, para. 14) in the sense that the coupling member 12
captures moisture which infiltrates through the narrow gap between the
adjacent solar panels and conducts that moisture downwardly toward the
eave.
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27. These teachings are more persuasive than the Patent Owner’s 1
arguments regarding the asserted lack of rigidity of the coupling appearing at 2
pages 13-14 of the Appeal Brief. 3
28. As depicted in Figures 3 and 10 of Ito, the ridge side frame part 4
3 includes an undercut groove 3a for slideably receiving a rectangular base 5
portion 10a of a hook member 10. (Ito, paras. 10 and 20). The hook 6
member 10 includes a leg portion 10c and an upwardly projecting key 7
portion 10d. (Ito, para. 10). 8
29. Ito describes a vertically receiving support member 6 9
comprising a bent steel sheet defining an insertion hole 6a for receiving the 10
leg and key portions 10c, 10d of a hook member 10. As depicted in Figure 7 11
of Ito, a base part 6d of the vertically receiving support member 6 is nailed 12
to a roof face 9. (See Ito, para. 0013). When hook members 10 slidably 13
coupled to ridge side frame parts 3 of solar modules engage insertion holes 14
6a of vertically receiving support members 6 nailed to a roof face 9, the 15
hook members 10 securely attach the solar modules to the roof face 9 with 16
the assistance of the vertically receiving support members 6. 17
30. The Examiner correctly finds that the hook member 10 of Ito 18
corresponds to the bracket recited in claim 1. (Ans. 6). 19
31. The Patent Owner contends that hook member 10 of Ito is not 20
"a bracket that securely attaches the solar module to a roof wherein the 21
bracket is located along any portion of the frame." (App. Br. 14; Reb. Br. 7-22
8). The Patent Owner appears to argue that this is true because Ito’s hook 23
members or brackets 10 cannot securely attach a solar module to a roof 24
without the assistance of vertically receiving support members 6. (See id. 25
(providing a description of the manner in which the hook members 10 and 26
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the vertically receiving support members 6 cooperate to attach a solar 1
module to a roof face 9)). Nevertheless, Ito’s hook members 10 do securely 2
attach a solar module to a roof face 9 with the assistance of the vertically 3
receiving support members 6. 4
32. The Patent Owner also argues that “Figure 2 of Ito . . . clearly 5
shows that the groove that hook member 10 engages does not extend around 6
the entirety of the solar module frame, and thus the hook member 10 is not 7
‘located along any portion of the frame.’” (App. Br. 13). Since the hook 8
members or brackets 10 are located along grooved portions of ridge side 9
frame parts 3, the hook members are located along any portion of the frame 10
of a solar module. 11
33. Ito’s coupling member 12 includes on its eave end (that is, 12
lower end when installed) a catch part 12a. As depicted in Figures 8 and 11, 13
the catch part 12a includes projection portions at the eave end that spread 14
out to the left and the right. When the coupling member 12 is inserted into 15
the inverted-U shaped channel defined by the abutting vertical frame parts 16
5A of two adjacent solar modules, the catch part 12a engages an eave-side 17
frame part 4. (Ito, para. 15). The engagement of the catch part 12a with the 18
eave-side frame part 4 secures the coupling member 12 in the inverted-U 19
shaped channel and thereby secures the two adjacent solar modules together. 20
34. Neither the Examiner nor the Requester identify any coupling 21
mechanism separate from the coupling member 12 and its catch part 12a 22
which might be for coupling the frames of a solar module to an adjacent 23
solar module. 24
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Erickson 1
35. Erickson discloses a solar module 22 that includes a body 2
portion having a frame 28. (Erickson col. 1, ll. 6-10 and col. 4, ll. 49-51). 3
36. The Examiner finds that a retainer plate 52 of Erickson 4
corresponds to the splice as recited in claim 1; that a cap strip 53 and a screw 5
55 of Erickson correspond to the recited securing mechanism; and that the 6
cap strip 53 and screw 55 of Erickson also correspond to the recited coupling 7
mechanism. (Ans. 5). 8
37. Neither the Examiner nor the Requester identify any coupling 9
mechanism separate from the cap strip 53 and the screw 55 which might be 10
for coupling the frames of a solar module to an adjacent solar module. 11
12
ANALYSIS 13
First Issue 14
The Examiner finds that each element of claims 1 and 2 is found, 15
expressly or inherently, in Hartman. (RAN 5). Although the Patent Owner 16
disagrees, the Examiner’s finding is correct. 17
For example, the Patent Owner contends that connector 91 of 18
Hartman does not couple the frame of the body portion rigidly to a frame of 19
the body portion of an adjacent solar module. (App. Br. 6; see also FF 12). 20
The Examiner’s findings are more persuasive than the Patent Owner’s 21
arguments. (See FF 13). In particular, the Patent Owner’s unsupported 22
assertions of fact regarding the behavior of the coupling between the frames 23
of adjacent solar panels are not persuasive. (See FF 14 and 15). These 24
arguments are essentially the unsworn testimony of counsel. 25
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The Patent Owner also contends that the bracket 92 of Hartman is not 1
"a bracket that securely attaches the solar module to a roof wherein the 2
bracket is located along any portion of the frame". (App. Br. 7; see also FF 3
16). This argument appears premised on interpreting the limitation "a 4
bracket that securely attaches the solar module to a roof wherein the bracket 5
is located along any portion of the frame" as requiring the bracket itself to 6
provide the secure attachment without the assistance of other parts. The 7
Patent Owner argues that Hartmen’s bracket 92 instead requires the 8
assistance of the connector 91; the bolt 93; the lower angles 46C, 46D; and 9
the lower bulbs 43C, 43D to secure the solar panel to the roof. (Id.) 10
“During reexamination, as with original examination, the PTO must 11
give claims their broadest reasonable construction consistent with the 12
specification. . . . Therefore, we look to the specification to see if it provides 13
a definition for claim terms, but otherwise apply a broad interpretation.” In 14
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The 15
Patent Owner does not point to any persuasive evidence or reasoning 16
suggesting that the one of ordinary skill in the art would have understood the 17
limitation "a bracket that securely attaches the solar module to a roof 18
wherein the bracket is located along any portion of the frame" as requiring 19
the bracket itself to provide the secure attachment without the assistance of 20
other parts. 21
Neither does the Patent Owner point to any passage in the 22
Specification seeking either to define the limitation formally or to disclaim 23
an interpretation broad enough to encompass a bracket requiring the 24
assistance of other parts to securely attach a solar frame to a roof. To the 25
contrary, as pointed out by the Requester and adopted by the Examiner, the 26
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bracket 140 of the sole embodiment described in the Specification of the 1
′641 patent requires the assistance of an (unnumbered) nut and bolt to 2
connect module 102 to a roof. (See ‘641 patent col. 6, ll. 1-6 and Figs. 2A 3
and 4; see also Ans. 11; Req’r Comments 5). In view of this claim 4
interpretation, Hartman’s brackets 92, with the assistance of bolts 93, 93A, 5
securely attach solar panels represented in Figures 7 and 8 by beams 31C, 6
31D to a roof via girders 72B. (See FF 18). 7
The Patent Owner also contends that the bracket 92 of Hartman 8
cannot be “located along any portion of the frame.” Hartman teaches that 9
the relatively rigid connector or splice 91 used to connect adjacent solar 10
panels together rests on the upper surface 92B of the bracket 92. (FF 8). 11
Therefore, the bracket 92 must be aligned with the splice 91. The Patent 12
Owner argues that the need to align the bracket 92 with the splice 91 implies 13
that the bracket 92 cannot be “located along any portion of the frame.” 14
(App. Br. 7-8). The Examiner correctly adopts the Requester’s position that 15
the claim only requires that the bracket be located along any portion of the 16
frame, not that the bracket be susceptible of being located along any portion 17
of the frame. (Ans. 11; see also Req’r Comments 5). 18
The Specification of the ′641 patent does not define the term “located 19
along any portion of the frame.” Under a broadest reasonable interpretation, 20
the limitation merely requires that the bracket be located along some portion 21
of the frame. The limitation is not superfluous: because the bracket must be 22
located along any portion of the frame, it cannot be located remotely from 23
all portions of the frame. On the other hand, as the Requester points out (see 24
Req’r Comments 5), the passive verb “is located” identifies a current 25
location of the bracket (that is, along any portion of the frame) but does not 26
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imply the bracket necessarily must be susceptible of being located elsewhere 1
than along the portion of the frame where it is positioned. The Patent Owner 2
fails to point out any claim language or passage of the Specification of the 3
′641 patent disclaiming this interpretation. Because Hartman describes a 4
bracket 92 located along a portion of either the beam 31C or the beam 31D 5
(see FF 8), Hartman describes a bracket located along a portion of a frame of 6
a solar module. 7
Therefore, the Examiner correctly finds that Hartman describes the 8
invention as claimed in claim 1 within the meaning of § 102(b). The Patent 9
Owner does not separately argue claim 2. (See, e.g., App. Br. 8; Reb. Br. 5). 10
On this basis, the Examiner correctly concludes that Hartman anticipates 11
claim 2 as well. 12
13
Second Issue 14
Each claim element of claims 1 and 2 is found, expressly or 15
inherently, in Ito (RAN 6). Although the Patent Owner disagrees, the 16
Examiner’s finding is correct. 17
The Patent Owner contends that the coupling member 12 of Ito does 18
not couple the frame 2 of one solar module rigidly to a frame of an adjacent 19
solar module. (App. Br. 13-14). The Examiner’s findings are more 20
persuasive than the Patent Owner’s arguments. (See FF 25-27). The 21
Examiner correctly finds that the coupling member or splice 12 “couples the 22
frame of the body portion rigidly to a frame of the body portion of an 23
adjacent solar module” as recited in claim 1. 24
The Patent Owner also contends that hook member 10 of Ito is not "a 25
bracket that securely attaches the solar module to a roof wherein the bracket 26
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is located along any portion of the frame." The Patent Owner appears to 1
argue that this is true because Ito’s hook members or brackets 10 cannot 2
securely attach a solar module to a roof without the assistance of vertically 3
receiving support members 6. (App. Br. 14; Reb. Br. 7-8). Nevertheless, as 4
discussed in connection with the previous issue, the recitation of "a bracket 5
that securely attaches the solar module to a roof” is sufficient to encompass 6
brackets which require the assistance of other parts to securely attach a solar 7
module to a roof. Because Ito’s hook member 10 does securely attach a 8
solar module to a roof face 9 with the assistance of a vertically receiving 9
support member 6 (see FF 28, 29 and 31), it is "a bracket that securely 10
attaches the solar module to a roof” as recited in claim 1. 11
The Patent Owner argues that “Figure 2 of Ito . . . clearly shows that 12
the groove that hook member 10 engages does not extend around the entirety 13
of the solar module frame, and thus the hook member 10 is not ‘located 14
along any portion of the frame.’” (App. Br. 13). As discussed in connection 15
with the previous issue, the recitation of “a bracket . . . located along any 16
portion of the frame” merely requires that the bracket be located along some 17
portion of the frame. Since the hook members or brackets 10 are located 18
along grooved portions of ridge side frame parts 3 (see FF 28 and 32), the 19
hook members are “located along any portion of the frame” of a solar 20
module as recited in claim 1. 21
Finally, the Patent Owner contends that the catch part 12a of Ito’s 22
coupling member 12 is not a “securing mechanism for securing the frames 23
of the solar module and the adjacent solar module” as recited in claim 1. 24
(App. Br. 14; Reb. Br. 8; see FF 33). The Patent Owner does not explain 25
why this is true, however. Because the engagement of the catch part 12a 26
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with the eave-side frame part 4 secures the coupling member 12 in the U 1
shaped channel and thereby secures the two adjacent solar modules together, 2
the Examiner correctly finds that Ito’s coupling member 12 is a “securing 3
mechanism for securing the frames of the solar module and the adjacent 4
solar module.” 5
Therefore, the Examiner correctly finds that Ito describes the 6
invention as claimed in claim 1 within the meaning of § 102(b). The Patent 7
Owner does not separately argue claim 2. (See, e.g., App. Br. 8; Reb. Br. 5). 8
On this basis, the Examiner correctly concludes that Ito anticipates claim 2 9
as well. 10
11
Third Issue 12
Hartman and Ito both anticipate claims 1 and 2. Therefore, we need 13
not reach the rejection of claims 1 and 2 based on Erickson. (See 37 C.F.R. 14
§ 41.77(a) (2011)(“The affirmance of the rejection of a claim on any of the 15
grounds specified constitutes a general affirmance of the decision of the 16
examiner on that claim, except as to any grounds specifically reversed.”). 17
Nevertheless, neither Ito nor Erickson anticipate claim 3. Claim 3 18
depends from claim 1. Claim 1 recites a solar module including “a securing 19
mechanism for securing the frames of the solar module and the adjacent 20
solar module together.” Claim 3 recited a solar module “further comprising 21
a coupling mechanism for coupling the frames of the solar module and the 22
adjacent solar module together.” 23
“In the absence of any evidence to the contrary, we must presume that 24
the use of these different terms in the claims connotes different meanings.” 25
CAE Screenplates, Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 26
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(Fed. Cir. 2000). Therefore, the broadest reasonable interpretation of claim 1
3 is limited to a solar module including “a securing mechanism for securing 2
the frames of the solar module and the adjacent solar module together” and a 3
separate “coupling mechanism for coupling the frames of the solar module 4
and the adjacent solar module together.” 5
Nevertheless, the Requester proposes, and the Examiner finds, that 6
that the catch parts 12a of Ito’s coupling member 12 satisfy both recited 7
limitations. (Ans. 6; Request 21-22). The Requester also proposes, and the 8
Examiner also finds, that the cap strip 53 and screw 55 of Erickson satisfy 9
both recited limitations. (Ans. 5; Request 17). Since neither the Examiner 10
nor the Requester explain how either Ito or Erickson might describe a solar 11
module including both “a securing mechanism for securing the frames of the 12
solar module and the adjacent solar module together” and a separate 13
“coupling mechanism for coupling the frames of the solar module and the 14
adjacent solar module together,” we do not sustain the rejection of claim 3 15
under 16
§ 102(b) as anticipated by either Ito or Erickson. 17
18
Fourth Issue 19
Both Hartman and Ito describe solar modules including all the claim 20
limitations of claim 2. (RAN 9; Ans. 16). Evidence sufficient to show that a 21
claim is anticipated generally also provides an adequate factual underpinning 22
for concluding that the subject matter of the claim would have been prima 23
facie obvious. In re Fracalossi, 681 F.2d 792, 794 (Fed. Cir. 1982). The 24
Patent Owner has not provided objective evidence of non-obviousness. 25
Therefore we sustain the rejection of claim 2 under § 103(a) as being 26
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unpatentable over either Hartman or Ito. For similar reasons, we affirm the 1
rejections of claim 2 under § 103(a) as being unpatentable over either 2
Hartman or Ito in view of Erickson. 3
As noted in the discussion of the previous issue, the broadest 4
reasonable interpretation of claim 3 is limited to a solar module including “a 5
securing mechanism for securing the frames of the solar module and the 6
adjacent solar module together” and a separate “coupling mechanism for 7
coupling the frames of the solar module and the adjacent solar module 8
together.” With regard to Hartman as applied to claim 3, the Examiner 9
reasons that, 10
While showing a screw connection for the securing 11
mechanism, [Hartman] lacks the coupling 12
mechanism comprising one of the required 13
coupling means. The [types of couplings recited in 14
claim 3] are well known connections for 15
removably securing various parts together. It 16
would have been obvious to one of ordinary skill 17
in the art to provide/substitute the various 18
connections as they are well known, inexpensive, 19
and reliable ways to secure the panels together. 20
(Ans. 9; see also id. 16). The Examiner’s reasoning with regard to Ito as 21
applied to claim 3 is similar. (See Ans. 9-10; see also Ans. 16). 22
The Patent Owner’s arguments with regard to the rejection of claim 3 23
over Hartman are persuasive as to the rejection over Ito as well: 24
The fact that Hartman may disclose a securing 25
mechanism that is a screw does not mean that 26
Hartman [would have disclosed or suggested] a 27
coupling mechanism as set forth in claim 3. 28
Furthermore, the statement that “It would have 29
been obvious to one of ordinary skill in the art to 30
provide/substitute the various connections as they 31
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are well known, inexpensive, and reliable ways to 1
secure the panels together” . . . does not explain 2
why the disclosure of a screw for a securing 3
mechanism would [have suggested] the coupling 4
mechanism. 5
(App. Br. 30). In short, the Examiner’s reasoning does not explain why one 6
of ordinary skill in the art would have wished to combine separate securing 7
and coupling mechanisms within a solar module, much less a securing 8
mechanism with a coupling mechanism of a type recited in claim 3. We do 9
not sustain the rejection of claim 3 under § 103(a) as being unpatentable 10
over either Hartman or Ito. 11
12
Fifth Issue 13
With regard to the combination of Hartman and Erickson as applied to 14
claim 3, the Examiner reasons that, 15
While showing a screw connection for the securing 16
mechanism, [Hartman] lacks the coupling 17
mechanism comprising one of the required 18
coupling means. Erickson shows a screw 19
connection 55 as the securing and coupling 20
mechanisms. It would have been obvious to one of 21
ordinary skill in the art to provide/substitute the 22
screw connections of Erickson for those of 23
Hartman as they are well known, inexpensive, and 24
reliable ways to secure the panels together. 25
(Ans. 10). Elsewhere, the Examiner observes that “Patent Owner merely 26
states that the motivation is insufficient and yet provides no evidence to 27
support the contention.” (Ans. 16-17). The Examiner’s reasoning with 28
regard to the combination of Ito and Erickson as applied to claim 3 is 29
similar. (See Ans. 9-10; see also Ans. 17). 30
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The Patent Owner responds that “the statement that ‘It would have 1
been obvious to one of ordinary skill in the art to provide/substitute the 2
[various connections] as they are well known, inexpensive, and reliable 3
ways to secure the panels together’ . . . is insufficient to explain the 4
motivation to combine Hartman and Erickson.” (App. Br. 33; see also App. 5
Br. 34). The Examiner reasons that it would have been obvious “to 6
provide/substitute the screw connections of Erickson for those of Hartman.” 7
(Ans. 10 (italics added for emphasis)). 8
The Examiner’s reasoning does not explain why it would have been 9
obvious in view of the teachings of Erickson to add to the solar module 10
described by Hartman a coupling mechanism separate from the securing 11
mechanism (that is, the bolts 93, 93A) described by Hartman. We do not 12
sustain the rejection of claim 3 under § 103(a) as being unpatentable over 13
Hartman and Erickson. For similar reasons, we do not sustain the rejection 14
of claim 3 under § 103(a) as being unpatentable over Ito and Erickson. 15
16
DECISION 17
We AFFIRM the Examiner’s decision rejecting claims 1 and 2. 18
We REVERSE the Examiner’s decision rejecting claim 3. 19
Requests for extensions of time in this inter partes reexamination 20
proceeding are governed by 37 C.F.R. § 1.956 (2011). 21
In the event neither party files a request for rehearing within the time 22
provided in 37 C.F.R. § 41.79 (2011), and this decision becomes final and 23
appealable under 37 C.F.R. § 41.81 (2011), a party seeking judicial review 24
must timely serve notice on the Director of the United States Patent and 25
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Trademark Office. See 37 C.F.R. § 1.983 (2011) and 37 C.F.R. §§ 90.1 1
(2011). 2
3
AFFIRMED-IN-PART 4
5
6
7
8
9
10
PATENT OWNER: 11
DLA PIPER LLP (US) 12
2000 UNIVERSITY AVENUE 13
EAST PALO ALTO, CA 94303-2248 14
15
THIRD-PARTY REQUESTER: 16
LARRY D. JOHNSON 17
P.O. BOX 470277 18
CELEBRATION, FL 34747 19