Ex Parte Brounne

Patent Trial and Appeal Board

Mar 12, 2018

14187998 (P.T.A.B. Mar. 12, 2018)

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.
14/187,998 02/24/2014 Marcel Brounne 12PLAS0172-US-NP 8429
95329 7590 03/14/2018
CANTOR COLBURN LLP - SABIC EXATEC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
DANICIC, CHRISTOPHER
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL BROUNNE
Appeal 2017-004679
Application 14/187,998
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20 in the above-identified application.2 We
have authority pursuant to 35 U.S.C. § 6(b). We affirm.
1 Appellant is the Applicant, Sabic Global Technologies B.V., which,
according to the Appeal Brief, is the real party in interest. Appeal Brief 2,
May 3, 2016 [hereinafter Appeal Br.].
2 Final Office Action, Nov. 3, 2015 [hereinafter Final Action]; Examiner’s
Answer, Nov. 30, 2016 [hereinafter Answer]; see also Appeal Br.; Reply
Brief, Jan. 23, 2017 [hereinafter Reply Br.].
Appeal 2017-004679
Application 14/187,998
BACKGROUND
Appellant’s invention relates to “photovoltaic (PV) module
assemblies.” Spec. 12.3 An illustrative embodiment is shown in Figure 1 of
the disclosure, which we reproduce below:
Figure 1 is a cross-sectional view of PV module assembly 10 that includes
(from top to bottom) first layer 12; PV layer 16; and back layer 30 that
comprises second layer 32, support layer 34, and third layer 36. Id. 119, 20,
46. Support layer 34 may include stiffening elements 24. Id. 140.
Representative claim 1, the sole independent claim, is as follows:
1. A photovoltaic module assembly, comprising:
a first layer;
a polymeric back layer, wherein the back layer comprises
a polymeric second layer, a polymeric third layer, and a
polymeric support layer located between the second layer and
the third layer, wherein the first layer, the second layer, and the
third layer each independently comprise a thermoplastic
material comprising one or both of a homopolymer or
copolymer of a polycarbonate, a polyester, a polyacrylate, a
polyamide, a polyetherimide, a polyphenylene ether, or a
combination comprising at least one of the foregoing; and
3 Specification, Feb. 24, 2014 [hereinafter Spec.].
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Application 14/187,998
a photovoltaic layer comprising photovoltaic cells,
wherein the photovoltaic layer is located between the first layer
and the back layer;
wherein the support layer comprises stiffening elements
that define openings that extend in a y direction that is
perpendicular to a length of the first layer; and
wherein a combined thickness of the second layer and the
third layer is less than or equal to 1 mm thick.
Appeal Br. 14 (emphasis of key limitations added).
The Examiner maintains the following grounds of rejection:
1. Claim 20 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. See Final Action
4.
2. Claim 11 is rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the inventive subject matter. See id. at 5.
3. Claim 11 is rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form. See id. at 5—6.
4. Claims 1—4, 6, 7, 9-11, 14, and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ehbing4 in view of Langmaid.5 See id.
at 7-11.6
4 Ehbing et al., WO 2011/039299 A2 (published April 7, 2011). Citations
are to U.S. national stage application US 2012/0225519 Al (published Sept.
6, 2012).
5 Langmaid et al., WO 2012/154307 A2 (published Nov. 15, 2012).
Citations are to U.S. national stage application US 2014/0000709 Al
(published Jan. 2, 2014) [hereinafter Langmaid).
6 The rejection omits claim 11 in the heading, but discusses the claim in the
body of the rejection. See Final Action 7, 10.
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Application 14/187,998
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ehbing in view of Langmaid, as evidenced by Prospector.7
See id. at 11—12.
6. Claims 16—18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ehbing in view of Langmaid and Guo.8 See id. at 12—13.
7. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ehbing in view of Langmaid and Glassmaker.9 See id. at
13-14.
8. Claims 1—7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eberspacher10 in view of Langmaid. See id. at 15—20.* 11
9. Claims 8 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eberspacher in view of Langmaid and Perry,12 as
evidenced by DuPont.13 See id. at 18.
7 UL Prospector, Acrylic Typical Properties Generic Acrylic (PMMA),
http://plastics.ulprospector.eom/generics/3/c/t/acrylic-properties-processing
(accessed Apr. 2, 2015).
8 Guo et al., US 2010/0175737 A1 (published July 15, 2010).
9 Glassmaker et al., WO 2011/153681 Al (published Dec. 15, 2011). The
Examiner cites U.S. national stage application US 2013/0056065 Al
(published Mar. 7, 2013).
10 Eberspacher et al., US 2007/0074755 Al (published Apr. 5, 2007)
[hereinafter Eberspacher]
11 The rejection omits claim 5 in the heading, but discusses the claim in the
body of the rejection. See Final Action 15, 17.
12 Perry et al., US 2012/0152323 Al (published June 21, 2012).
13 DuPont, Tefzel® Properties Handbook,
http ://www2. dupont.com/Teflon_lndustrial/en_U S/tech_info/prodinfo_etfe .h
tml (accessed Apr. 2, 2015).
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Appeal 2017-004679
Application 14/187,998
10. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eberspacher in view of Langmaid, Perry, and Ehbing. See
id. at 19—20.
DISCUSSION
Rejections under 35 USC § 112
Claim 20 depends from independent claim 1 and further recites,
“wherein the photovoltaic layer has a thickness of 2 to 10 mm.” Appeal Br.
17. The Examiner rejects claim 20 because the Specification discloses
thickness ranges for the photovoltaic layer, but none of those ranges is 2—
10 mm. Final Action 4. The Examiner also states,
The claimed range is improperly narrowed to exclude only a
lower-value portion of the envisioned possible thicknesses, re­
moving a portion of the thickness range that originally appeared
to be equivalently suitable without any explanation in the disclo­
sure as to what makes the newly claimed range distinct from the
originally claimed 0.5—10 mm.
Answer 18.
Appellant argues that the original disclosure provided ranges of “0.5—
10 mm, specifically, 1 to 5 mm, and even more specifically, 2 to 3.5 mm,”
and stated that all “the endpoints are independently combinable with each
other.” Appeal Br. 5 (citing Spec. 46, 101).
Where, as here, a numerical range in the original specification
subsumes a narrowed range recited in a claim, a prima facie case of
noncompliance with the written description requirement must include
“sufficient reason to doubt that the broader described range also describes
the somewhat narrower claimed range.” In re Wertheim, 541 F.2d 257, 264
(CCPA 1976). Because the Examiner improperly places the initial burden on
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Application 14/187,998
Appellant to explain why the Specification describes the 2—10 mm range in
claim 20, we reverse the Examiner’s rejection of claim 20 under 35 U.S.C.
§112, first paragraph.
Appellant does not contest the Examiner’s rejections of claim 11
under 35 U.S.C. § 112, second and fourth paragraphs. See Appeal Br. 6.
Appellant submitted proposed amendments on January 4, 2016, which the
Examiner stated would overcome the rejections, but the Examiner did not
enter the amendments. See id. (citing Advisory Action, Feb. 9, 2016).
Appellant proposes to resubmit the amendment after the Board’s decision, to
overcome the rejections. See id.
Because the rejections are uncontested on their merits, we summarily
affirm the Examiner’s rejections of claim 11 under 35 U.S.C. § 112, second
and fourth paragraphs. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008).
Prior Art Rejections
With respect to the prior art rejections under 35 U.S.C. § 103(a),
Appellant addresses claim 1 and provides no distinct arguments regarding
the other rejected claims. See Appeal Br. 6—12. Therefore, consistent with
37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to independent claim 1.
Claims 2—20 fall with claim 1.
The Examiner’s rejections of claim 1 rely on either Ehbing or
Eberspacher as the primary reference, and on Langmaid as the secondary
reference. Because Ehbing and Eberspacher describe essentially the same
structure for purposes of the rejections, we discuss them together.
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Appeal 2017-004679
Application 14/187,998
Ehbing describes “a process for the preparation of solar modules in
which air inclusions are avoided.” Ehbing 11. Figure 1 of Ehbing is
reproduced below:
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Figure 1 is a cross-sectional view depicting solar module 10, which includes
sandwich element 6, one or more solar cells 3 embedded in adhesive layer 2,
and transparent layer 1, where sandwich element 6 comprises core layer 5
surrounded on either side by outer layer 4. Id. Tflf 30—31. According to
Ehbing, sandwich element 6 provides flexural strength to solar module 10,
and further serves to seal module 10 against external influences. Id. Tflf 37—
38. Ehbing discloses that the outer layers 4 may be made of fibrous
materials soaked in a resin such as polyurethane. Id. 143.
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Appeal 2017-004679
Application 14/187,998
Eberspacher relates to the mounting of photovoltaic device modules.
Eberspacher 11. Figure 4A of Eberspacher is reproduced below:
FIG, 44
Figure 4A depicts an exploded perspective view of a photovoltaic module
that includes flexible top sheet 302, photovoltaic cell array 304, and rigid
backplane 410. Id. Tflf 12, 22, 24. Rigid backplane 410 comprises
honeycomb material 411 surrounded on either side by skins 414 and 416. Id.
125. Eberspacher discloses that “skin 414, 416 may be made of any suitable
lightweight material, e.g.,. . . plastic sheet.” Id. 126.
The Examiner finds that either Ehbing or Eberspacher teaches the
limitations of claim 1, except for the recited composition and thickness of
the “second layer” and the “third layer” (layers 4 of Ehbing and layers 414
and 416 of Eberspacher). See Final Action 8, 15—16. Rather than
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Application 14/187,998
polycarbonate or one of the other materials recited in claim 1, the Examiner
finds that layers 4 in Ehbing are made of a resin-soaked fibrous material, and
layers 414 and 416 of Eberspacher may be a “plastic sheet.” See id. (citing
Ehbing 143; Eberspacher 126).
However, the Examiner finds that Langmaid teaches a solar module
using a flexible, protective polycarbonate back sheet having a thickness of
0.2—0.8 mm. Id. at 8, 16. In light of the prior art, the Examiner determines
that a skilled artisan would have been motivated to use polycarbonate as the
material of layers 4 in Ehbing or layers 414 of 416 of Eberspacher in order
to protect the PV assembly from the outside environment. Id. (citing
Langmaid 142 (teaching that a polycarbonate back sheet “may serve as an
environmental protection layer (e.g. to keep out moisture and/or particulate
matter from the layers above).”)). The Examiner further finds that
polycarbonate is functionally equivalent to the reinforced polyurethane
material in Ehbing, in terms of providing “material plasticity, structural
rigidity to the honeycomb support layer, and environmental protection.”
Answer 19.
Appellant argues that Ehbing “clearly states that their fibrous
polyurethane can prevent the ingress of water and oxygen,” and therefore
“there is no motivation for one to replace the outer layers (4) with the
polycarbonate of Langmaid.” Appeal Br. 7. This argument is not persuasive
of reversible error in the Examiner’s rejection. Ehbing’s teaching that
reinforced polyurethane is suitable to prevent ingress of water and oxygen
does not teach away from the use of polycarbonate for a similar purpose.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that prior art
disclosure of an alternative to a claim element does not teach away where
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Appeal 2017-004679
Application 14/187,998
the “disclosure does not criticize, discredit, or otherwise discourage the
solution claimed.”).
Appellant next argues that Langmaid discloses a laundry list of
materials, only one of which is polycarbonate, and none of which is a
reinforced fibrous material such as disclosed in Ehbing. See Appeal Br. 8.
These arguments are not persuasive of reversible error. Langmaid discloses
polycarbonate as a suitable material for a layer that protects a PV module
from the environment. See Langmaid 142. That Langmaid also discloses
several other suitable materials, such as fluorinated polymers, does not
negate its teaching with respect to polycarbonate. See Merck & Co. v.
Biocraft Labs., Inc., 874 P.2d 804, 807 (Led. Cir. 1989) (“That the [prior art
reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious.”). Moreover, that Langmaid omits
reinforced fibrous materials does not negate its teaching that polycarbonate
is a suitable material for protecting a PV module assembly from the
environment. See In re Keller, 642 L.2d 413, 425 (CCPA 1981) (“The test
for obviousness is . . . what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Appellant also argues that the Examiner did not specifically motivate
the choice of polycarbonate relative to any of the other materials on
Langmaid’s list, and that a skilled artisan would likely choose a fluorinated
polymer from that list. Appeal Br. 8—9, 11—12. This argument is not
persuasive, because even though there are other alternatives in the art, the
Examiner has shown that a skilled artisan would have had reason to use
polycarbonate. The prior art need not disclose polycarbonate as the best
solution; “all disclosures of the prior art, including unpreferred
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Application 14/187,998
embodiments, must be considered.” In re Lamberti, 545 F.2d 747, 750
(CCPA) (citing In re Mills, 470 F.2d 649 (CCPA 1972)).
Appellant further argues that Langmaid “fails to disclose or suggest
that their back sheet could even be used as a skin layer i[n] a configuration
such as that of Eberspacher.” Appeal Br. 11. The Examiner responds that
“Langmaid teaches the material sheet... for the intended purpose as it is
used in modified Eberspacher/Langmaid,” and “[s]aid modification would be
a simple modification to Eberspacher that would not render the module
inoperable or less effective.” Answer 20-21. The preponderance of the
evidence favors the Examiner’s rationale. Langmaid discloses
polycarbonate as a type of plastic that is suitable for protecting PV module
elements from the environment. Therefore, we find no reversible error in the
Examiner’s determination that a skilled artisan would have had reason to
select polycarbonate as the plastic for skins 414 and 416 of Eberspacher.
Regarding the limitation in claim 1 that the second and third layers
combined are “less than or equal to 1 mm thick,” the Examiner determines
that if two polycarbonate layers each have a thickness of 0.2—0.8 mm as
Langmaid teaches, their combined thickness would be 0.4—1.6 mm, which
overlaps and therefore motivates the range recited in claim 1. Final Action
8—9, 16—18. The Examiner further finds that Langmaid teaches “reducing
the weight and thickness profile of the module.” Id. at 19.
Appellant argues that “there is no indication from [Ehbing or
Eberspacher] that the presently claimed combined thickness of less than or
equal to 1 mm could be successful in achieving a photovoltaic module
assembly with the necessary stiffness and/or flexural strength,” particularly
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Application 14/187,998
because “stiffness and flexural strength decrease with decreasing thickness.”
Appeal Br. 7, 11.
Appellant’s argument is not persuasive of reversible error. Ehbing
and Eberspacher disclose structures that achieve stiffness at least in part
from central honeycomb structures 5 and 411, respectively. Ehbing teaches
that stiffness and flexural strength are a property not just of outer layers 4,
but of sandwich structure 6 as a whole (including core layer 5). See Ehbing
37, 40, 59. Ehbing also teaches minimizing the weight of sandwich
element 6 as a whole (including outer layers 4), consistent with maintaining
flexural rigidity. See id. 159. Moreover, Eberspacher discloses that “even
though both the skin [414, 416] and honeycomb [411] materials are quite
flexible, the resulting composite material can be quite rigid.” Eberspacher
126. Thus, the evidence on this record supports the Examiner’s
determination that a skilled artisan would have considered 0.2—0.8 mm to be
a suitable thickness range for a polycarbonate sheet replacing layers 4 in
Ehbing and layers 414 and 416 of Eberspacher.
For the above reasons, Appellant has not shown reversible error in the
Examiner’s rejections of claims 1—20.
DECISION
The Examiner’s rejection of claim 20 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner’s rejection of claim 11 under 35 U.S.C. § 112, second
and fourth paragraphs, is affirmed.
The Examiner’s rejections of claims 1—20 under 35 U.S.C. § 103(a)
are affirmed.
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Application 14/187,998
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
13