Ex Parte Buller

Patent Trial and Appeal Board

Feb 27, 2013

11934327 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/934,327 11/02/2007 Benyamin Buller 011641-5018-US 5463
43850 7590 02/28/2013
MORGAN, LEWIS & BOCKIUS LLP (SF)
One Market, Spear Street Tower, Suite 2800
San Francisco, CA 94105
EXAMINER
YOON, KEVIN E
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
02/28/2013 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
________________

Ex parte BENYAMIN BULLER
________________

Appeal 2011-010307
Application 11/934,327
Technology Center 1700
________________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

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Appeal 2010-010307
Application 11/934,327

3
first, second and third solar panels mounted in an operative position,
each panel including a series of cylindrical parallel photovoltaic surfaces
that are elongated in a common horizontal elongation direction and spaced
apart from each other in a horizontal surface to surface-spacing direction that
is perpendicular to the elongation direction and that are spaced above a
reflective surface, such that each surface has an upward-facing surface
section and a downward-facing surface section, and for each panel, some
downwardly-directed light rays strike the upward-facing photovoltaic
surface sections of the panel and other light rays pass downward between
adjacent photovoltaic surfaces of the panel to be reflected upward by the
reflective surface to strike the downward-facing surface sections of the
photovoltaic surfaces of the same panel, and for yet other light rays to be
reflected by one of the photovoltaic surfaces to strike an adjacent
photovoltaic surface of the same panel;
the first and second panels being spaced apart in a first panel-to-panel
spacing direction by a spacing distance that is 25%-100% of a width of the
first panel in the first panel-to-panel direction, for some downwardly-
directed light rays to pass between the first and second panels and be
reflected upward by the reflective surface to strike the downward-facing
photovoltaic surface sections of the photovoltaic surfaces of the first and
second panels; and
the first and third panels being spaced apart in a second panel-to-panel
spacing direction, perpendicular to the first panel-to-panel spacing direction,
by a spacing distance that is about 35% to about 100% of a width of the first
panel in the second panel-to-panel spacing direction, for some downwardly-
directed light rays to pass between the first and third panels and be reflected
Appeal 2010-010307
Application 11/934,327

4
upward by the reflective surface to strike the downward-facing surface
sections of the photovoltaic surfaces of the first and third panels.
40. The apparatus of claim 38 wherein the second and third panels’
photovoltaic surfaces are aligned in a direction that is perpendicular to the
direction in which the first panel’s photovoltaic surfaces are aligned.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Shimizu JP 11-330523 Nov. 30, 1999
Yoshimura JP 07-312441 Nov. 28, 1995
Sugita JP 2000-294821 Oct. 20, 2000
Jetter US 4,537,838 Aug. 27, 1985
Aylaian US 6,515,217 Feb. 4, 2003

The Examiner maintains, and Appellant appeals, the following
rejections:
1. independent claim 25 and its dependent claims 27-34, 36-38, and
40 as unpatentable under 35 U.S.C. § 103(a) over Shimizu in view of
Yoshimura;
2. claim 26 as unpatentable under 35 U.S.C. § 103(a) over Shimizu in
view of Yoshimura and further in view of Sugita;
3. claim 35 as unpatentable under 35 U.S.C. § 103(a) over Shimizu in
view of Yoshimura and further in view of Jetter;
4. claim 39 as unpatentable under 35 U.S.C. § 103(a) over Shimizu in
view of Yoshimura and further in view of Aylaian.
OPINION
The dispositive issues for the prior art rejections are:
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Application 11/934,327

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Did the Examiner err in determining that the cylindrical photovoltaic
cells of Yoshimura are interchangeable for the flat photovoltaic cells in the
solar cell array of Shimizu as claimed in claim 25?
Did the Examiner err in determining that the claimed alignment of
three solar panels is a duplication of parts and a design choice as claimed in
claim 40?
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections.
The Examiner finds that Shimizu describes a solar panel structure
comprising two panels spaced apart from each other and above a reflective
surface with each panel having photovoltaic surfaces that are struck by light
rays reflected upward by the reflective surface after passing between
adjacent panels. Ans. 6. Shimizu specifically discloses in Drawing 2,
reproduced below, “the relation between the incident light of the sun in the
solar battery device of [the] invention, and mount height and a solar cell
array gap . . . .” Shimizu, Brief Description of the Drawings; para. [0026]:

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The Examiner acknowledges that Shimizu does not specifically teach
a third solar panel and “each panel including a series of cylindrical parallel
photovoltaic surfaces that are elongated in a common horizontal elongation
direction and spaced apart from each other in a horizontal surface-to-
surface-spacing direction that is perpendicular to the elongation direction,
and the first and third panels being spaced apart in a second panel-to-panel
spacing direction, perpendicular to the first panel-to-panel spacing
direction.” Ans. 5-6. The Examiner finds that it would have been obvious
to one of ordinary skill in the art to employ a third solar panel for the reason
that “using an additional solar panel would increase the output voltage.” Id.
at 6.
The Examiner also finds that it would have been obvious to one of
ordinary skill in the art to use the cylindrical solar cell elements of
Yoshimura, for the advantage of improving power generation efficiency, in
place of the panel with flat bifacial solar cell elements of Shimizu “since
both type[s] of solar panel[s] can absorb light coming from all directions and
it is well-known in the art to have a series of cylindrical parallel photovoltaic
surfaces spaced apart for the ray passing between the adjacent photovoltaic
surfaces to be reflected from the reflective surface (Fig. 4).” Id. Figure 4 of
Yoshimura illustrates light rays passing between spaced cylindrical parallel
photovoltaic surfaces (111) and up from a reflective surface (23):

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Appellant argues that one skilled in the art would not have spaced
apart photovoltaic surfaces within each panel in Shimizu’s solar panel
system because to do so would be “redundant” of the spaced apart solar
panels of Shimizu and also “counterproductive” since some reflected light
would pass upward between adjacent cylindrical surfaces and escape into the
air. App. Br. 6-7.
Appellant also argues that the combination of Shimizu’s spaced
panels with Yoshimura’s spaced cylindrical photovoltaic cells would not
result in the invention as claimed in claim 25 because Yoshimura’s
photovoltaic surfaces 111 are “functionally linked” to Yoshimura’s
contoured reflector 23 below the photovoltaic surfaces. Id. at 7. Appellant
asserts without explanation that Yoshimura’s “reflector 23 would preclude
claim 25’s requirement for light passing between adjacent panels to be
reflected upward and strike the photovoltaic surfaces from below.” Id.
Appellant further argues, without explanation or support, that it is
unlikely that one skilled in the art would (1) add a third panel, (2) space the
panels apart, (3) replace “non-spaced-apart photovoltaic surfaces with
Yoshimura’s cylindrical, spaced-apart photovoltaic surfaces” and (4) align
the photovoltaic surfaces “parallel to others within the same panel but
perpendicular to those in adjacent panels” absent hindsight. Id. at 7-8.
In the Reply Brief, Appellant maintains the argument that “the
Examiner may not selectively incorporate Yoshimura’s panel into Shimizu,
without also incorporating Yoshimura’s reflector that Yoshimura
characterizes as central to his panel’s operation and that would preclude a
limitation of claim 25.” Reply Br. 2.
We do not find the Appellant’s arguments persuasive.
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A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
We have reviewed the Final Office Action and Answer and find the
Examiner provided detailed facts and reasons in support of the obviousness
determination. In our view, the Examiner has not relied on unsupported,
conclusory statements, but has fully explained the motivation to modify
Shimizu solar panel apparatus based on the teachings of Yoshimura. (See,
e.g., Ans. 5-10, 12-14). Appellant has not explained, with any degree of
specificity, why the Examiner’s reasons to modify the references are not
supported by the evidence of record. In the absence of a more detailed
explanation, we are not convinced of error on the part of the Examiner in
concluding the claimed invention would have been obvious within the
meaning of 35 U.S.C. § 103(a). 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.” (citing Ex Parte
Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential) (“The panel then
reviews the obviousness rejection for error based on the issues identified by
appellant, and in light of the arguments and evidence produced thereon.”))).
As explained by the Examiner, the reason for substituting the
cylindrical photovoltaic cells of Yoshimura for the flat solar panels of
Shimizu is for improved power generation efficiency. Ans. 6. Appellant has
not provided any evidence to rebut the stated advantage of cylindrical
photovoltaic cells over flat solar panels.
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Appellant also has not provided any evidence to rebut the reasons
provided by the Examiner for adding a third solar panel, namely, to increase
the output voltage (see Ans. 6, 13) and for aligning the three panels to be in
a second direction, perpendicular to the first direction in order to avoid
shading by the first panel. (see Ans. 6-7).
Appellant does not challenge the Examiner’s response that the
incorporation of Yoshimura’s reflector would not preclude a limitation of
claim 25. Specifically, the Examiner explains that even if the contoured
reflector of Yoshimura is incorporated under each solar panel in the
combination of Yoshimura with Shimizu, the reflector of Shimizu between
the solar panels would reflect the light passing between adjacent panels.
Ans. 13. Accordingly, that finding is deemed undisputed.
The above-described combination of the cylindrical photovoltaic
surfaces of Yoshimura in the place of the flat bifacial solar cell elements of
Shimizu is no more than a combination of familiar elements according to
known methods yielding no more than predictable results likely to render a
claim obvious. KSR, 550 U.S. at 416. Moreover, Yoshimura suggests that
cylindrical photovoltaic surfaces above a reflective surface yield greater
efficiency (see Ans. 6). Appellant provides no evidence to rebut the
Examiner’s finding that it would have been obvious to one of ordinary skill
in the art to employ a third solar panel for the purpose of increasing voltage
output (see id.). Therefore, we find no error in the rejection of claim 25 as
obvious in view of Shimizu in view of Yoshimura.
Having found that it would have been obvious to replace the flat solar
cells in Shimizu’s spaced-apart solar panels with Yoshimura’s spaced-apart
series of cylindrical solar cells and increase the number of solar panels from
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two to three, supra, Appellant’s argument with respect to dependent claim 40
boils down to whether the claimed perpendicular orientation of the series of
cylindrical solar cells in adjacent solar panels is obvious over Shimizu in
view of Yoshimura. Given that the square shape of the solar panels
disclosed in Shimizu, there are only two choices for the directional
orientation of solar panels substituted with cylindrical solar cells: parallel or
perpendicular. As the Examiner finds, choice of orientation is within the
purview of one of ordinary skill in the art and depends on the application or
environment in which the solar panels are installed (see Ans. 10). In the
above of any evidence of unexpected results offered by Appellant, we find
no error in the rejection of claim 40 as obvious in view of Shimizu in view
of Yoshimura.
CONCLUSION
In sum, for the reasons expressed in the Answer and above, we find a
preponderance of the evidence favors the Examiner’s conclusion of
obviousness. Therefore, we affirm the rejection of claims 25 through 40 as
being unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED

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