Ex Parte Clevenger et al

Patent Trial and Appeal Board

Oct 25, 2018

12887156 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/887, 156
82509 7590
Kunzler, PC.
50 W. Broadway
10th Floor
FILING DATE
09/21/2010
10/29/2018
Salt Lake City, UT 84101
FIRST NAMED INVENTOR
Lawrence A. Clevenger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DE920090031US 1 1952
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
docket@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE A. CLEVENGER, TIMOTHY J. DALTON,
MAXIME DARNON, RAINER KRAUSE, GERD PFEIFFER,
KEVIN PRETTYMAN, CARL J. RADENS, and BRIAN C. SAPP
Appeal2018---001680
Application 12/887,156
Technology Center 1700
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
December 19, 2016 decision rejecting claims 1, 6, 9, 10, and 12 ("Non-Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest (Appeal Br. 2).
Appeal2018-001680
Application 12/8 87,156
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to a photovoltaic module with a
plurality of photovoltaic cells and also a controllable protection layer for
reducing the infrared radiation absorbed by the photovoltaic module (Spec.
,r 14 ). The controllable infrared protection layer has a first state and a
second state; when the protection layer is in the first state, the transmission
of infrared radiation to the photovoltaic cells is higher than when the
protection layer is in the second state (id.). Further details of the claimed
invention are set forth in representative claim 1, which is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A photovoltaic module comprising:
a plurality of photovoltaic cells, wherein the photovoltaic
module has a front side and a back side, the plurality of
photovoltaic cells producing electricity when the front side of
the photovoltaic module is illuminated;
a glass substrate coupled to the front side of the
photovoltaic module;
a controllable infrared protection layer for reducing the
infrared radiation absorbed by the photovoltaic module,
wherein the controllable infrared protection layer has a first
state and a second state, wherein when the infrared protection
layer is in the first state the transmission of infrared radiation to
the photovoltaic cells is higher than when the infrared
protection layer is in the second state, the controllable infrared
protection layer comprising a polymer layer with reflective
liquid crystals, the polymer layer comprising a top electrode
and a bottom electrode, wherein one of the top electrode and the
bottom electrode is adjacent to the glass substrate, wherein the
polymer layer is in the first state when the top electrode and the
bottom electrode are at the same potential and the polymer layer
is in the second state when a switching voltage is applied across
the top electrode and the bottom electrode, wherein light of the
visible wavelength travels through the polymer layer and the
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Appeal2018-001680
Application 12/8 87,156
glass substrate to reach the plurality of photovoltaic cells in the
first state and in the second state;
a protection switching means for switching the
controllable infrared protection layer between the first state and
the second state, the protection switching means comprising a
voltage supply adapted for applying a switching voltage to the
top electrode and the bottom electrode.
REJECTIONS
I. Claims 1, 6, 9, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sinsabaugh2 in view of Tamir. 3
II. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Sinsabaugh in view of Tamir and further in view of Wada. 4
DISCUSSION
Rejection I. The Examiner finds that Sinsabaugh discloses a
photovoltaic module comprising (1) a plurality of photovoltaic cells, (2) a
glass substrate coupled to the front side of the photovoltaic module, (3) a
controllable protection layer which includes a top electrode, a bottom
electrode, and reflective liquid crystals, and ( 4) a protection switching means
comprising a voltage supply (Non-Final Act. 3, citing Sinsabaugh, FIGS. 1-
3, 3:24--25, 3:33--49). The Examiner further finds that Sinsabaugh teaches
that the orientation of the liquid crystals can be controlled to optimize the
ability to reflect selected radiation wavelengths and absorb others (Non-
Final Act. 3, citing Sinsabaugh 1:15-30, 3:44--49). The Examiner also finds
2 Sinsabaugh, US 7,973,236 B2, issued July 5, 2011.
3 Tamir et al., WO 2008/155767 A2, published December 24, 2008.
4 Wada et al., JP 10-080167 A, published March 24, 1998.
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Application 12/8 87,156
that while Sinsabaugh does not specifically disclose using the controllable
protection layer to reduce infrared radiation absorbed by the photovoltaic
module, Sinsabaugh uses the same liquid crystals as disclosed by
Appellants, which are, therefore, capable of functioning as an infrared
protection layer (Non-Final Act. 4).
The Examiner further finds that:
Sinsabaugh does not [teach] two states of operation of the
controllable protection layer such that when the top and bottom
of the electrodes are at the same potential, the polymer layer ( or
the liquid crystal material) is in a first state and has a higher
transmission of infrared than in a second state when a switching
voltage is applied, and light passes through in the first and
second state.
(Non-Final Act. 4--5). The Examiner finds that Tamir teaches a system in
which the orientation of a liquid crystal material is controlled by application
of a voltage applied across the electrode, such that when a high voltage is
applied across the electrode, the liquid crystal material allows light to pass
through (Non-Final Act. 5, citing Tamir FIG. 2a, and p. 27). Therefore,
according to the Examiner:
[I]t would have been obvious to one skilled in the art at the time
the invention was made to have operated the controllable
protection layer of Sinsabaugh as taught by Tamir et al. such
that the first state is the transmissive state when more light pass
through and the voltage across the electrodes to be zero ( or the
potentials of the two electrodes are the same) and the second
state is the reflective state when less light pass through and
there is a voltage across the electrodes and light is still pass
through in both states, because such operation would involve
nothing more than assigning operating conditions to the
transmissive and reflective states taught by Sinsabaugh.
(Non-Final Act. 5).
4
Appeal2018-001680
Application 12/8 87,156
Appellants contend that Sinsabaugh discloses a system in which the
liquid crystals are either entirely reflective or entirely transmissive and does
not disclose being able to transmit some wavelengths while reflecting others
(Appeal Br. 5---6). Appellants argue that their claims require a layer, which
permits visible light to pass through while blocking infrared light and that
Sinsabaugh does not teach such a layer (Appeal Br. 6-7).
In particular, Appellants point to the disclosure in Sinsabaugh (3:36-
44) that its system switches between transmissive and reflective states and
makes no mention of transmission of certain wavelengths (i.e. visible light),
but not others. Appellants also argue that Sinsabaugh's FIGS. 2A and 2B
show complete reflection of all radiation when the shutter is in the reflective
state:
10
~
'
FIG-2A
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Appeal2018-001680
Application 12/8 87,156
Sinsabaugh's FIGS. 2A and 2B show transmission of solar radiation when
the optical shutter is in transmissive mode and reflection when the optical
shutter is in reflective mode.
Appellants' arguments are persuasive. While the rejection relies on
Tamir to teach that a liquid crystal material can be manipulated to permit
greater and lesser amounts of light through depending on the voltage applied
across an electrode, the Examiner does not find that Tamir selectively
reflects infrared light and transmits visible light.
Instead, the Examiner relies on a finding that Sinsabaugh discloses the use
of cholesteric liquid crystals, which are also used in Appellants' system and
Appellants disclose as having the claimed required transmissive/reflective
properties (Ans. 3--4). Therefore, according to the Examiner, Sinsabaugh's
system inherently has the claimed transmissive/reflective properties (Ans. 7).
To establish inherency, the extrinsic evidence "must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill." "Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
Moreover, that a certain result or characteristic may occur or be present in
the prior art is not sufficient to establish the inherency of that result or
characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)
(reversed rejection because inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art).
In this instance, Sinsabaugh teaches that its optical shutter can either
be on (i.e. reflective) or off (i.e. transmissive) (Sinsabaugh, 1 :57-60), and
provides drawings and other disclosure which do not provide any suggestion
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Application 12/8 87,156
of the claimed transmissive/reflective properties. While there may be other
factors which permit the cholesteric liquid crystals to have the claimed
transmissive/reflective properties, 5 because Sinsabaugh's disclosure does not
suggest these properties are present and, in fact, suggests that it does not
have such properties, we are persuaded that the Examiner reversibly erred in
finding the claimed properties disclosed by Sinsabaugh. 6
The Examiner also argues that the transmissive/reflective properties of
the infrared protection layer are not structural limitations and, therefore, not
pertinent to the patentability of the structural claims. We disagree. The
claims specifically recite that the controllable infrared protection layer have
the transmissive/reflective properties. Therefore, these properties are
"structural" and pertinent to the patentability of the claims.
Accordingly, based on the preponderance of the evidence of record,
we determine that Appellants have demonstrated reversible error in the
rejection of claim 1. The remaining claims either depend from claim 1, or
5 Appellants state that "the amounts, mixtures, quantities, measurements,
configurations, compositions, and/or the like of the reflective liquid crystals,
and any other materials included in the polymer layer would be known
beforehand in order to control the polymer layer to switch between the first
and second states to selectively allow or reflect light waves having various
wavelengths (e.g., visible light wavelengths v. infrared light wavelengths)."
Reply Br. 2. These conditions do not appear to be addressed in any detail in
the Specification. Therefore, the Examiner and Appellants may wish to
address enablement of the claims in the absence of these identified
parameters.
6 The Examiner provides a technical explanation of why Sinsabaugh's
system should have the claimed transmissive/reflective properties (Ans. 4--
7), but does not persuasively explain why Sinsabaugh's disclosure suggests
the claimed properties.
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Application 12/8 87,156
have similar limitations. Therefore, we reverse the rejection of those claims
for the same reasons.
CONCLUSION
We REVERSE the rejection of claims 1, 6, 9, and 12 under
35 U.S.C. § 103(a) as unpatentable over Sinsabaugh in view ofTamir.
We REVERSE the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Sinsabaugh in view of Tamir and further in view of Wada.
REVERSED
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