Ex Parte Cross

Patent Trial and Appeal Board

Aug 31, 2016

12811193 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/811,193 11/23/2010 Bruce Cross
22852 7590 09/02/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
09826.0016 3283
EXAMINER
GARDNER, SHANNON M
ART UNIT PAPER NUMBER
1757
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE CROSS
Appeal2015-001148
Application 12/811, 193
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
August 28, 2013 decision finally rejecting claims 29-36 and 38--42. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
Appellant's claims are directed to a rectangular photovoltaic panel
(Spec. 1, 9). The photovoltaic panel includes protective elements which
1 Appellant identifies the Real Party in Interest as Solar Slate Limited.
(Amended App. Br. 3).
Appeal2015-001148
Application 12/811, 193
extend along the panel's longer edges and are level with the panel's upper
surface (id. at 2). The panels are designed for rooftop installation with the
longer edges oriented in a direction parallel to the slope of the roof (id. at 7,
9). According to the Specification, the panel's construction and rooftop
orientation allows water and debris to flow across a roof without obstruction
by the panel's protective elements (id.).
Claim 29 is representative and is reproduced below from the Claims
Appendix of the Appeal Brief (key claim limitations shown in italics):
29. A photovoltaic panel, comprising:
a back plate;
App. Br. 17.
a front sheet of substantially transparent or translucent
material;
a photovoltaic cell disposed between the back plate and
the front sheet,
wherein the photovoltaic panel is generally rectangular,
having a pair of opposed longer edges and a pair of
opposed shorter edges; and
protective elements in the form of lips which extend
only from the longer edges of the back plate along only the
longer edges of the front sheet without extending beyond
an uppermost surface of the front sheet.
2
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Application 12/811, 193
REJECTIONS
I. Claims 29, 32, 33, 35, and 36 are rejected under
35 U.S.C. § 103(a) as unpatentable over Tsujii2 in view of
Yoda. 3
II. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsujii in view of Yoda as applied to claim 29 above, and
further in view of Hezel. 4
III. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsujii in view of Yoda as applied to claim 29 above, and
further in view of Lau. 5
IV. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsujii in view of Yoda as applied to claims 29 and 33
above, and further in view of Kay. 6
V. Claims 38 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsujii in view of Yoda as applied to claim 29
above, and further in view ofHecq.7' 8
2 Tsujii et al., JP 2006-165434A, published June 22, 2006. We shall follow
the Examiner and Appellant by referring to a machine translation that was
made of the record in this appeal on February 1, 2013.
3 Yoda et al., US 6,528,718 B2, issued Mar. 4, 2003.
4 RudolfHezel, Novel Back Contact Silicon Solar Cells Designed for Very
High Efficiencies and Low-Cost Mass Production, PROCEEDINGS OF THE
29TH IEEE PVSEC, New Orleans, 2002; 114--117.
5 Lau et al., US 2008/0041436 Al, published Feb. 21, 2008.
6 Kay, US 6,069,313, issued May 30, 2000.
7 Hecq et al., US 4,880,677, issued Nov. 14, 1989.
8 Although the Examiner rejects claims 38 and 39 as unpatentable over the
prior art "as applied to claim 37 ... above" (Final Act. 8; Ans. 7), Appellant
canceled claim 37 by Amendment (filed May 16, 2013).
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Appeal2015-001148
Application 12/811, 193
VI. Claims 40 and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsujii in view of Yoda as applied to claim 29
above, and further in view of Hanoka. 9
VII. Claim 42 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsujii in view of Yoda and Hanoka as applied to claims 29
and 40 above, and further in view of Jones. 10
Because our resolution of this Appeal is based on limitations recited
in independent claim 29, we focus our analysis on that claim.
DISCUSSION
Regarding Rejections I-VII on appeal, the Examiner finds that Tsujii
teaches each of the photovoltaic panel components of claim 29, with the
exception that Tsujii:
is silent as to the photovoltaic panel being generally rectangular
having a pair of opposed longer edges and a pair of opposed
shorter edges, such that first and second protective elements
extend only from the longer edges of the back plate along edges
of only the longer edges of the front sheet.
(Ans. 3, citing Tsujii Fig. IA). The Examiner finds that Yoda discloses the
geometric shape missing from Tsujii, namely, "a solar battery (102) panel
between front (101) and back (103) covers that is fabricated in a
substantially rectangular shape (having a pair of opposed longer sides and
a pair of opposed shorter sides)" (Ans. 3 (emphasis added), citing Yoda
1: 12-31 ). The Examiner determines that it would have been obvious for the
9 Hanoka et al., US 5,986,203, issued Nov. 16, 1999.
10 Jones et al., US 2006/0039135 Al, published Feb. 23, 2006.
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Appeal2015-001148
Application 12/811, 193
ordinary skilled artisan to modify Tsujii's photovoltaic panel as a
substantially rectangular shape, as taught by Yoda (Ans. 4).
The Examiner finds that Tsujii teaches "first (13, left) and second (13,
right) protective elements in the form of lips ... that do not extend beyond
an uppermost surface of the front sheet (12)" (id. at 3, citing Tsujii Fig. IA).
The Examiner further finds Yoda teaches that it is known to provide
protective elements/frame on both the longer edges and shorter edges of a
substantially rectangular photovoltaic panel (Ans. 4, citing Yoda Fig. 7 (104
and 105a-105d) ).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art "to provide protective elements/spacers (13) of Tsujii
on the longer and shorter sides" of a photovoltaic panel, as taught by Yoda
(Ans. 4 (emphasis added); see Yoda Fig. 7 (protective elements 105(a) and
105(c))). The Examiner determines that because the "use of comprising
language in the claim allows for additional elements", protective elements
on the shorter sides of the photovoltaic panel are "not precluded by the
instant claim language" (Ans. 4--5 (emphasis added)).
Appellant argues, inter alia, that the obviousness rejections of claims
29-36 and 38--42 should be reversed because the ordinary skilled artisan
reading claim 29 in light of the Specification would understand that this
claim excludes a photovoltaic panel having protective elements on all four
sides (Reply Br. 2-3).
We give the claim limitation "protective elements ... which extend
only from the longer edges of the back plate along only the longer edges of
the front sheet" its broadest reasonable construction consistent with the
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Application 12/811, 193
Specification. In re IC01V Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007).
Appellant has demonstrated that the Specification exemplifies a panel
including only a pair of protective elements on its longer sides (see App. Br.
12-13, citing Spec. 2:13-14, 7:14--15, 8:8-9, 9:1-2, 9:10-11, and 11:27-
12:2). As such, we disagree with the Examiner's determination that use of
comprising language in the claim allows for the presence of protective
elements on the shorter sides of the photovoltaic panel. The claim language
explicitly states that the protective elements are only present along the
longer edges, and hence not present along the shorter sides ("protective
elements in the form of lips which extend only from the longer edges of the
back plate along only the longer edges of the front sheet," emphasis added).
Thus, we conclude that claim 29 excludes protective elements on the shorter
sides of the photovoltaic panel.
Our decision is limited to the record before us for review. See Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("the
Board's primary role is to review adverse decisions of examiners including
the findings and conclusions made by the examiner"). The Examiner has not
made any findings or conclusions as to why it might have been obvious for
the ordinary skilled artisan to have included protective elements only on the
rectangular photovoltaic panel's longer sides, while excluding these
elements on the panel's shorter sides .11 Therefore, we are constrained to
reverse the Examiner's Rejections I-VII.
Accordingly, we reverse the Examiner's§ 103(a) rejections of claims
29-36 and 38--42.
11 We take no position on this issue in the present opinion.
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Application 12/811, 193
CONCLUSION
We REVERSE the rejection of claims 29, 32, 33, 35, and 36 under 35
U.S.C. § 103(a) as obvious over Tsujii in view of Yoda.
We REVERSE the rejection of claim 30 under 35 U.S.C. § 103(a) as
obvious over Tsujii in view of Yoda, and further in view ofHezel.
We REVERSE the rejection of claim 31under35 U.S.C. § 103(a) as
obvious over Tsujii in view of Yoda, and further in view of Lau.
We REVERSE the rejection of claim 34 under 35 U.S.C. § 103(a) as
obvious over Tsujii in view of Yoda, and further in view of Kay.
We REVERSE the rejection of claims 38 and 39 under 35 U.S.C.
§ 103(a) as obvious over Tsujii in view of Yoda, and further in view of
Hecq.
We REVERSE the rejection of claims 40 and 41under35 U.S.C.
§ 103(a) as obvious over Tsujii in view of Yoda, and further in view of
Hanoka.
We REVERSE the rejection of claim 42 under 35 U.S.C. § 103(a) as
obvious over Tsujii in view of Yoda, Hanoka, and further in view of Jones.
REVERSED
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