Ex Parte PAWLIK et al

Patent Trial and Appeal Board

Nov 21, 2018

13649616 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/649,616 10/11/2012 Andreas PAWLIK
22850 7590 11/26/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
405388US99 8224
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS PAWLIK, MARTIN WIELPUETZ,
and HARALD HAEGER
Appeal2017-003957
Application 13/649,616
Technology Center 1700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In this Decision, we refer to the Specification filed October 11, 2012
("Spec."), the Final Office Action dated March 31, 2016 ("Final Act."), the
Appeal Brief filed September 29, 2016 ("Appeal Br."), the Examiner's
Answer dated November 16, 2016 ("Ans."), and the Reply Brief filed
January 5, 2017 ("Reply Br.").
Appeal2017-003957
Application 13/649,616
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 5-8, 12, and 20-23. 3 We have jurisdiction
under 35 U.S.C. § 6(b). A hearing was held on November 15, 2018. 4
We REVERSE.
The claims are directed to a multilayer film with polyamide and
polyester layers for the production of photovoltaic or solar modules.
Spec. 1, 11. 10-12. Claim 1, reproduced below, is illustrative of the claims
on appeal.
1. A multilayer film, comprising, in the order listed:
a) a first layer of from 15 to lOOµm in thickness having a
composition which comprises a light reflecting filler and at
least 3 5% by weight of polyamide based on the weight of the
composition of the first layer;
c) a second layer of from 100 to 500 µm in thickness
having a composition which comprises a polyamide, at least
one of a reinforcing filler and a light reflecting filler and at least
35% by weight of a thermoplastic polyester based on the weight
of the composition of the second layer;
e) a third layer of from 15 to lOOµm in thickness having a
composition which comprises at least one of a reinforcing filler
and a light reflecting filler and at least 35% by weight of
polyamide based on the weight of the composition of the third
layer;
wherein
2 Appellants identify the real party in interest as Evonik Degussa GmbH.
Appeal Br. 1.
3 Claims 2--4, 9-11, and 17-19 were previously canceled. Claims 13-16 are
withdrawn from consideration by the Examiner as drawn to non-elected
species. Non-Final Office Action dated April 22, 2014, 3.
4 The record will include a transcript of the hearing when it becomes
available.
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Appeal2017-003957
Application 13/649,616
the thickness of the first layer is independent of the
thickness of the third layer,
the compositions of the first and third layers each further
comprise 0.1 to 60% by weight of a polyamine-polyamide graft
copolymer, or
the composition of the second layer further comprises 0.1
to 30% by weight of polyamine-polyamide graft copolymer;
with the proviso that the polyamine-polyamide graft
copolymer comprises as copolymerized monomers:
0.5 to 25% by weight, based on the weight of the graft
copolymer, of a polyamine having at least 4 nitrogen atoms and
at least one polyamide-forming unit selected from the group
consisting of a lactam, an co-aminocarboxylic acid and an
equimolar combination of a diamine and a dicarboxylic acid.
Appeal Br. 11 (Claims App.).
DISCUSSION
The Examiner maintains the rejection of claims 1, 5, 6, 8, 12, and 20-
23 under pre-AIA 35 U.S.C. § I03(a) over Muckenhuber
(US 2010/0059105 Al, published March 11, 2010) in view of Schueler et al.
(US 2002/0120076 Al, published August 29, 2002) ("Schueler"), Hu et al.,
Improving gas barrier of PET by blending with aromatic polyamides, 46
Polymer 2685-2698 (2005) ("Hu"), Blong et al. (US 2008/0216889 Al,
published September 11, 2008) ("Blong"), Gaston et al.
(US 2011/0100438 Al, published May 5, 2011) ("Gaston"), Meakin et al.
(US 2011/0083716 Al, published April 14, 2011) ("Meakin"), and Depine et
al. (US 2009/0151774 Al, published June 18, 2009) ("Depine"). Ans. 2-15.
The Examiner also maintains the rejection of claim 7 under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Muckenhuber, Schueler, Hu, Blong,
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Appeal2017-003957
Application 13/649,616
Gaston, Meakin, Depine, and Fujita et al. (US 2004/0023049 Al, published
February 5, 2004) ("Fujita"). Id. at 15-16.
The Examiner finds that Muckenhuber discloses a solar cell module
with a backsheet disposed on the backside of the solar module.
Muckenhuber ,r,r 13-16, Fig. 4. The Examiner finds that the backsheet
depicted in Muckenhuber's Figure 4 includes: a carrier layer made of
polyethylene terephthalate (PET) (13) corresponding to claim 1 's second
layer, and two polyamide layers (12) sandwiching the carrier layer (13)
corresponding to claim 1 's first and third layers. Final Act. 6-7 ( citing
Muckenhuber ,r 16, Fig. 4). Because Muckenhuber discloses that the first
and third layers (12) are formed of polyamide and the carrier layer is formed
of PET, the Examiner assumes the respective layers are formed "solely [ ofJ
polyamide and PET" resulting in each of the layers including the polyamide
or PET in an amount greater than 35% by weight as required by claim 1. Id.
at 7. The Examiner, however, acknowledges that Muckenhuber does not
disclose "the composition of the second layer further comprises 0.1 to 30%
by weight of polyamide-polyamide graft copolymer." Id. To account for
this deficiency, the Examiner relies on Schueler and Hu. Id. at 7-9.
The Examiner finds that Schueler discloses that adding a polyamide-
polyamide graft copolymer, in an amount of 0.1 to 20 parts by weight, to a
polyester composition improves flowability and mechanical properties. Id.
at 7 ( citing Schueler ,r 11 ). The Examiner finds that because Muckenhuber
discloses that the carrier layer is used to guarantee mechanical stability of
the cell (Muckenhuber ,r 3), improving mechanical performance properties
would be advantageous to Muckenhuber's design. Id. at 8. Based on those
findings, the Examiner concludes that it would have been obvious to one of
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Appeal2017-003957
Application 13/649,616
ordinary skill in the art to add Schueler' s polyamine-polyamide graft
copolymer to Muckenhuber' s thermoplastic polyester carrier layer because
"such an addition would improve flowability and mechanical properties of
the carrier." Final Act. 8 ( citing Schueler ,r 11 ).
The Examiner finds that Hu discloses adding polyamide to a PET
layer in an amount of 10% by weight improves gas barrier properties of the
layer. Id. at 9 (citing Hu, Abstract). Although Hu is not directed at a solar
module backsheet, the Examiner finds that "gas barrier properties are known
to be advantageous in the solar cell backsheet art as such barrier properties
may prevent cell degradation over time." Id. Thus, the Examiner
determines that Ru's teachings would be applicable to a solar cell module
backsheet, and finds that based on Ru's teachings, it would have been
obvious for one of one of ordinary skill in the art to add 10 weight percent
polyamide to Muckenhuber's PET carrier layer "to improve gas barrier
properties." Id. ( citing Hu, Abstract).
Appellants argue that Schueler is directed to free-flowing polyester
compositions for injection molding of small components for electronics,
whereas Muckenhuber is directed to multi-layer films prepared by
lamination or extrusion. Reply Br. 2; Appeal Br. 5. Appellants argue that
the Examiner has not established that improved flowability would have been
advantageous in preparing multi-layer films as described in Muckenhuber.
Appeal Br. 5. Accordingly, Appellants contend that one of ordinary skill in
the art would not have been motivated to add Schueler's polyamine-
polyamide graft copolymer to Muckenhuber's PET carrier layer. Id.
Additionally, Appellants argue that although Hu teaches that gas
barrier properties of a PET layer are improved by blending PET with an
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Application 13/649,616
aromatic polyamide and a small amount of sodium 5-sulfoisophthalate as a
compatibilizer (Hu, Abstract), Muckenhuber is silent regarding gas barrier
properties. Reply Br. 2. Appellants therefore argue that there would have
been no motivation to modify Muckenhuber's PET carrier layer based on
Ru's teachings.
Appellants' arguments are persuasive of reversible error. On this
record, the Examiner has not provided an adequate reason supported by
sufficient evidence to explain why a person of ordinary skill in the art would
have looked to Schueler's free-flowing polyester molding compositions
formulated for molding small electronic parts to modify the thermoplastic
polyester (PET) carrier layer used in Muckenhuber's laminated or extruded
multilayer backsheet films for photovoltaic modules. Nor has the Examiner
provided an adequate reason supported by sufficient evidence to explain
why a person of ordinary skill in the art would have looked to Ru's PET
blends having improved gas barrier properties to modify Muckenhuber's
PET carrier layer. On this record, the Examiner's rejections appear to be
based on impermissible hindsight reconstruction to arrive at the claimed
invention. Accordingly, we do not sustain the obviousness rejections of 1,
5-8, 12, and 20-23.
DECISION
For the above reasons, the rejections of claims 1, 5-8, 12, and 20-23
are reversed.
REVERSED
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