Jason Smith et al.

Patent Trials and Appeals Board

Oct 22, 2020

12711287 - (D) (P.T.A.B. Oct. 22, 2020)

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.
12/711,287 02/24/2010 Jason Smith GARL 200296US02 1453
27885 7590 10/22/2020
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
BECTON, MARTHA M
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/22/2020 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):
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JASON SMITH, MELISSA RUS,
BRIAN LAMBERT, and JOSEPH W. MELLOTT II
____________________

Appeal 2020-000315
Application 12/711,287
Technology Center 3700
____________________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–5, 8, 18, 19, 21–26, 33, 34, and 36. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, “[t]he present invention relates . . . to solar
panels that can be connected to building structures.” Spec. 1, ll. 2–3.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, “[t]he real party in interest . . . is
Garland Industries, Inc.” Appeal Br. 1.
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Below, we reproduce independent claim 1 as illustrative of the appealed
claims, with the argued portion emphasized.
1. A roofing system or siding system having a solar
panel that is secured to a surface of said roof system or siding
system comprising a roofing or siding material having an upper
surface, a solar panel having an upper and lower surface, and a
connection arrangement, said connection arrangement including
first and second connection arrangements, said first and second
connection arrangements are spaced from one another when
said solar panel is secured to said upper surface of said roofing
or siding material, said first and second connection
arrangements each including first and second strips of
connection material, said first strip of connection material of
said first connection arrangement is adhesively connected to
said second strip of connection material of said first connection
arrangement, and said first strip of connection material of said
second connection arrangement is adhesively connected to said
second strip of connection material of said second connection
arrangement;
wherein a first side of said first strip of connection
material of said first connection arrangement is connected to a
surface selected from the group consisting of i) said lower
surface of said solar panel and ii) a top surface of a first upper
panel adhesion platform and wherein a bottom surface of said
first upper panel adhesion platform is connected to said lower
surface of said solar panel;
wherein a first side of said first strip of connection
material of said second connection arrangement connected to a
surface selected from the group consisting of i) said lower
surface of said solar panel and ii) a top surface of a second
upper panel adhesion platform and wherein a bottom surface of
said second upper panel adhesion platform is connected to said
lower surface of said solar panel;
wherein a first side of said second strip connection
material of said first connection arrangement is connected to a
surface selected from the group consisting of i) said upper
surface of said roof or siding material and ii) a top surface of a
first lower roof adhesion platform and wherein a bottom surface
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of said first lower roof adhesion platform is connected to said
upper surface of said roofing or siding material;
wherein a first side of said second strip connection
material of said second connection arrangement connected to a
surface selected from the group consisting of i) said upper
surface of said roof or siding material and ii) a top surface of a
second lower roof adhesion platform and wherein a bottom
surface of said second lower roof adhesion platform is
connected to said upper surface of said roofing or siding
material.
REJECTION AND PRIOR ART
The Examiner rejects claims 1–5, 8, 18, 19, 21–26, 33, 34, and 36
under 35 U.S.C. § 102(a) as anticipated by, or alternatively under
35 U.S.C. § 103(a) as obvious based on, DeLiddo et al. (US 2009/0266400
A1, published Oct. 29, 2009) (“DeLiddo”).2
ANALYSIS
Independent claim 1 recites, in relevant part, a roofing system with a
connection arrangement that includes two strips of connection material, one
strip of connection material connected to a solar panel, the other strip of
connection material connected to something else, where the two strips are
adhesively connected to one another, as emphasized above. Appeal Br.,
Claims App. (“said first strip of connection material of said first connection
arrangement is adhesively connected to said second strip of connection
material of said first connection arrangement.”). Based on our review of the
record, consistent with Appellant’s arguments, the Examiner does not
support adequately that DeLiddo discloses two strips of connection material
adhesively connected to one another, as claimed. See, e.g., Appeal Br. 25

2 After the mailing of the Final Office Action, the Examiner entered
Appellant’s amendment canceling certain claims. See, e.g., Answer 3.
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(“There is no teaching in . . . DeLi[dd]o wherein two adhesive strips are
adhesively connected together to create a connection to cause the solar panel
to be connected to the roofing or siding material.”).
For the reasons discussed above, the Examiner errs when stating that
“[the] Examiner notes the . . . first and second strips of . . . the first . . .
connection arrangement . . . to be adhesively connected together . . . is not
claimed.” Answer 12.
Regardless, to support claim 1’s rejection, the Examiner references
“[t]he arrangement shown in . . . [DeLiddo’s] F[igures] 1 . . . [and] 2 . . . [to]
teach[] . . . two adhesive layers 16 and 18 [sic—14?] secured to the solar
panel and roofing material.” Answer 9–10 (citation omitted). According to
DeLiddo, these figures show “the solar panel . . . has attached to its
underside with adhesive 12 to the hook material 14 of a conventional hook
and loop attachment system. The hook [sic—loop] material 16 is attached
by means of an adhesive layer 18 to the roof system surface 20.”
DeLiddo ¶ 51 (bold omitted). Importantly, however, the Examiner does not
support adequately that, in DeLiddo, an adhesive is used to connect hook
material 14 to loop material 16. Further, the Examiner does not support
adequately that the connection between hook and loop materials is an
adhesive connection (rather than, for example, a mechanical connection).
The Examiner also references DeLiddo’s Figure 8. Answer 4–6.
With respect to this figure, according to DeLiddo:
It would also be possible to assemble and join by any
suitable means a number of adjacent panels 10 to create a wide
array 28, as is depicted in F[igure] 8. As shown there, in this
installation, the individual panels 10 have had the hook
material 14 pre-attached, and the strips 26 of loop material 16
have already been affixed to the roof system surface 20, either
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by use of an intermediate adhesive layer 18 or by directly
embedding the underside of the strips 26 into a layer of material
that has been applied to the surface 20.
DeLiddo ¶ 63 (bold omitted). Again, however, the Examiner does not
support adequately that an adhesive is used to connect hook material 14 to
loop material 16, or that the connection between hook and loop materials is
an adhesive connection.
As discussed above, the Examiner erroneously states that “the . . . first
and second strips of . . . the first . . . connection arrangement . . . adhesively
connected together[] is not claimed.” Answer 12. Regardless, according to
the Examiner, “DeLiddo expressly teaches in paragraph [0094] arrangement
alternatives where first and second connection arrangements are adhesively
connected together.” Id. (square brackets in original). Based on our review,
however, this portion of DeLiddo does not discloses two strips of connection
material adhesively connected to one another, as claimed.
The cited paragraph of DeLiddo reads, in full:
As shown in F[igure] 24, the end-to-end attachment of
the membranes 68 can be accomplished using an underpiece 68
[sic—78?] (similar to that used in some carpet
seam applications) so that the loop material in the ends of the
strips 70, 72 and 74 is not damages when the membranes 68 are
attached end to end.
DeLiddo ¶ 94 (bold omitted). Based on our reading, this paragraph of
DeLiddo does not disclose anything about alternative arrangements using
adhesive connections.
Based on our review, DeLiddo’s paragraph 95 appears to be more
relevant, stating, inter alia, “[a]s shown in F[igure 25,] . . . panel 86 is
attached to . . . upper surface 90 of the tray bottom by any suitable means,
which could include adhesive or hook and loop material”; “[t]he attachment
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between . . . solar panel 86 and . . . tray 88 is schematically shown in
F[igure] 27, where . . . panel 86 is attached to . . . tray bottom 90 by either
adhesive or hook and loop material.” DeLiddo ¶ 95 (bold omitted). These
portions of DeLiddo indeed describe an adhesive connection between solar
panel 86 and tray bottom 90—however, there is no description of an
adhesive connection between a strip of connection material on solar panel 86
and a strip of connection material on tray bottom 90. Instead, it appears that
there is an adhesive connection directly between solar panel 86 and tray
bottom 90.
Consequently, the Examiner does not support adequately that
DeLiddo anticipates or renders obvious independent claim 1. Therefore, we
do not sustain the Examiner’s anticipation or obviousness rejection of
claim 1. Each of claims 2–5, 8, 18, 19, 21–26, 33, 34, and 36 either depends
from claim 1 or includes a similar claim recitation. Thus, we also do not
sustain the Examiner’s anticipation or obviousness rejection of claims 2–5,
8, 18, 19, 21–26, 33, 34, and 36, for the same reasons that we do not sustain
claim 1’s rejections.
CONCLUSION
We REVERSE the Examiner’s anticipation and obviousness
rejections.

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In summary:
REVERSED

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–5, 8, 18,
19, 21–26,
33, 34, 36
102(a) DeLiddo 1–5, 8, 18,
19, 21–26,
33, 34, 36
1–5, 8, 18,
19, 21–26,
33, 34, 36
103(a) DeLiddo 1–5, 8, 18,
19, 21–26,
33, 34, 36
Overall
Outcome
1–5, 8, 18,
19, 21–26,
33, 34, 36