KING SAUD UNIVERSITY

Patent Trials and Appeals Board

Aug 19, 2020

2019005866 (P.T.A.B. Aug. 19, 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.
15/098,242 04/13/2016 MANAL AHMED GASMELSEED AWAD 32693.87 9279
37833 7590 08/19/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
TRIVISONNO, ANGELO
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
litman@4patent.com
mbashah@nathlaw.com
uspto@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANAL AHMED GASMELSEED AWAD,
AWATIF AHMED HENDI, and
KHALID MUSTAFA OSMAN ORTASHI1
Appeal 2019-005866
Application 15/098,242
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
flexible solar panel, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as “KING SAUD
UNIVERSITY, RIYADH, SAUDI ARABIA.” Appeal Br. 3. We use the
word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a).
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Application 15/098,242

2
STATEMENT OF THE CASE
The “invention relates to solar cells, solar panels and the like, and
particularly to a flexible solar panel including an extract of chard (B.
vulgaris subsp. cicla).” Spec. ¶ 1. In a working example, the Specification
describes making an extract of B. vulgaris subsp. cicla leaves by blending
the leaves with water and centrifuging “to produce [a] green colored B.
vulgaris subsp. cicla extract.” Id. ¶ 9. “Solar panels produced” with the B.
vulgaris subsp. cicla extract were “exposed to light” and “tested for current
generation.” Id. ¶ 11. The results showed that the “current generation and
induced potential difference of the green flexible solar film is due to the
presence of chloroplasts in the B. vulgaris subsp. cicla extract.” Id. ¶ 12.
Claims 1–3 are on appeal. Claim 1, reproduced below, is illustrative:
1. A flexible solar panel, comprising a polymer matrix and a
plant extract completely incorporated in the polymer matrix, the
plant extract being a green-colored extract of B. vulgaris subsp.
cicla, wherein the extract includes chloroplasts.
OPINION
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as obvious based
on Ochiai,2 Pavoković,3 and Yang4 (Final Action5 7). Claim 3 stands
rejected under 35 U.S.C. § 103 as obvious based on Ochiai, Pavoković,

2 Hideo Ochiai et al., Photocurrent by Immobilized Chloroplast Film
Electrode, Agric. Biol. Chem. 43(4):881–883 (1979).
3 Dubravko Pavoković et al., Complex Biochemistry and Biotechnological
Production of Betalains, Food Technol. Biotechnol. 49(2):145–155 (2011).
4 Yujie Yang et al., Preparation of Photostable Chlorophyll/PVA Film,
Advanced Materials Research, Vols. 239–242:2707–2710 (2011).
5 Office Action mailed October 10, 2018.
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Yang, and Wong6 (Final Action 9). The same issue is dispositive for both
rejections.
The Examiner finds that Ochiai teaches a solar panel comprising a
polymer matrix of polyvinyl alcohol (PVA) and “a plant extract completely
incorporated in the polymer matrix wherein the extract includes green-
colored chloroplasts.” Final Action 7. The Examiner acknowledges that
Ochiai does not disclose that “the plant extract is a green-colored extract of
B vulgaris subsp. cicla,” but finds that “PAVOKOVIC teaches that
betalains, such as those from B. vulgaris subsp. cicla (Swiss chard), are
useful as ‘natural pigments’ in solar cells.” Id.
The Examiner finds that Yang teaches that incorporating chlorophyll-
containing plant extracts in a PVA polymer matrix stabilizes the extracts
against light- and oxygen-induced damage. Id. at 7–8. The Examiner finds
that Yang also teaches that “extracts may be produced by cleaning the plant
leaf material and grinding the material together with a solvent.” Id. at 8.
The Examiner concludes that it would have been obvious “to modify
OCHIAI and add to the photosensitive plant-derived composition betalains
from plants such as B. vulgaris subsp. cicla as taught by PAVOKOVIC
because betalain extracts from this cultivar are known to have relatively high
photoactive conversion efficiencies.” Id. at 8. The Examiner also concludes
that it would have been obvious “to further modify OCHIAI and prepare the
chloroplast/PVA film according to the methods taught by YANG to produce

6 D. Wong et al., Excitation Energy Transfer among Chlorophyll a
Molecules in Polystyrene: Concentration Dependence of Quantum Yield,
Polarization and Lifetime of Fluorescence, Z. Naturforsch 33c:863–869
(1978).
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a green-colored extract containing chlorophyll because this method allows
for effective isolation of the chlorophyll components from the harvested
plant material.” Id.
Appellant argues that “[t]he Pavokovic article is directed to the
biochemistry and biotechnology of betalains . . . [which] are classified in
two groups: red-violet betacyanins and yellow betaxanthins.” Appeal Br.
10–11. Appellant argues that “although Pavokovic may suggest the usage of
betalains in solar panel construction, it does not teach the usage of a green,
chloroplast-containing extract of B. vulgaris subsp. [cicla] used in a DSSC
[dye-sensitized solar cell].” Id. at 11.
We agree with Appellant that the Examiner has not adequately shown
that the claimed invention would have been obvious based on the cited
references. We begin with “a key legal question—what is the invention
claimed?” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567 (Fed.
Cir. 1987). “Claim interpretation . . . will normally control the remainder of
the decisional process.” Id. at 1567–68. “[T]he PTO must give claims their
broadest reasonable construction consistent with the specification.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Claim 1 recites “a plant extract . . . , the plant extract being a green-
colored extract of B. vulgaris subsp. cicla, wherein the extract includes
chloroplasts.”
As we understand it, the Examiner interprets this limitation to
encompass any combination of plant extracts, as long as the final
combination (a) is green-colored, (b) includes a B. vulgaris subsp. cicla
extract, and (c) includes chloroplasts. For example, the Examiner states that
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the rejection of record does not rely on Pavokovic for teaching
the entirety of the claimed plant extract. . . . Ochiai teaches a
plant extract that is green and includes chloroplasts. . . . The
Examiner relies on the Pavokovic reference only to teach that
betalain extracts of B. vulgaris subsp. cicla are useful as natural
pigments in solar cells to convert radiant energy into electric
energy.
Ans. 5. See also id. at 6: “[E]ven if the betalains of B. vulgaris subsp. cicla
are colors other than green, the final product created from the combination
of the prior art references still contains a plant extract comprising the green-
colored chlorophyll chloroplasts taught by Ochiai because these betalains are
added to Ochiai’s plant-extract composition.”
We conclude that this interpretation is broader than is reasonable,
when the claim language is read in light of the Specification. The
Specification states that the Field of the Invention relates “particularly to a
flexible solar panel including an extract of chard (B. vulgaris subsp. cicla).”
Spec. ¶ 1. At no point does the Specification discuss extracts from any plant
other than B. vulgaris subsp. cicla. See id. ¶¶ 3, 5–7. The Specification states
that “[i]n order to make the flexible solar panel, a green colored extract of B.
vulgaris subsp. cicla is first prepared,” and then mixed with a polystyrene
solution. Id. ¶ 6. “Alternatively, polyvinyl alcohol (PVA) . . . may be added
to a first amount of B. vulgaris subsp. cicla extract until completely
dissolved to form a first mixture. Then, a second amount of the B. vulgaris
subsp. cicla extract is added.” Id. ¶ 7. Each of the working examples uses an
extract from B. vulgaris subsp. cicla, not from any other plant and not mixed
with any other plant extract. See id. ¶¶ 9–17.
Thus, when we interpret the claim language in light of the
Specification, we conclude that the broadest reasonable interpretation of the
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limitation “the plant extract being a green-colored extract of B. vulgaris
subsp. cicla, wherein the extract includes chloroplasts” requires an extract
from B. vulgaris subsp. cicla that itself is green-colored and also contains
chloroplasts; i.e., the chloroplasts are derived from B. vulgaris subsp. cicla.
In other words, “being” in the quoted limitation is construed to mean
“consisting of”: the plant extract consists of a green-colored extract of B.
vulgaris subsp. cicla, wherein the extract includes chloroplasts. To interpret
the quoted limitation to encompass a mixture of plant extracts would be
inconsistent with the Specification’s disclosure.
The Examiner has not pointed to any disclosure in the cited references
of a green-colored extract from B. vulgaris subsp. cicla that includes
chloroplasts, and no such disclosure is apparent to us. Ochiai appears to state
that its chloroplasts were isolated from spinach, and suggests that a
thermophilic alga may also be a suitable source of chloroplasts. See Ochiai
883, left col. (“[T]he chloroplasts isolated from spinach are not always the
best source. . . . [A] strain of thermophylic [sic] alga . . . is a suitable
replacement for spinach.”). Pavoković discloses that B. vulgaris subsp. cicla
produces betaxanthins and betacyanins but does not discuss chloroplast-
containing extracts from B. vulgaris subsp. cicla. See Pavoković 148, Table
1. Yang discusses chlorophyll, not chloroplasts, and extracted its chlorophyll
from spinach, not B. vulgaris subsp. cicla. See Yang 2708 (“Chlorophyll
extraction”).
Thus, the Examiner has not shown that the plant extract required by
the claims—a green-colored, chloroplast-containing extract from B. vulgaris
subsp. cicla—would have been obvious based on the cited references, or that
the prior art would have provided a reason to use such an extract in the
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claimed flexible solar panel. We therefore reverse the rejection of claims 1
and 2 under 35 U.S.C. § 103 based on Ochiai, Pavoković, and Yang. The
Examiner has not pointed to any disclosure in Wong that makes up for the
deficiency discussed above. See Final Action 9. We therefore reverse the
rejection of claim 3 under 35 U.S.C. § 103 based on Ochiai, Pavoković,
Yang, and Wong for the same reason.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 103 Ochiai, Pavoković,
Yang
1, 2
3 103 Ochiai, Pavoković,
Yang, Wong
3
Overall
Outcome
1–3

REVERSED