Zhang, Jiwen et al.

Patent Trials and Appeals Board

May 15, 2020

12298998 - (D) (P.T.A.B. May. 15, 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.
12/298,998 05/26/2009 Jiwen Zhang 09548.1124USWO 3377
52835 7590 05/15/2020
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIWEN ZHANG and XINYUN ZHANG

Appeal 2019-004566
Application 12/298,998
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL G. MCMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 1–3 and 10–14.2 We heard oral
arguments from the Appellant’s representative on May 11, 2020. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, the Inventors (Application Data Sheet filed
October 29, 2008 at 1). The Appellant identifies “ZHANG, Jiwen” as the
real party in interest (Appeal Brief filed November 20, 2018 (“Appeal Br.”)
at 2).
2 See Appeal Br. 6–9; Reply Brief filed May 22, 2019 (“Reply Br.”) at 1–4;
Non-Final Office Action entered April 6, 2018 (“Non-Final Act.”) at 4–14;
Examiner’s Answer entered March 21, 2019 (“Ans.”) at 4–16.
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I. BACKGROUND
The subject matter on appeal relates to a solar energy device that
gathers light and heat (Specification filed October 29, 2008 (“Spec.”) at 1, ll.
5–6). Figure 1 is reproduced from the Drawings filed October 29, 2008
(some annotations added), as follows:

Figure 1 above depicts an exemplary solar energy device according to the
invention including, inter alia, a solar energy absorbing device 100 disposed
within a hollow body of a bracket structure 300, wherein the solar energy
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absorbing device 100 has a container wall 11 having an upper-wide lower-
narrow geometry structure and at least one cup-shaped bottom structure 12
disposed therein, the container wall 11 being composed of an outer wall 111
and an inner wall 112 that is adjacently close to the outer wall 111, wherein
the inner wall structure has an arc shape or plate shape (id. at 5, l. 17–6, l. 6).
Representative claim 1, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief, as follows:
1. A light-heat gathering solar energy device, comprising:
a bracket structure, which is a structural member having a
hollow body; and
at least one solar energy absorbing device disposed within
the hollow body of the bracket structure, the at least one solar
energy absorbing device including a container wall forming a
hollow body having an upper-wide and lower narrow shape
disposed on a cup-shaped bottom structure, the container wall
having a geometry structure of an upper-wide lower-narrow
shape and disposed on the cup-shaped bottom structure,
wherein the container wall has a layered structure
formed by an outer wall and an inner wall attached to the outer
wall, the inner wall covers an inner side of the outer wall to form
the layered structure, and no spacing is provided at an interface
between the outer wall and the inner wall in the layered structure,
wherein the outer wall includes a light-heat absorbing
layer and the inner wall includes a light reflecting layer,
wherein the inner wall has a structure of an arc shape or a
plate shape to enable inward and downward reflection of a
sunlight beam irradiating from a top to a bottom of the inner wall
to produce a light and/or heat energy gathering effect within the
cup-shaped bottom structure inside the at least one solar energy
absorbing device, and the cup-shaped bottom structure is made
of a plate-shape heater or a plate-shape photovoltaic cell without
a light reflecting layer,
wherein the outer wall is disposed by tracking entirely the
shape of the inner wall,
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wherein a portion of the container wall located closest to a
solar energy application device is made of a same material as that
of the outer wall without an inner wall layer, and
wherein the light-heat absorbing layer of the outer wall
is a plate-shape solar cell.
(Appeal Br. 10 (emphases added)).
II. REJECTION ON APPEAL
Claims 1–3 and 10–14 stand rejected under 35 U.S.C. § 103(a) (pre-
AIA) as unpatentable over Shifman3 in view of Fujita4 (Ans. 4–16; Non-
Final Act. 4–14).5
III. DISCUSSION
The Examiner finds, inter alia, that Shifman describes a light-heat
gathering solar energy device including “a container wall (wall 7 and
photovoltaic structure 11B, Fig. 1[,] cited to read on the claimed ‘container
wall’ because it forms the physical boundaries of an enclosure)” (Ans. 4;
Non-Final Act. 5) (bolding added). According to the Examiner, Shifman’s
“container wall has a layered structure formed by an outer wall and an inner
wall attached to the outer wall” and that “the plastic portion of cited
container wall 7 and photovoltaic structure 11B is cited to read on the
claimed outer wall because it forms a physical enclosure towards the outer

3 WO 2006/030433, published March 23, 2006. The Appellant does not
object to the Examiner’s reliance on US 2008/0000516 A1, published
January 3, 2008, as an English language equivalent (Ans. 4; Non-Final Act.
4). Therefore, our citations are also to the US document.
4 US 2006/0157724 A1, published July 20, 2006.
5 The Examiner states that a rejection under 35 U.S.C. § 112, ¶ 2, of claims
1–3 and 10–14, as set forth in the Non-Final Action (Non-Final Act. 3–4),
has been withdrawn (Ans. 13).
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portion of the device and the inner silver plating layer is cited to read on the
claimed inner wall” (Ans. 5; Non-Final Act. 6) (bolding added).
Additionally, the Examiner finds that the “plastic outer wall 134 of cited
container wall component 7 and the cited photovoltaic structure 11B of the
cited outer wall is cited to read on the claimed ‘light-heat absorbing layer’
because it is a layer of a material that can absorb some degree of light and
heat” (Ans. 6; Non-Final Act. 6–7) (bolding added). Furthermore, the
Examiner finds that Shifman’s “light-heat absorbing layer of the outer wall
is a plate-shaped solar cell (the cited light-heat absorbing layer of the cited
outer wall is cited to read on the claimed ‘plate-shaped solar cell’ because
the portion of the cited light-heat absorbing layer of the cited outer wall at
photovoltaic component 11B is a solar cell with a plate shape as depicted in
Fig. 1)” (Ans. 7; Non-Final Act. 8) (bolding added).
The Appellant contends that, contrary to the Examiner’s findings,
Shifman does not disclose or suggest the “container wall” limitations
highlighted in reproduced claim 1 above (Appeal Br. 6). Specifically, the
Appellant argues that “the structure member referred to by reference
numeral 134 is a plastic base, [and that] it would not teach the plate-shape
solar cell as required by claim 1” (id. at 7 (bolding added)). Furthermore,
the Appellant argues that Shifman’s “photovoltaic structure 11B is not part
of the layered structure” (id. (bolding added)).
Although we do not agree with the Appellant’s identification of
Shifman’s photovoltaic structure 11B as depicted in the marked up drawing
on page 7 of the Appeal Brief, which appears to have been corrected in the
Reply Brief (Reply Br. 3), we concur with the Appellant that the Examiner’s
findings regarding the “container wall” limitations recited in claim 1
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constitute reversible error. Specifically, the Examiner appears to rely on
Shifman’s photovoltaic structure 11B to account for the limitation “wherein
the light-heat absorbing layer of the outer wall is a plate-shape solar cell” in
claim 1 (Ans. 14 (“The cited outer wall of Shifman is cited to teach the
plate-shaped solar cell as required by claim 1 because the portion of the cited
light-heat absorbing layer of the cited outer wall at photovoltaic component
11B is a solar cell with a plate shape as depicted in Fig. 1 of Shifman”
(bolding added)). But, as the Appellant points out, Shifman’s photovoltaic
structure 11B has not been shown to be part of any “layered structure formed
by an outer wall and an inner wall attached to the outer wall . . . wherein the
light-heat absorbing layer of the outer wall is a plate-shape solar cell” as
required by claim 1 (Shifman Fig. 1 and ¶ 51). Shifman teaches that a
primary reflector 7 with a plastic base 134 may have a silver plating on it
(id. ¶ 89), and the Examiner relies on this teaching to establish that Shifman
discloses a layered structure as recited in claim 1 (Ans. 14–15 (“the inner
silver plating layer is cited to read on the claimed inner wall . . . the
disclosed silver plated plastic is interpreted to provide for the claimed
layered structure”)). That teaching, however, has not been shown to extend
or relate to the photovoltaic structure 11B.
In the Answer, the Examiner posits that “[c]laim 1 does not require
the plate-shaped solar cell to be a part of the layered structure” (Ans. 15).
That is incorrect. Claim 1 explicitly recites that “the container wall has a
layered structure formed by an outer wall and an inner wall attached to the
outer wall,” “the outer wall includes a light-heat absorbing layer,” and “the
light-heat absorbing layer of the outer wall is a plate-shape solar cell”
(Appeal Br. 10). Accordingly, the Examiner’s claim construction is
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unreasonably broad. In re Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed. Cir.
2017).
The additional reference, Fujita, has not been cited to cure the
deficiency in the Examiner’s findings regarding Shifman relative to claim 1,
the sole independent claim on appeal (Ans. 8; Non-Final Act. 9). Therefore,
we cannot uphold the Examiner’s rejection as to all claims on appeal.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 10–14 103(a) Shifman, Fujita 1–3, 10–14

REVERSED