Andreas Pawlik et al.Download PDFPatent Trials and Appeals BoardOct 7, 201913649498 - (D) (P.T.A.B. Oct. 7, 2019) Copy Citation 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. 13/649,498 10/11/2012 Andreas PAWLIK 405383US99 2182 22850 7590 10/07/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER MARTIN, BETHANY LAMBRIGHT ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 10/07/2019 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@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 MICHAEL BEYER Appeal 2018-004273 Application 13/649,498 Technology Center 1700 Before MARK NAGUMO, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-004273 Application 13/649,498 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4 and 9–17. We have jurisdiction under 35 U.S.C. § 6(b). The panel heard oral argument on this matter on September 26, 2019. We AFFIRM IN PART. CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to a multilayer film that could be used as a back cover for a solar module. Spec. 1:10–11. One of Appellant’s objects is a film suitable for a photovoltaic module back cover “which has improved pigment and filler dispersion.” Id. at 2:13–14. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A multilayer film comprising, in the order listed: a) a first outermost surface layer of a moulding composition, comprising: at least 35% by weight of polyamide; and from 1 to 65% by weight of a light-reflecting filler, wherein the % by weight is based on the weight of the moulding composition of the first outermost surface layer; b) optionally, a layer intermediate to the first outermost surface layer and a second outermost surface layer of a thermoplastic moulding composition; and 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as EVONIK INDUSTRIES AG. Appeal Br. 1. 2 In this Decision, we refer to the Final Office Action dated May 3, 2017 (“Final Act.”), the Appeal Brief filed September 29, 2017 (“Appeal Br.”), the Examiner’s Answer dated February 2, 2018 (“Ans.”), and the Reply Brief filed February 23, 2018 (“Reply Br.”). Appeal 2018-004273 Application 13/649,498 3 c) the second outermost surface layer opposite to the first outermost surface layer of a moulding composition which comprises at least 35% by weight of polyamide: and from 1 to 65% by weight of a light-reflecting filler, wherein the % by weight is based on the weight of the moulding composition of the second outermost surface layer; and wherein at least one of the first outermost surface layer and second outermost surface layer further comprises from 1 to 25% by weight of the layer composition of a polyamide elastomer which is a polyetheresteramide, a polyetheramide or a combination thereof. Appeal Br. 14 (Claims App.). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Thill US 4,883,836 Nov. 28, 1989 Clark US 5,399,663 Mar. 21, 1995 Ries et al. (“Ries”) US 2002/0119272 A1 Aug. 29, 2002 Fujita et al. (“Fujita”) US 2004/023049 A1 Feb. 5, 2004 Hayes US 2010/0065109 A1 Mar. 18, 2010 Kliesch et al. (“Kliesch”) US 2010/0288353 A1 Nov. 18, 2010 Nagato et al.3 (“Nagato”) WO 2010/126000 A1 Apr. 11, 2010 REJECTIONS The following rejections are before us on appeal: 3 Nagato et al., US 2012/0048352 A1, Mar. 1, 2012, is referenced as an English translation of the Nagato ’000 PCT publication. Appeal 2018-004273 Application 13/649,498 4 Rejection 1. Claims 1–3, 9, and 13–15 under 35 U.S.C. § 103 as unpatentable over Hayes in view of Kliesch and Fujita. Ans. 4. Rejection 2. Claims 1–4, 9, and 13–16 under 35 U.S.C. § 103 as unpatentable over Hayes in view of Nagato, Kliesch, and Fujita. Id. at 9. Rejection 3. Claims 10 under 35 U.S.C. § 103 as unpatentable over Hayes, Kliesch and Fujita or alternatively Hayes, Nagato, Kliesch, and Fujita, and further in view of Ries. Id. at 16. Rejection 4. Claims 11 under 35 U.S.C. § 103 as unpatentable over Hayes, Kliesch and Fujita or alternatively Hayes, Nagato, Kliesch, and Fujita, and further in view of Clark. Id. at 17. Rejection 5. Claims 12 and 17 under 35 U.S.C. § 103 as unpatentable over Hayes, Kliesch and Fujita or alternatively Hayes, Nagato, Kliesch, and Fujita, and further in view of Thill. Id. at 18. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). To the extent we sustain the Examiner’s rejections, we are not persuaded that Appellant identifies reversible error after considering the evidence presented in this Appeal and each of Appellant’s arguments. Where we sustain the Examiner’s rejections, Appeal 2018-004273 Application 13/649,498 5 we do so for the reasons expressed in the Final Office Action, and our discussion is primarily for emphasis. Appellant separately argues each rejection and presents a distinct argument for claim 10. See Appeal Br. 4–13. Appellant otherwise argues the claims as a group. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claims 1 and 10. All other claims on appeal stand or fall together with claim 1. A. Rejection 1: Obviousness over Hayes in view of Kliesch and Fujita The Examiner rejects claim 1 as obvious over Kliesch in view of Fujita. Ans. 4. The Examiner finds that Hayes teaches a solar module comprising a backsheet that may be formed of a polyamide sheet or multiple polyamide sheets. Id. (citing Hayes). The Examiner finds that Hayes teaches that its backsheet may include UV absorbers, colorants, or fillers. Id. at 5. The Examiner finds that Hayes is silent as to amounts of UV absorbers, colorants, or fillers. Id. The Examiner finds that Kliesch teaches adding titanium oxide to a solar cell module backsheet. Id. (citing Kliesch). The Examiner determines that a person of skill in the art would have chosen Kliesch’s titanium oxide to add to Hayes to reflect light back into the module and obtain desired UV properties. Id. The Examiner also finds that Hayes modified Hayes discloses inclusion of reinforcement additives. Id. at 6 (citing Hayes ¶ 45). The Examiner finds that Fujita teaches adding polyetheresteramides or polyetheramides to polyamide compositions to improve fatigue resistance. Id. at 6 (citing Fujita). The Examiner determines that a person of skill in the Appeal 2018-004273 Application 13/649,498 6 art would have added polyetheresteramides or polyetheramides as taught by Fujita to Hayes to improve fatigue resistance. Id. at 7. Appellant argues that Hayes does not provide examples or an explicit description of polyamide outer layers. Appeal Br. 4. Appellant also argues that the Examiner has not adequately explained why a person of skill in the art would have reached polyamide outer layers given Hayes’s “broad generic description” of its multiple polymer layers. Reply Br. 2. This argument is unpersuasive because Hayes explicitly teaches that its outer layers may be polyamides. Hayes ¶ 75; Ans. 19–20. All disclosures of the prior art, including unpreferred embodiments, must be considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Although Hayes also teaches other possibilities, the listed possibilities are not so numerous that a person of skill in the art would not have had a reason to choose polyamide outer layers. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ʼ813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose.”). Hayes teaches that polyamide outer layers are appropriate, and, on the present record, choosing polyamide outer layers would have been no more than predictable use of a prior art element according to established function. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The authority Appellant cites (Reply Br. 2) is distinguishable because those cases generally address unpredictable selection of a molecular species within the prior art’s broad genus of molecules. See, e.g., In re Baird, 16 F.3d 380, 384 (Fed. Cir. 1994) (holding that selection of bisphenol A would not have been obvious where art encompassed “more than 100 million Appeal 2018-004273 Application 13/649,498 7 different diphenols, only one of which is bisphenol A” and where art provided no guidance leading a person of skill in the art to bisphenol A). Here, Hayes lists a reasonably limited number of suitable options for its outer layers (Hayes ¶ 75), and a person of skill would have expected that any of the options would predictably be successful. Appellant also argues that the Examiner errs in finding that Hayes teaches additives in its outer layers. Appeal Br. 4. This argument is unpersuasive because the preponderance of the evidence better supports the Examiner’s position. In particular, Hayes explicitly teaches various additives for “back-sheet encapsulant layers or back-sheets.” Ans. 21 (quoting Hayes ¶ 45). Appellant argues that Kliesch does not teach polyamide films. Appeal Br. 5. Appellant’s argument is unpersuasive because the Examiner does not rely on Kliesch as teaching such films. Rather, the Examiner relies on Kliesch as teaching that titanium dioxide may be added to a backsheet of a solar module to provide reflectance and increased energy efficiency. Ans. 22. Appellant does not persuasively dispute the Examiner’s findings in this regard, and Appellant does not persuasively dispute the Examiner’s rationale for combining Kliesch’s teaching with the teachings of Hayes. “Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant further argues that Fujita is directed to use of a biaxially- orientated film and that its fatigue improvement “is related to the stress applied by the multiple operations employed to form the biaxially-orientated film.” Appeal Br. 5. Appellant argues that Hayes is silent with respect to Appeal 2018-004273 Application 13/649,498 8 biaxially-orientated films. Id. Appellant argues that, therefore, it would not have been obvious to include Fujita’s polyetheresteramide and/or polyetheramide fatigue improvers into Hayes. Id. This argument is unpersuasive because the preponderance of the evidence supports the Examiner’s finding that Fujita teaches an additive that improves fatigue resistance for a polyamide. Ans. 23. Appellant does not direct us to any portion of Fujita that suggests that its, for example, polyetheramide “improver of resistance to fatigue from flexing” (Fujita ¶¶ 18, 64) would only be beneficial in the context of biaxially-orientated film. To the contrary, Fujita suggests that its additives provide “resistance to fatigue from flexing and operability, and can be provided economically.” Fujita Abstract; see also id. ¶ 8. A person of skill in the art would have recognized that the films of Hayes could predictably be improved with such additives in the same way the films of Fujita were improved. KSR Int’l Co., 550 U.S. at 417. Because Appellant’s arguments do not identify harmful error, we sustain the Examiner’s rejection. B. Rejection 2: Obviousness over Hayes in view of Nagato, Kliesch, and Fujita The Examiner rejects claims 1–4, 9, and 13–16 as obvious over Hayes in view of Nagato, Kliesch, and Fujita. Ans. 9. The Examiner provides this rejection as “an alternative interpretation” of the references and makes use of the additional Nagato reference. Ans. 9. The Examiner finds that Nagato teaches a polyamide water vapor barrier layer disposed between a backsheet and encapsulant within a solar module. Id. The Examiner determines that it would have been obvious to employ a polyamide backsheet and polyamide Appeal 2018-004273 Application 13/649,498 9 moisture barrier layer based on the combined teachings of Hayes and Nagato. Id. at 10. Appellant argues that neither Hayes nor Nagato provides a technical reason to employ dual layers of polyamide as the Examiner proposes. Appeal Br. 10. While the Examiner adequately explains why a person of skill in the art would have desired adding Nagato’s moisture barrier layer to the Hayes device generally (Ans. 26–27), Appellant’s argument is persuasive because the Examiner has not adequately explained why a person of skill in the art would have chosen polyamide for Hayes’s outer layers while also employing Nagato’s polyamide moisture barrier layer adjacent to the polyamide outer layers. In other words, the Examiner has not adequately explained why a person of skill in the art would have chosen to employ dual layers of polyamide in this context. On this basis, we do not sustain this rejection. C. Rejection 3: Obviousness over Hayes in view of Nagato, Kliesch, Fujita, and Ries (or alternatively, Hayes, Nagato, Kliesch, Fujita, and Ries) The Examiner rejects claim 10 as obvious over Hayes in view of Nagato, Kliesch, Fujita, and Ries. Ans. 16. Claim 10 recites that the polyamide outer layers have specific enthalpy characteristics. Appeal Br. 15–16 (Claims App.). The Examiner finds that Hayes does not disclose the type of polyamide to be utilized, but finds that Ries discloses a “low cost, high impact strength and low water absorption” polyamide that meets the enthalpy characteristics of claim 10. Ans. 16 (citing Ries ¶ 4). The Examiner determines that it would have been obvious to choose the Ries Appeal 2018-004273 Application 13/649,498 10 polyamide for the Hayes device due to the beneficial properties Ries teaches. Id. Appellant argues that Ries discusses use of its polyamide in motor vehicle tubes and that a person of ordinary skill in the art would not seek instruction from Ries when looking to modify Hayes. Appeal Br. 6–7. Appellant’s argument is unpersuasive because a person seeking to follow the teachings of Hayes would desire a polyamide for the Hayes outer layers and would need to choose a specific polyamide. A person of skill in the art would have looked to references, such as Ries, that teach the benefits of various polyamides in order to make a specific choice. In this sense, Ries is pertinent to the problem of selecting a polyamide for the outer layers of a solar cell. Ans. 24; see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (explaining that prior art qualifies as “analogous” when it is “from the same field of endeavor” or “reasonably pertinent to the particular problem with which the inventor is involved”). We, therefore, sustain this rejection. For the reasons we provide with respect to the Examiner’s second rejection, however, we do not sustain the Examiner’s alternative rejection that relies on Nagato. D. Rejections 4 and 5 Appellant does not present any substantively distinct arguments with respect to the Examiner’s fourth and fifth rejections. Appeal Br. 7–8. Rather, Appellant relies on arguments Appellant raised with respect to claim 1. Id. We, therefore, sustain these rejections for the reasons we sustained the Examiner’s first rejection. For the reasons we provide with respect to the Examiner’s second rejection, however, we do not sustain the Examiner’s alternative rejections that rely on Nagato. Appeal 2018-004273 Application 13/649,498 11 CONCLUSION In summary: Claims Rejected Basis Affirmed Reversed 1–3, 9, 13–15 § 103 Hayes, Kliesch, Fujita 1–3, 9, 13–15 1–4, 9, and 13–16 § 103 Hayes, Nagato, Kliesch, Fujita 1–4, 9, and 13–16 10 § 103 Hayes, Kliesch, Fujita, Ries 10 10 § 103 Hayes, Nagato, Kliesch, Fujita, Ries 10 11 § 103 Hayes, Kliesch, Fujita, Clark 11 11 § 103 Hayes, Nagato, Kliesch, Fujita, Clark 11 12, 17 § 103 Hayes, Kliesch, Fujita, Thill 12, 17 12, 17 § 103 Hayes, Nagato, Kliesch, Fujita, Thill 12, 17 Overall Outcome 1–3, 9–15, 17 4, 16 Appeal 2018-004273 Application 13/649,498 12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation