Ex Parte 7,406,800 et al

Patent Trial and Appeal Board

Feb 28, 2014

95001642 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,642 06/07/2011 7,406,800 08002.RE2 1680
7590 02/28/2014
TIMOTHY W. LOHSE
PATENT DEPARTMENT
2000 UNIVERSITY AVENUE
DLA PIPER US LLP
East Palo Alto, CA 94303
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

ZEP SOLAR INC.
Requester

v.

ANDALAY SOLAR INC.
Patent Owner and Appellant
____________________
Appeal 2014-000557
Inter Partes Reexamination Control 95/001,642
US Patent 7,406,800 B21
Technology Center 3900
____________________
Before: JEFFREY B. ROBERTSON, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 US Patent 7,406,800 B2 (hereinafter the '800 patent) was issued to
Cinnamon et al. on Aug. 5, 2008.
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US Patent 7,406,800 B2

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STATEMENT OF THE CASE
Patent Owner/Appellant appeals under 35 U.S.C. §§ 134(b) and 315
from the Examiner’s rejection of claims 5, 6, and 10. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 315.
The '800 patent was subject to the following infringement actions,
which according to Appellant are now settled (App. Br. 1):
Akeena Solar, Inc., et al v. ZEP Solar Inc., et al., Case No. 3:09-cv-
05040-JSW (N.D. Cal.);
ZEP Solar, Inc. v. Westinghouse Solar, Inc., et al., Case No. 3: ll-cv-
06493-JSW (N.D. Cal.);
ZEP Solar, Inc., et al. v. Westinghouse Solar, Inc., et al., Case No. 3:
ll-cv-03800-JSW (N.D. Cal.);
In the matter of Certain Integrated Solar Power Systems and
Components Thereof, United States International Trade Commission
Investigation No. 337-TA-811.
We AFFIRM.

THE INVENTION
Appellant’s invention is directed "generally to solar panels and more
particularly to an assembly and mounting system for a solar panel." The
'800 patent, col. 1, ll. 5-7. Claim 5, reproduced below, is illustrative of the
claimed subject matter:
5. A solar panel comprising:
a plurality of solar modules wherein each solar module
has a frame; and
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a plurality of splices for coupling the frames of the
plurality of solar modules together by inserting each end of
each splice into two adjacent solar module frames;
wherein the plurality of splices provides rigidity to the
frames of the plurality of solar modules coupled together,
wherein each of the splices comprises: a body; a coupling
mechanism on the body for causing a press-fit coupling of two
solar modules; and a secure mechanism for securing the body to
at least one of the two solar modules;
wherein each of the solar modules include a plurality of
connector sockets placed such that improper wiring based on
cable length is prevented and placed such that at least one
connector socket of one solar module is aligned with the
connector socket of another solar module when coupled
together.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Plattner
Yahata
Minemasa
Nomura
Fukumori
Nath
Rinderer
Garvison
DE 3111969
JP 58-133945
JP 59-191748
JP 2-42449
JP 6-41156
US 5,232,518
US 5,628,580
US 6,465,724
Nov. 7, 1982
Sep. 9, 1984
Dec. 19, 1984
Mar. 23, 1990
May 31, 1994
Aug. 3, 1993
May 13, 1997
Oct. 15, 2002
Nagao US 2002/0078991 A1 June 27, 2002

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 5 and 6 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Nath. Ans. 5.
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2. Claims 5, 6, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Nomura. Ans. 9.
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagao and Fukumori. Ans. 18.

ANALYSIS
Claims 5, 6, and 10 as Anticipated by Nomura
The Examiner rejects each of claims 5, 6, and 102 as anticipated by
Nomura. Ans. 9-12. Appellant appeals the rejection of each of these claims
and argues that several elements are missing from Nomura, thus warranting
reversal of the Examiner's rejection. App. Br. 12-17.

Each Splice Provides Rigidity
Appellant argues claims 5, 6, and 10 as a group regarding the
limitation "wherein the plurality of splices provides rigidity to the frames of
the plurality of solar modules coupled together." According to Appellant,
"this claim element is clearly not expressly found in Nomura." App. Br. 12.
Appellant argues this is so because, e.g., "if one cell in Nomura that is 'fixed'
to another cell is lifted, the connector or fixing frame will clearly sag" and
that "there is nothing that suggests that the 'terminal' that is the coupling
device can fully support one cell by the other." Id.
We first note that Appellant provides no evidence other than attorney
argument supporting their contentions as to the lack of rigidity in the device
of Nomura. Further, even assuming Appellant is correct, we are

2 Claims 5, 6, and 10 are all independent claims and are the only claims
subject to this reexamination.
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unpersuaded that Nomura fails to disclose the claimed rigidity. The claims
merely require that "the plurality of splices provides rigidity to the frames."
There is no requirement in the claim that the splice prevents sagging or can
fully support one cell by another. Appellant provides examples of rigidity in
the Specification,3 but these examples do not rise to the level of an explicit
definition of the term "rigidity." According to the Examiner, "frame 15 [of
Nomura] is expressly called a 'fixing frame', suggesting it has rigid
characteristics." Ans. 10. We find this sufficient to meet the broad
recitation of "rigidity" as found in claims 5, 6, and 10.

Each Splice Claim Element
Appellant next argues that Nomura fails to teach the "press-fit" aspect
of claims 5, 6, and 10. According to the Examiner, "splices 18 and 21
include female features 18c and 21 a, respectively located on the body of the
splices that are inserted onto the male feature 16 within the frame sockets
15a (Figs. 6, 9) in order to form a press-fit coupling of two solar modules."
Ans. 10.
We are unpersuaded by Appellant’s argument that the Examiner’s
finding that Nomura teaches a "press-fit" is in error. App. Br. 14 (citing
Ans. 10). Specifically, Appellant contends that Nomura does not expressly
or inherently disclose press-fitting. App. Br. 14. Contrary to Appellant’s
arguments, Nomura discloses that the “hole 18c [has] an internal diameter
matching the external diameter of the take-out terminals 16.” Nomura, 4.

3 See e.g., col. 4, l. 66-col. 5, l. 2 ("The splice provides sufficient rigidity
between modules so that the entire panel can be transported and lifted to a
roof.").
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The fact that the two diameters match each other provides evidence that
when joined, the male features 16 are press-fit into the female features 18c.
Thus, Nomura’s disclosure supports the Examiner’s position that there is
press-fit coupling when the two parts are joined together. Furthermore,
Nomura discloses that “by connecting the take-out terminals 16, 16 with this
connection terminal 18, the solar cell devices are electrically connected and
mechanically connected to each other.” Nomura 4.
Lastly, Appellant argues that, regarding the splice 18 shown in Fig. 17
of Nomura, "the securing mechanism is located on in [sic] the fixing frame
15 and is not part of the splice as recited in the claim element." App. Br. 15.
Regardless of what is shown in Fig. 17, Appellant has not provided
sufficient argument to overcome the Examiner’s findings as discussed
above. Accordingly we do not find this argument persuasive.

Connector Socket Shape Claim Element
Regarding this element, the Examiner finds that "[t]he special shape
of connector sockets 15a only permits insertion of connectors with a mating
shape, therefore improper wiring is prevented." Ans. 11. Appellant argues
that "the connection recesses 15a do not have a shape that prevents improper
wiring since a negative wire can be plugged into the positive connection
recesses 15a and vice versa which would be improper wiring." App. Br. 15-
16. As the Examiner points out, "Patent Owner does not address the male
projection in the center or the portion 15d both referenced in the rejection
that prevent improper wiring." Ans. 25.
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Furthermore, we do not agree that the mere capability of allowing for
a positive terminal to be plugged into a negative terminal means that the
connector sockets of Nomura fail to prevent improper wiring. The only
disclosure in the '800 patent regarding preventing improper wiring is that
"[t]he connector sockets 108 are located on the modules (on the left/right or
E-W sides, and/or on the top/bottom or N/S sides) to prevent improper
wiring based on cable lengths and connector socket size/configuration."
Col. 5, ll. 22-27. As is disclosed in the '800 patent, Nomura also teaches
fixed locations of the connector terminals, which prevents improper wiring.
Specifically, as the Examiner finds, "the alignment of connector sockets 15a
ensures that there will be no excess cable" and that Nomura’s figures "all
depict connector sockets 15a that are aligned with the connector sockets of
an adjacent solar module when coupled together." Ans. 11. Accordingly,
we find these teachings as discussed by the Examiner to be sufficient to meet
the claimed ‘preventing of improper wiring’ feature and, as such, are not
persuaded by Appellant's arguments.

First and Second Raised Features
According to the Examiner, "JP '449 discloses a raised male feature
16 manufactured from a metal material that provides a grounding path for
the splices when inserted into the frame socket 15a located within the
module frame 15." Ans. 11. Appellant argues that "this [grounding]
element is clearly not found, expressly or inherently in Nomura." App. Br.
16. The Examiner additionally points out that "the US National Electric
Code Article 690.41 requires the negative conductor in all solar systems
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above 50 volts to be 'solidly grounded'" thus supporting the finding that
Nomura's negative terminal provides the claimed grounding path. Ans. 12.
Appellant's Specification fails to provide any specific definition of a
grounding path that would preclude the Examiner's application of the prior
art. Furthermore, Appellant fails to address the Examiner's finding that the
negative terminal provided by Nomura satisfies the grounding path
limitation as required by the US National Electric Code relating to solar
panels.
Appellant also argues that "take out terminals 16 [are] clearly not part
of the alleged splice 21 in Nomura." App. Br. 16. We do not find this
argument persuasive because claim 10 merely requires that "a first raised
feature provides a stop for the splice." There is no requirement that the
raised feature actually be on the splice itself, it need only provide a stop for
the splice, which the Examiner has found by way of take-out terminal 16 of
Nomura.
For the reasons stated above we do not find Appellant's arguments
persuasive against the Examiner's rejection of claims 5, 6, and 10 as
anticipated by Nomura and, accordingly, sustain the rejection. Furthermore,
because all claims subject to this reexamination are addressed by the
rejection over Nomura, we do not reach the remaining rejections.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 5, 6, and 10.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

lb

For Patent Owner:

Timothy W. Lohse
Patent Department
2000 University Avenue
DLA PIPER US LLP
East Palo Alto, CA 94303

For Third Party Requester:

Larry D. Johnson
P.O. Box 470277
Celebration, FL 34747