Ex Parte Bonucci et al

Patent Trial and Appeal Board

Oct 26, 2016

13016435 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/016,435 01/28/2011
72932 7590
Steinfl & Bnmo LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
10/26/2016
FIRST NAMED INVENTOR
Antonio BONUCCI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P563-USD 4563
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
MAILDATE DELIVERY MODE
10/26/2016 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
Ex parte ANTONIO BONUCCI, SERGIO RONDENA,
GIORGIO LONGONI, MARCO AMIOTTI, and LUCA TOIA
Appeal2016-008392
Application 13/016,435
Technology Center 3600
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Antonio Bonucci et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 15-33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appeal2016-008392
Application 13/016,435
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
15. A polymeric tri-layer for the manufacturing of photovoltaic
panels, wherein the two outermost layers are composed of a
polymeric material essentially without getter material, whereas
the central layer is composed of a composite getter system for
H20 sorption.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chu
Dick
Bawden 1
Ito2
US 6, 777 ,481 B2
US 7,335,422 B2
GB 1,231,569
JP 40-11610 A
REJECTIONS
Aug. 17, 2004
Feb.26,2008
May 12, 1971
June 23, 1989
I. Claims 15, 16, 18-25, and 29-32 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Chu and Bawden.
II. Claims 17, 26-28, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chu, Bawden, and Ito.
1 We note that Bawden is the name of the agent who prosecuted this patent;
however, as no inventor is named and the patent is credited to Hercules Inc.,
like the Examiner and Appellants, we refer to it as Bawden. See Bawden, 1,
3.
2 We note that the rejection relies upon the English abstract of this
publication, not the entire document. See Final Act. 6.
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Appeal2016-008392
Application 13/016,435
DISCUSSION
Rejection I
The Examiner finds that Chu and Bawden disclose or suggest all of
the limitations of independent claim 15. See Final Act. 4. In particular, the
Examiner determines that it would have been obvious "to apply skin layers
free of getter to the layer of Chu in order to ease processing." Id.
Appellants argue that "adding sealing layers taught by Bawden will
prevent the volatiles of Chu from escaping (passing through the Bawden
layers), which is the purpose of the composition of Chu." Appeal Br. 8.
Responding to this argument, the Examiner explains that:
Bawden teaches the additive will be present on the surface of the
laminate. Specifically, Bawden teaches, "(T)he effect of the
additive, however, is not lost on the outer layers. Since a
concentration gradient exits between the centre layer and the
surface layer, there is a tendency for the additive to migrate to
the outer layers. In time, sufficient migration will take place to
provide the desired effect on the surface layer (page 1, lines 71
+ )."
Ans. 6-7. The Examiner concludes that "the skin layers rendered obvious
by Bawden would no[t] render the invention of Chu inoperative as 'in time'
the getter material will be present on the surface." Id. at 7.
In response, Appellants contend that the Examiner's reasoning is
flawed, arguing that:
Even if the Board adopts the Examiner's erroneous reasoning,
then "the skin layers" of Bawden in combination with Chu will
result in that "'in time' the getter material will be present on the
surface". Thus, the combination of Chu and Bawden will still
fail to disclose, teach or suggest the Appellants' claimed feature
of "the two outermost layers are composed of a polymeric
material essentially without getter material" as recited in claim
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Appeal2016-008392
Application 13/016,435
15, because "'in time' the getter material will be present on the
surface" in a combination of Chu and Bawden.
Reply Br. 5---6 (emphasis omitted).
Appellants are correct. In order to meet the limitation at issue, the
proposed modified tri-layer must include outer layers "essentially without
getter material;" however, as explained by the Examiner, in order for the
proposed modification to not render Chu unsuitable for its intended purpose,
migration of getter material to the outer surface must occur, such that the
proposed modified tri-layer would no longer meet the limitation requiring
"two outermost layers [that] are composed of a polymeric material
essentially without getter material." Appeal Br. 36. Accordingly, the
Examiner's reasoning lacks rational underpinning.
For this reason, we do not sustain the Examiner's decision rejecting
claim 15, and claims 16, 18-21, and 23, which depend therefrom. Claims 22
and 24 similarly require "the two outermost layers are composed of a
polymeric material essentially without getter material" and "a pair of outer
layers that are substantially free of said getter material." Accordingly, we do
not sustain the Examiner's decision rejecting claims 22 and 24, and claims
25 and 29-32, which depend from claim 24, for the same reasons.
Rejection II
Claims 17 and 33 depend from claim 15 and claims 26-28 depend
from claim 24. Ito does not cure the deficiencies in the rejection of claims
15 and 24 discussed supra. Accordingly, we do not sustain the Examiner's
decision rejecting claims 17, 26-28, and 33, for the same reasons.
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Appeal2016-008392
Application 13/016,435
DECISION
The Examiner's rejections of claims 15-33 are REVERSED.
REVERSED
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