Ex Parte Botkin et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613949073 (P.T.A.B. Dec. 19, 2016) 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. 7923P054C2 4525 EXAMINER DEMUREN, BABAJIDE A ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 13/949,073 07/23/2013 12/20/201684372 7590 SunPower/ BSTZ Blakely Sokoloff Taylor & Zafman LLP 1279 OAKMEAD PARKWAY SUNNYVALE, CA 94085-4040 Jonathan Botkin 12/20/2016 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 JONATHAN BOTKIN, SIMON GRAVES, CARL J. S. LENOX, MATTHEW CULLIGAN, and MATT DANNING Appeal 2015-0017051 Application 13/949,0732 Technology Center 3600 Before MICHAEL C. ASTORINO, JAMES A. WORTH, and CYNTHIA L. MURPHY, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—23. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM. 1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed July 28, 2014) and Reply Brief (“Reply Br.,” filed Nov. 19, 2014), and the Examiner’s Final Office Action (“Final Act.,” mailed Feb. 24, 2014) and Answer (“Ans.,” mailed Sept. 26, 2014). 2 According to Appellants, the real party in interest is SunPower Corporation (Appeal Br. 3). Appeal 2015-001705 Application 13/949,073 Introduction Appellants’ disclosure relates to “solar roof tiles [and more particularly] to photovoltaic modules adapted for rapid installation as part of an arrayed, rooftop photovoltaic system” (Spec. 14). Claim 1, reproduced below, is the sole independent claim on appeal and is illustrative of the subject matter on appeal: 1. A photovoltaic module for non-penetrating installation at a substantially flat surface, the photovoltaic module comprising: a photovoltaic device including a photovoltaic laminate having a perimeter and a front face defining a major plane; and a frame assembled to and encasing the perimeter of the photovoltaic laminate, the frame including: opposing, leading and trailing frame members, opposing, first and second side frame members, a first arm projecting from the first side frame member and forming a support face opposite the front face for placement against a separate installation surface, wherein the support face of the first arm extends beyond the trailing frame member in a direction opposite the leading frame member, a second arm projecting from the second side frame member and forming a support face extending beyond the trailing frame member, a third arm projecting from the first side frame member and forming a support face beyond the leading frame member; and a fourth arm projecting from the second side frame member and forming a support face beyond the leading frame member. (Appeal Br., Claims App.) 2 Appeal 2015-001705 Application 13/949,073 Rejections on Appeal The Examiner maintains, and Appellants appeal, the following rejections: I. Claims 1—4, 9—15, and 19-23 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Mascolo (US 2007/0144575 Al, pub. June 28, 2007). II. Claims 5, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mascolo. III. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mascolo and Itoyama (US 6,803,515 B2, iss. Oct. 12, 2004). IV. Claims 16—18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mascolo and Poddany (US 6,959,517 B2, iss Nov. 1, 2005). ANALYSIS Rejection I (Anticipation) Independent claim 1 and dependent claims 2—4, 9—15, and 19—23 Appellants argue the patentability of claims 1—4, 9-15, and 19-23 together. We select independent claim 1 as representative such that claims 2-4, 9-15, and 19—23 stand or fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv). We are unpersuaded by Appellants’ argument that Mascolo fails to disclose a photovoltaic module assembly with a frame having first, second, third and fourth arms extending from frame member of the frame, as recited in independent claim 1, i.e., “a frame assembled to and encasing the 3 Appeal 2015-001705 Application 13/949,073 perimeter of the photovoltaic laminate, the frame including: ... a first arm projecting from the first side frame member . . . , a second arm projecting from the second side frame member . . . , a third arm projecting from the first side frame member . . . ; and a fourth arm projecting from the second side frame member . . . .” (Appeal Br. 6—8; Reply Br. 1—2). Appellants assert that Mascolo’s support assemblies 306, even if arms, are not “includ[ed]” in Mascolo’s frame (Appeal Br. 8; Reply Br. 1). The Examiner finds that Mascolo’s support assemblies 306 project from the frame members, as recited, and reasons that there is no claim requirement for the recited arms to be integral with the frame members, as Appellants appear to argue (see Ans. 3^4 (discussing Mascolo, Figs. 13, 20)). We agree with the Examiner for several reasons. First, the Examiner correctly finds that Mascolo’s support assemblies 306 “project” from the frame members, as recited. Second, the claim recites that the frame is “assembled to” the laminate. As such, there is no requirement for the frame members to be formed integrally with the arms, as long as the frame “assembled to” the laminate includes projecting arms. We agree with the Examiner that the Specification does not contain any requirement for independent claim 1, e.g., in the form of a definition. Therefore, we determine that the broadest reasonable interpretation of “frame” encompasses the structures “assembled to” the laminate. This is consistent with paragraph 11 of the Specification. To the extent that Appellants intended a different meaning, i.e., an integral piece, this is not a requirement that Appellants have written into the claims. 4 Appeal 2015-001705 Application 13/949,073 In Mascolo, the support assemblies 306 are structures assembled to photovoltaic laminate 334 when they are coupled to structure 304 (see, e.g., Appeal Br. 7; Final Act. 2; Mascolo | 52). This meets the “frame” limitation. Appellants also argue that Mascolo’s frame relates to an array of photovoltaic cells as opposed to a single photovoltaic cell (Appeal Br. 7). However, the Examiner correctly points out that Appellants’ argument is given with respect to Figure 24 of Mascolo, whereas Figures 13 and 20 show a frame that relates to a single photovoltaic cell (Ans. 3). We, therefore, sustain the Examiner’s rejection under § 102 of claims 1^1, 9-15, and 19-23. Rejections II—IV (Obviousness) Dependent claims 5—8 and 16—18 Claims 5—8 and 16—18 stand rejected under § 103 as unpatentable over Mascolo, alone or further in view of one of Itoyama and Poddany. Appellants do not argue the patentability of claims 5—8 and 16—18 separately from that of independent claim 1 other than to argue that Itoyama and Poddany fail to cure the argued deficiency in the rejection under § 102 of independent claim 1 as anticipated by Mascolo (see Appeal Br. 8—9). Having found no deficiency therein, we sustain the Examiner’s rejections under § 103 of claims 5—8 and 16—18 over Mascolo, alone or further in view of one of Itoyama and Poddany. DECISION The Examiner’s decision to reject claims 1—23 is affirmed. 5 Appeal 2015-001705 Application 13/949,073 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation