Ex Parte Bunea et al

Patent Trial and Appeal Board

Aug 1, 2017

13175578 (P.T.A.B. Aug. 1, 2017)

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.
10031.008100 2857
EXAMINER
GOLDEN, ANDREW J
ART UNIT PAPER NUMBER
1757
MAIL DATE DELIVERY MODE
13/175,578 07/01/2011
74254 7590 08/02/2017
Okamoto & Benedicto LLP
P.O. Box 641330
San Jose, CA 95164-1330
Gabriela E. BUNEA
08/02/2017 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 GABRIELA E. BUNEA, SUNG DUG KIM, and
DAVID F.J. KAVULAK1
Appeal 2016-007609
Application 13/175,578
Technology Center 1700
Before TERRY J. OWENS, MARKNAGUMO, and
SHELDON M. McGEE, Administrative Patent Judges.
Opinion for the Board by McGEE, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1—14, 16, and 17.
We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 SunPower Corporation is identified as the real party in interest. App. Br. 1.
Appeal 2016-007609
Application 13/175,578
BACKGROUND
The subject matter on appeal relates to photovoltaic modules and
laminates. Spec. 11.
Independent claim 1 is illustrative, is taken from the Claims Appendix
of the Appeal Brief, and appears below (with key limitations italicized):
1. A photovoltaic module having a first side directed
toward the sun during normal operation and a second side, the
photovoltaic module comprising:
a perimeter frame; and
a photovoltaic laminate at least partially enclosed by and
supported by the perimeter frame, the photovoltaic laminate
comprising:
a transparent cover layer positioned toward the first
side of the photovoltaic module;
an upper encapsulant layer beneath and adhering to
the cover layer;
a plurality of photovoltaic solar cells beneath the
upper encapsulant layer, the photovoltaic solar cells
electrically interconnected;
a lower encapsulant layer beneath the plurality of
photovoltaic solar cells, the upper and lower encapsulant
layers enclosing the plurality of photovoltaic solar cells,
wherein the lower encapsulant layer extends in gaps
between adjacent raised features of the plurality of
photovoltaic solar cells; and
a homogenous rear environmental protection layer
that is co-extruded with the lower encapsulant layer, the
homogenous rear environmental protection layer adhering
to the lower encapsulant layer, the homogenous rear
environmental protection layer exposed to the ambient
environment on the second side of the photovoltaic
module.
App. Br. 7.
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Application 13/175,578
STATEMENT OF THE CASE
In the rejection of claims 1—3, 5—9, 11—14, 16, and 17, the Examiner
finds that Takagi2 discloses the recited elements of independent claim 1,
except for the limitations requiring that the plurality of photovoltaic solar
cells have raised features and that the lower encapsulant layer extends in
gaps between the adjacent raised features. Final Act. 4. The Examiner
relies on Matsuno3 for such limitations, and reasons that the ordinary skilled
artisan would have been motivated to combine the teachings of Takagi and
Matsuno for the purpose of increasing the efficiency of the solar cells. Id. at
4-5.
The Examiner finds further that the limitation requiring the
homogenous rear environmental protection layer to be co-extruded with the
lower encapsulant layer is a product-by-process limitation. Id. at 5. The
Examiner determines that, because Takagi and Matsuno teach the recited
structural elements, and because the patentability of a product or apparatus
does not depend on its method of production, “the claim limitations are met
by Takagi and Matsuno.” Id. The Examiner makes similar findings and
determinations for independent claim 11, which also requires co-extrusion of
an outer sealing layer with an encapsulant layer. Id. at 6—7.
Appellants contend, inter alia, “that ‘co-extrusion’ is a well-known
term of art where two or more materials are pressed through the same die to
2 Takagi et al., (“Takagi”), US 2010/0224235 Al, published Sept. 9, 2010.
3 Matsuno et al., (“Matsuno”), US 6,096,569 Bl, issued Aug. 1, 2000.
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produce a single piece, allowing for properties and structures that are distinct
from those of a single material,” and that Takagi and Matsuno fail to
disclose such a co-extruded encapsulant and homogenous layer. App. Br. 4.
Appellants urge that the Examiner erred by not giving patentable weight to
the product-by-process limitation requiring co-extrusion, and argue that the
cited references cannot meet the disputed limitation “because the laminated
sheet of Takagi cannot be co-extruded with the sealing resin of Matsuno,
because resin is a liquid.” Id. at 4—5, citing to Matsuno 12:59-64.
In the Answer, the Examiner indicates that Appellants make
arguments devoid of evidence that the recited co-extrusion process imparts a
distinctive structural characteristic over the prior art. Ans. 15.
OPINION
We are persuaded of reversible error. The Examiner bears the initial
burden of presenting a prima facie case of obviousness; only when that
burden is met does the burden shift to Appellants to come forward with
appropriate evidence or argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
Here, the Examiner erred by failing to consider the claim limitation
requiring the co-extrusion of certain layers, because the Examiner did not
provide any evidence or plausible reasoning how the claimed co-extruded
layers appear to be the same or substantially the same as the layers disclosed
in the prior art. Final Act. 5. As explained in MPEP § 2113.11:
[o]nce the examiner provides a rationale tending to show that
the claimed product appears to be the same or similar to that of
the prior art, although produced by a different process, the
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burden shifts to [Appellants] to come forward with evidence
establishing an unobvious difference between the claimed
product and the prior art product.
citing In re Marosi, 710 F.2d [799], 802 (Fed. Cir. 1983) (emphasis
added).
Specifically, in the Final Rejection (Final Act. 3—5), the Examiner
made factual findings regarding the separate layers disclosed in the Takagi
and Matsuno references, but did not provide any evidence or technical
reasoning which indicates that Matsuno’s resin lower encapsulant layer that
extends between the electrodes, when combined with Takagi’s laminated
outer layer, is the same or substantially the same as the Appellants’ recited
co-extruded layers. See In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985); In
re Best, 562 F.2d 1252, 1255 (CCPA 1977). Thus, on this record, the
Examiner erred by improperly shifting the burden to Appellants to come
forward with evidence (Ans. 15) that the claimed co-extruded layers are
structurally distinct from the prior art layers, without first satisfying the
initial burden of establishing a prima facie case of obviousness. Oetiker,
977 F.2d at 1945. It follows that we reverse the rejection of claims 1—3, 5—9,
11-14, 16, and 17.
Because the other obviousness rejections suffer from this
deficiency (Final Act. 8, 9), we reverse them as well.
SUMMARY
The decision of the Examiner is reversed.
REVERSED
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Application 13/175,578
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABRIELA E. BUNEA, SUNG DUG KIM, and
DAVID F.J. KAVULAK
Appeal 2016-007609
Application 13/175,578
Technology Center 1700
Opinion dissenting by NAGUMO, Administrative Patent Judge.
I dissent from the reversal of the rejection, with respect.
The Federal Circuit has explained that on appeal, the appellant must
not only show the existence of error, but also that the error was harmful
because it affected the decision below. In re Chapman, 595 F.3d 1330, 1338
(Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009)
(“the burden of showing that an error is harmful normally falls upon the
party attacking the agency’s determination.”). In my view, in this case,
Appellants have failed to carry their burden to show harmful error on appeal.
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Moreover, to set the stage, in my view, the Examiner set out a prima
facie case of obviousness based on the structural similarity of a photovoltaic
module in which the plurality of photovoltaic solar cells of Takagi are
replaced by the photovoltaic module of thin film solar cells having adjacent
raised features, disclosed by Matsuno, and encapsulated by a resin, as taught
by Matsuno. (Final Act. 4—5.)
A. Failure of Appellants’s Rebuttal
Appellants have failed to show harmful error in the appealed
rejections for two main reasons. First, Appellants appear to have
misapprehended the Examiner’s rejection in nearly all of their arguments for
patentability. Second, Appellants fail to support the remainder of their
arguments with credible substantial evidence of record. I address
Appellants’s arguments seriatim.
Appellants argue first that “there is no disclosure in the combination
of Takagi and Matsuno that a sheet of encapsulant of Takagi extends
between gaps of adjacent raised features of the solar cell.” (Br. 3, last
sentence.) As the Majority recognize (Op. 3, 1st para.), the Examiner finds
that Matsuno provides both the plurality of solar cells having adjacent raised
features and the resin that extends between the gaps between those raised
features. Thus, Appellants’ first argument is irrelevant because it addresses
a rejection that was not made.
Second, Appellants argue that the Examiner failed to give proper
weight to the product-by-process limitation. In Appellants’s words, “‘co-
extrusion’ is a well-known term of art where two or more materials are
pressed through the same die to produce a single piece, allowing for
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properties and structures that are distinct from those of a single material.”
(Br. 4, 1 st para.)
The Examiner characterizes this statement well: “Appellant has only
made allegations that the recitation ‘coextruded’ imparts a distinctive
structural characteristic but appellant has not stated what distinctive
structural difference was imparted to the homogenous rear environmental
protection layer and lower encapsulant layer by being co-extruded.”
(Ans. 15,11. 10-13.) To this statement I would add that merely because a
process may “allow” for properties and structures that are distinct from those
of a single material does not mean that distinct properties and structures
necessarily arise, or even that they arise more often than not. I would add
further that Appellants have not come forward with any citation to any
authority of record supporting what properties and structures would exist in
the claimed photovoltaic module as a result of the recited coextrusion
process. It has been well-settled for generations that “[attorney’s argument
in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974); In re Walters, 168 F.2d 79, 80 (CCPA 1948) (same,
citing cases).
Appellants do argue further, “[m]ore specifically, claim 1 recites co­
extruded encapsulant and homogenous layer, a structural limitation that is
not disclosed by the combination of Takagi and Matsuno.” (Br. 3, 1st para.,
last sentence.) But this, without more, is at best merely a restatement of a
limitation of claim 1 and an unelaborated denial that the references teach or
suggest that limitation. This amounts to mere pleading, not substantive
argument. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
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that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. Because Lovin did not provide such arguments, the Board did not
err in refusing to separately address claims[].”).
Although Appellants recognize that the encapsulant taught by
Matsuno extends between raised features of solar cells because it is a liquid
sealing resin (Br. 4, 3rd para.), Appellants seem to be under the impression
that the Examiner relies on using Takagi’s encapsulant sheets, which “would
not necessarily extend between adjacent raised features of the solar cells”
{id. at last sentence). Again, this argument is irrelevant because it is directed
to a rejection that the Examiner did not make.
Appellants urge next that “the structural characteristic[s] implied by a
homogenous rear environmental protection layer that is co-extruded with the
lower encapsulant layer is a distinctive structural characteristic.” {Id. at 5,
11. 1—3.) This argument, however, is at best a restatement of the second
argument discussed supra, and like that argument, is not supported by
citation to any authority of record.
Finally, Appellants argue further that “the laminated sheet of Takagi
cannot be co-extruded with the sealing resin of Matsuno, because [the] resin
is a liquid.” {Id. at 5,11. 5—6.) This argument is also irrelevant because it is
directed to a rejection the Examiner did not make.
In summary, most of Appellants arguments are not directed to the
rejections that were actually made. As for the remaining arguments about
the product-by-process limitation, Appellants have not, in Specification,
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their principal Brief, or in their Reply Brief, identified what structures and
properties arise from the recited coextrusion process. Nor have Appellants
come forward with any credible evidence of record in support of their
arguments against the product-by-process aspect of the appealed rejections.
B. The prima facie case of obviousness
In contrast, the Examiner, provides numerous specific cites
throughout the Final Rejection and the Examiner’s Answer to the references
relied on as evidence supporting the legal conclusion of obviousness. The
Examiner also provides the only substantive discussion of the disclosure of
the Specification relating to the alleged distinct properties of the claimed
invention. Specifically, the Examiner finds that paragraphs [0019] and
[0029] “indicate[] the homogenous rear environmental protection layer and
lower encapsulant layer may be co-extruded for simplicity of manufacture,
but does not state the co-extrusion process imparts a distinctive structural
characteristic.” (Ans. 15,11. 14—17.) The Examiner concludes that
“Appellant has not established or pointed to a structural difference between
the claimed co-extruded homogenous rear environmental protection layer
and lower encapsulant layer and the prior art.” {Id. at 11. 17—19.)
The magnitude of the burden of establishing—or of rebutting—a
prima facie case of obviousness depends on the factual record underlying the
claimed subject matter and the cited prior art. In the present case, the
Specification provides only general descriptions of embodiments of the
invention. There are, as the Examiner has found, no specific disclosures of
what distinct structures arise from the recited co-extrusion, nor how those
distinct structures result in distinct properties of the finished product. The
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Specification provides no working examples, and no comparative examples.
Thus the reader, e.g., an Examiner, an Administrative Patent Judge, a
prospective licensee, or a competitor, is provided scant assistance in
assessing what structures and properties arise from making the claimed
photovoltaic module by coextrusion. Moreover, Appellants have not
supplemented that record with disclosures from textbooks or review articles
reflecting a consensus on the structures and properties resulting from
coextrusion among persons skilled in the relevant arts.
The Specification discloses that a great variety of substances are
useful for the coextruded layer. In particular, polyolefins are said to be
suitable for the co-extruded encapsulant layer. (Spec. [0018].)
Fluoropolymers and a wide variety of other polymers, including polyolefins,
are said to be useful for the co-extruded environmental protection layer.
{Id. at [0019].) The claims are not limited, of course, to these suggestions.
Moreover, the claims are free of express limitations as to properties of the
materials to be coextruded, and the claims do not specify the properties of
the coextruded product. Rather, any combination of materials that results in
a suitable product will do.
Under these circumstances, the Examiner, who as a practical matter
cannot make products by various methods and compare the resulting
products, can satisfy the burden of coming forward with a product that is
reasonably the same or only slightly different from the product claimed by,
as in this case, combining materials disclosed for substantially the same use
in ways that appear to result in substantially the same product. This way of
proceeding has been endorsed by our reviewing court for nearly fifty years.
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[T]he lack of physical description in a product-by-process
claim makes determination of the patentability of the claim
more difficult, since in spite of the fact that the claim may
recite only process limitations, it is the patentability of the
product claimed and not of the recited process steps which
must be established. We are therefore of the opinion that
when the prior art discloses a product which reasonably
appears to be either identical with or only slightly different
than a product claimed in a product-by-process claim, a
rejection based alternatively on either section 102 or
section 103 of the statute is eminently fair and acceptable.
As a practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before
it and then obtain prior art products and make physical
comparisons therewith.
In re Brown, 459 F.2d 531, 535 (CCPA 1972).
In this case, the suitability of the materials for their intended use is
established by the common purpose of Takagi and of Matsuno—the
preparation of encapsulated photovoltaic modules—and the use of materials
suitable for sealing the modules and protecting them against the
environment. Appellants have not challenged any of these teachings, so
such arguments have been waived for purposes of this appeal. Their
arguments are limited to whether the combination of teachings would have
resulted in or suggested the claimed subject matter. The arguments they
have made—that the properties and structural differences are well known to
those skilled in the art—are free of citations to credible evidence in the
record. On the present record, I find that it is the Examiner one who has
come forward with the preponderance of relevant evidence that the
photovoltaic module obvious in view of Takagi and Matsuno is the same or
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substantially the same as a photovoltaic module made by the coextrusion
process recited in claim 1.
Because the weight of the evidence of record cited by the Examiner
and by Appellants favors the Examiner on every substantive issue raised in
this appeal, I dissent from the implicit determination by the Majority that
Appellants carried their burden of establishing harmful error on the part of
the Examiner in maintaining the appealed rejection. I further dissent from
the determination—made, in my view, without a preponderance of
substantial evidence of record cited or analyzed—that the Examiner failed to
establish a prima facie case of obviousness.
On the present record, I would affirm the rejection. I therefore
dissent, respectfully.
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