Ex Parte Dimov et alDownload PDFPatent Trial and Appeal BoardNov 27, 201713133634 (P.T.A.B. Nov. 27, 2017) 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. 13/133,634 10/05/2011 Dmitry Dimov 110328-8002.US01 4638 22918 7590 11/29/2017 PERKINS COIE LLP - PAO General P.O. BOX 1247 SEATTLE, WA 98111 -1247 EXAMINER BAUMANN, LIESL C ART UNIT PAPER NUMBER 1754 NOTIFICATION DATE DELIVERY MODE 11/29/2017 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): patentprocurement @perkinscoie. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DMITRY DIMOV, JULIAN SWEET, MARK GOLDMAN, THEO MANN, CHRISTINE M. KURJAN, and ANNE ELIZABETH FLETCHER Appeal 2017-001226 Application 13/133,634 Technology Center 1700 Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-001226 Application 13/133,634 Appellants appeal under 35 U.S.C. § 134 the Final Rejection of claims 1, 2, 4—6, and 23—34. Claim 3, which was cited in the Final Rejection, has been cancelled via an amendment filed February 1, 2016. (Ans. 24). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to a rack and support system that may allow simplified installation and electrical connections in solar panels systems and modules with various configurations (Spec. 110).1 Claim 1 is illustrative: 1. A rack module for a solar module comprising: a rack frame, wherein the rack frame comprises three separable rails that together form a triangular-shaped loop in an open frame that encloses an empty region, the rack frame having a first side and a second side opposite to the first side; exactly three footings attached to the first side of the rack frame, wherein the exactly three footings thereby provide stability for the rack frame when resting on a surface regardless of how even or uneven the surface is; a plurality of fasteners configured to fasten the rack frame to the surface, wherein the fasteners and the three footings directly contact the surface; wires pre-disposed within the three separable rails and having corresponding connectors exposed at or substantially near ends of the three separable rails; and 1 We refer to the Specification filed Jun. 8, 2011 (“Spec.”); Final Office Action mailed Oct. 30, 2015 (“Final Act.”); Appeal Brief filed Apr. 11, 2016 (“App. Br.”); Examiner’s Answer mailed Aug. 28, 2016 (“Ans.”); and the Reply Brief filed Oct. 26, 2016 (“Reply Br.”). 2 Appeal 2017-001226 Application 13/133,634 a microinverter attached to the rack frame, wherein the rack frame is configured to accept a plurality of solar panels on the second side for attachment; and wherein each of the separable rails has a straight interior edge and a straight exterior edge on the second side along an entire length of each separable rail to thereby enable the plurality of solar panels to overhang over both the empty region inside the rack frame and an exterior region of the rack frame when the solar panels are attached on the second side. (App. Br., Claims Appendix, 19.) Appellants appeal the following rejections2: 1. Claims 1, 2, 5, 6, and 32 are rejected 35 U.S.C. § 103(a) as unpatentable over Catella et al., (US 4,611,090 issued Sept. 9, 1986; (“Catella”)); in view of Poddany et al., (US 6,959,517 B2 issued Nov. 1, 2005 (“Poddany”)); Garvison et al., (US 6,111,189 issued Aug. 29, 2000 (“Garvison”); and Sasaoka et al., (US 6,800,801 B2 issued Oct. 5, 2004 (“Sasaoka”)). 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Poddany, Garvison, Sasaoka, and Brazier et al., (US 2007/0246039 Al published Oct. 25, 2007 (“Brazier”)). 3. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Poddany, Garvison, Sasaoka, and Liebendorfer (US 2003/0015637 Al published Jan. 23, 2003). 4. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Poddany, Garvison, Sasaoka, and Solar-Facts 2 The Examiner withdrew the rejections under 35USC§§112, first and second paragraphs (Ans. 24). 3 Appeal 2017-001226 Application 13/133,634 (Choosing An Inverter For Your Solar Power System, Solar Facts, 1-3, Apr. 4, 2007). 5. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Poddany, Garvison, Sasaoka, and Toyomura et al., (US 2004/0159102 Al, published Aug. 19, 2004 (“Toyomura”)). 6. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Poddany, Garvison, Sasaoka, and McMaster et al., (US 5,125,608 issued Jun. 30, 1992 (“McMaster”)). 7. Claims 23, 24, 26, and 27 are rejected under 35 U.S.C. § 103(a) as unapatentable over Catella in view of Liebendorfer, Poddany, Sasaoka and Toyomura. 8. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Liebendorfer, Poddany, Sasaoka, Toyomura, in view of Brazier. 9. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Poddany and Sasaoka. 10. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over Catella in view of Sasaoka. FINDINGS OF FACT & ANALYSIS Appellants argue subject matter common to independent claims 1, 23, 28, and 34 (App. Br. 7—173). We select claims 1 and 28 as representative. 37 C.F.R. § 41.37(c)(l)(iv). The dependent claims are not argued separately 3 Identified by Appellants, the real party in interest is Armageddon Energy, Inc., App. Br., 2. 4 Appeal 2017-001226 Application 13/133,634 and thus will stand or fall with our analysis of the rejection under claims 1 and 28 (App. Br. 17—18). The Examiner’s findings and conclusions regarding Catella, Poddany, Garvison, and Sasaoka are located on pages 7 to 11 of the Final Action. Appellants argue that the Examiner erroneously finds that Catella’s disclosure of a triangular rack in Figure 3 inherently teaches that posts are placed at the vertices of triangle (App. Br. 7). Appellants contend that the Examiner’s rejection is based upon the possibility of placing exactly three footings at each of the vertices of the triangle, which is improper for a rejection based upon inherency (App. Br. 8; Reply Br. 4). Appellants contend that the Examiner relies on Catella’s teachings regarding Figures 5 and 6 which depict placing posts 43 at the comers of an array of support members 32 (i.e., racks), not at the comers of each individual support members 32 (i.e., rack) (Reply Br. 4). Appellants’ arguments are not persuasive because they fail to address the Examiner’s stated rejection. The Examiner does not rely on inherency as the basis for finding that exactly three footings would have been placed at the comers of the support members 32. Rather, the Examiner finds that based on the teachings of Catella, posts 43 may be placed at the comers of an array (Fig. 5) or near the comers of a support member that is part of an array (Fig. 6), and thus, it would have been obvious to place posts 43 at the vertices of Figure 3’s triangular support member (Final Act. 9). Appellants do not contest the Examiner’s conclusion that it would have been obvious to place exactly three footings at the vertices of Catella’s triangular support member shown in Figure 3. App. Br. 7—9. Moreover, Catella teaches that thickened regions 19 are formed at areas along the skirt of the frame 5 Appeal 2017-001226 Application 13/133,634 including the comers of a support member to allow securing support members to other support members in the array or to a base support via posts 43 (col. 5,11. 4—12; col. 8,11. 45^49; Fig. 4). Therefore, Catella would have suggested that posts or footings could be secured to the thickened portions that include the comers or vertices of a triangular frame. Appellants argue that the Examiner’s claim interpretation of the phrase “separable rails” is unreasonably broad and fails to take into account Appellants’ Specification disclosure (App. Br. 10). Appellants contend that the Specification disclosure with regard to Figure 10A does not support the Examiner’s constmction of “separable” as including cutting apart the rack. Id. Appellants contend that one of ordinary skill in the art would not interpret Catella’s integral triangular stmcture shown in Figure 3 as comprising three separable rails because the triangular support member could be cut apart. Id. Citing CSP Technologies, Inc. v. Sud-Chemie AG, 643 Fed. App’x. 953 (Fed. Cir. 2016), Appellants argue that our reviewing court has mled against unreasonable interpretations of claim terms that contradict intrinsic evidence (App. Br. 10). Appellants’ argument regarding CSP Technologies are not persuasive. First, CSP Technologies concerns an infringement, post-grant proceeding where claims are interpreted to preserve validity rather than applying the broadest reasonable interpretation. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Therefore, the relevance of the holding in CSP Technologies is not apparent. Second, we agree with the Examiner’s finding the facts in CSP Technologies are distinguishable from the facts presented in this appeal (Ans. 28—29). Specifically, the Examiner finds that the Specification does not define or even use the term “separable” (Ans. 27—28). Although Figures 6 Appeal 2017-001226 Application 13/133,634 10A and 10B as described in paragraph 132 of the Specification state that the separate rails of the rack “may be connected,” the Examiner correctly finds that the Specification does not disclose what fasteners are used to attach the rails together (e.g., adhesive, screws, welds) (Ans. 27). Therefore, there is no intrinsic evidence in the Specification regarding the scope of the term “separable” to contradict the Examiner’s broadest reasonable interpretation of that term. On this record, the Examiner reasonably finds that the broadest interpretation of “separable” consistent with the Specification includes a rack capable of being separated including by cutting. Appellants argue that although Garvison discloses electrical raceways that enable wires to be threaded through, Garvison does not disclose predisposed wires within the three separable rails as claimed (App. Br. 11— 12). Appellants contend that the predisposition of the wires in the rails is critical as disclosed in paragraph 129 of the Specification (App. Br. 11). Appellants argue that the predisposition of the wires in the rail enables the wiring to be installed at the factory, and may eliminate the need to connect individual cables by the installer on site (App. Br. 12). Appellants contend that the combination of Garvison and Catella fail to teach predisposing wires in each of the three rails that compose the triangular-shaped loop (App. Br. 12). Contrary to Appellants’ arguments, the Examiner finds that Garvison teaches forming electrical raceways along each rail of the frame (Ans. 30). Appellants do not dispute this finding of the Examiner (Reply Br. generally). Based on this teaching, the Examiner reasonably finds that it would have been obvious to provide each of Catella’s rails that compose the triangular 7 Appeal 2017-001226 Application 13/133,634 frame with raceways to hold the wiring (Ans. 30). Regarding the predisposition of the wiring, the Examiner finds that the term “predisposed” does not place a time limit on when the wires were placed in the rail (Ans. 30). The Examiner finds that all that is required by the claim is that the wires are disposed within the rail at some point in time (Ans. 30). The Examiner also finds that the criticality of having the wires predisposed in the rails argued by Appellants as disclosed in paragraph 129 of the Specification fails to show an unexpected advantage because Garvison teaches having raceways that permit ease of storing and forming wiring connections (Ans. 30). Appellants do not dispute these findings of the Examiner (Reply Br. generally). Appellants argue that Sasaoka fails to teach using a microinverter or a microinverter attached to a rack frame (App. Br. 13). Appellants contend that Sasaoka only discloses using an ordinary inverter. Id. Appellants argue that paragraphs 17 and 122 of the Specification disclose the criticality of using a microinverter (App. Br. 13). The Examiner finds that although Sasaoka teaches using an inverter, a microinverter has the same functionality as an inverter (Final Act. 11; Ans. 31). The Examiner finds that Appellants have not provided any evidence that a microinverter and inverter differ structurally or functionally (Ans. 31). In other words, the Examiner finds that a microinverter and an inverter are each known in the art and are functional equivalents such that it would have been obvious to substitute one functional equivalent for another. Appellants do not dispute that a microinverter and an inverter are functional equivalents (Reply Br. 7—8). Functional equivalency suffices as a reason to 8 Appeal 2017-001226 Application 13/133,634 substitute one equivalent for another. In re Font, 675 F.2d 297, 301 (CCPA 1982). Appellants argue that the Examiner’s rejections are based upon impermissible hindsight where the claims are used as a template to piece together the teachings of the prior art (App. Br. 13). For the reasons discussed supra in this decision, we find that Appellants’ hindsight argument is not persuasive. CLAIM 28 In addition to the arguments discussed above, Appellants additionally argue that the Examiner has improperly treated the claim limitation “the plurality of solar panels each having a hexagonal shape and multiple solar cells, wherein the solar panels overhang over and beyond the rack frame” (App. Br., Claims Appendix, 21) as an intended use {Id., at 15). Appellants contend that claim 28 is directed to a “solar module” which includes the hexagonal solar panels as part of the module (App. Br. 16). Appellants contend that the Examiner has not established a prima facie case of obviousness because the prior art does not teach hexagonal solar panels. Id. Claim 28 recites, in relevant part: . . .wherein the rack frame is configured to accept a plurality of solar panels on the second side; the plurality of solar panels each having a hexagonal shape and multiple solar cells, wherein the solar panels overhang over and beyond the rack frame. The Examiner finds that claim 28 merely requires that the rack have a configuration that is capable of accepting hexagonal shaped solar panels (Ans. 33). The Examiner finds that use of hexagonal solar panels is merely 9 Appeal 2017-001226 Application 13/133,634 an intended use of the rack. Id. The Examiner further finds that because Catella’s frame is triangular like Appellants’ rack, Catella’s frame must be capable of accepting a plurality of solar panels including hexagonal shaped panels (Ans. 33). The Examiner finds that any shaped solar panel, including hexagonal, are capable of overhanging over and beyond the rack frame (Final Act. 23—24). The Examiner determines that since Catella’s triangular frame structure is capable of performing the intended use, the prior art meets the claim (Final Act. 24). We understand the Examiner to find that hexagonal shaped solar panels are known and Catella’s triangular rack is capable of supporting the hexagonal shaped solar panel on the rack so as to render obvious the overhanging limitations of the claim. Appellants’ arguments do not show error with the Examiner’s finding that Catella’s triangular rack is capable of supporting hexagonal shaped solar cells in the manner required by the claims. On this record, we affirm the Examiner’s 35 USC § 103(a) rejections (1) to (10). DECISION The Examiner’s decision is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED 10 Copy with citationCopy as parenthetical citation