Ex Parte Jacobs et al

Board of Patent Appeals and Interferences

Nov 17, 2011

11412160 (B.P.A.I. Nov. 17, 2011)

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.
11/412,160 04/26/2006 Gregory F. Jacobs 344-05 7048
7590 11/17/2011
John F. McNulty
Paul & Paul
2900 Two Thousand Market Street
Philadelphia, PA 19103
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
11/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY F. JACOBS and HUSNU M. KALKANOGLU
____________

Appeal 2011-001643
Application 11/412,160
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-001643
Application 11/412,160

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-16, the only claims pending in the Application.2 An oral
hearing was held on November 9, 2011. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.
The invention is directed to a shingle having one or more active photovoltaic
elements thereon.
Appellants request review of the following grounds of rejection (App. Br. 6):
1. claims 1-4 and 7-15 under 35 U.S.C. §102(b) as anticipated by
Younan3 (Ans.4 3-6);
2. claims 5 and 6 under 35 U.S.C. §103(a) as unpatentable over Younan
as applied to claims 1-4 and 7-15, in view of Bondoc5 (Ans. 6-7); and
3. claim 16 under 35 U.S.C. §103(a) as unpatentable over Younan as
applied to claims 1-4 and 7-15, in view of McCaskill6 (Ans. 7).
Appellants’ arguments in support of patentability as to all of the appealed
claims are based on limitations found in claim 1 (see generally App. Br. 6-10), the
sole independent claim, which is reproduced below from the Claims Appendix to
the Appeal Brief (App. Br. 11):
1. A shingle comprising at least one layer of shingle material; the shingle
material having top and bottom surfaces, upper and lower edges defining the
shingle height, and right and left edges defining the shingle width; the shingle

1 Final Office Action mailed Dec. 30, 2009 (“Final”).
2 Appeal Brief filed May 11, 2010 (“App. Br.”)
3 US 5,437,735, issued Aug. 01, 1995.
4 Examiner’s Answer mailed Jun. 10, 2010.
5 US 5,853,858, issued Dec. 29, 1998.
6 US 2005/0178430 A1, pub. Aug. 18, 2005.
Appeal 2011-001643
Application 11/412,160

3
having a butt portion extending from the upper edge toward the lower edge and
between the right and left edges and being adapted to be substantially covered
when installed on a roof; the shingle having a tab portion extending from the lower
edge toward the upper edge and between the right and left edges and being adapted
to be substantially exposed when installed on a roof; the top surface of the tab
portion of the shingle having a plurality of visually distinct zones serially arranged
between said right and left edges; said visually distinct zones comprising at least
one of:
(i) zones of different material thicknesses;

(ii) zones of different numbers of layers of shingle material;

(iii) zones of different numbers of overlay;

(iv) zones of different colors;

(v) zones of different combinations of colors;

(vi) zones of different surface ornamentation;

(vii) combinations of any of (i) through (vi) above;

wherein at least one said zone includes an active photovoltaic element of
predetermined height and width; wherein said at least one zone that includes an
active photovoltaic element having any zones that are adjacent thereto being free
of an [sic] active photovoltaic elements; and with the aggregate width of the total
number of the at least one photovoltaic element of the shingle being less than half
the shingle width.

Appellants present several arguments in support of patentability of the
appealed claims. (See generally, App. Br. 6-10.) We do not address all of the
issues raised by these arguments, but limit our discussion to the following issue,
which is dispositive of the appeal as to claims 1-16: did the Examiner reversibly
err in finding Younan teaches a “shingle having a plurality of visually distinct
zones serially arranged between [] right and left edges . . . wherein at least one said
zone includes an active photovoltaic element[,] . . . the aggregate width of the total
Appeal
Applica

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43
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roduced b
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Appeal 2011-001643
Application 11/412,160

5
single active photovoltaic element 36x or 36y, or 1/5 the width of the shingle. (Id.;
see also, Final 8.)
Appellants argue, and we agree, that the plain meaning of the argued claim
limitation is that “the aggregate width[s] of all of the photovoltaic elements of the
shingle are less than half the shingle width. (Rep. Br.7 6; see also, App. Br. 8.) We
find nothing in the Specification which indicates an intent to deviate from this
plain meaning. The Examiner’s interpretation of “the aggregate width” as reading
on the width of only one out of five photovoltaic elements on Younan’s shingle
ignores the claim term “aggregate.” (Rep. Br. 7.)
The Examiner’s anticipation and obviousness rejections are based on this
erroneous interpretation of claim 1. The Examiner has not attempted to refute
Appellants’ argument that the combined widths of the two photovoltaic elements
36x and the three photovoltaic elements 36y illustrated in Younan FIG. 12 shingle
are greater than half the width of Younan’s shingle. (See generally, Ans. 7-15.)
Accordingly, Appellants have persuasively shown that the Examiner reversibly
erred in finding that Younan teaches a “shingle having a plurality of visually
distinct zones serially arranged between [] right and left edges . . . wherein at least
one said zone includes an active photovoltaic element[,] . . . the aggregate width of
the total number of the at least one photovoltaic element of the shingle being less
than half the shingle width” (claim 1 (emphasis added)).
The Examiner’s decision to reject claims 1-16 is reversed.
REVERSED

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7 Reply Brief filed Aug. 9, 2010.