Ex Parte Jacobs et al

Patent Trial and Appeal Board

Feb 18, 2016

11742909 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111742,909 05/01/2007 Gregory F. Jacobs
20306 7590 02/18/2016
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
07-169 5718
EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
MAILDATE DELIVERY MODE
02/18/2016 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 GREGORY F. JACOBS AND WAYNE E. SHAW
Appeal2014-001685
Application 11/742,909
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and JULIA HEANEY,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1, 2, 13, 16, 19-21, 24--26, 28, 29,
34, 44--46, and 49 of Application 11/742,909. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
BACKGROUND
The subject matter on appeal relates to a photovoltaic device or
roofing element having substantially opaque granules on top of a polymer
1 Appellants identify the real party in interest as CertainTeed Corp. (Br. 3).
Appeal2014-001685
Application 11/742,909
structure, which covers the active face of a photovoltaic element. App. Br.
2. The substantially opaque granules are used to impart desirable aesthetics
in roofing applications, while retaining sufficient efficiency in electrical
power generation. Spec. 2.
Representative claim 1 is reproduced from the Claims Appendix of
the Appeal Brief as follows:
1. A photovoltaic device comprising:
a photovoltaic element having an active face and an operating
wavelength range;
a polymer structure having (a) a bottom surface disposed on the
active face of the photovoltaic element and (b) a top surface;
and
a plurality of granules disposed on the top surface of the
polymer structure above the active face of the photovoltaic
element, the granules being substantially opaque to radiation
over the operating wavelength range of the photovoltaic
element and having size in the range from about 0.2 mm to
about 3 mm, wherein the granules have a surface fill factor of
no greater than about 50% over the active face of the
photovoltaic element.
THE REJECTIONS
1. Claims 1, 2, 19-21, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Warfield,2 Hong,3 and DE'872.4
2 Warfield, US 2008/0178928 Al published July 31, 2008 (hereinafter
"Warfield").
3 Hong, US 2006/0251807 Al published November 9, 2006 (hereinafter
"Hong").
4 Hermannsdorfer (As Translated) DE20214872Ul February 13, 2003
(hereinafter DE'872).
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Appeal2014-001685
Application 11/742,909
2. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
based on the combination of Warfield, Hong, DE'872, and
Kataoka. 5
3. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
based on the combination of Warfield, Hong, DE'872, and Fujita. 6
4. Claims 1, 19-21, 24--26, 28, 29, 44--46, and 49 stand rejected
under 35 U.S.C. § 103(a) as unpatentable based on the
combination of Warfield, Hong, DE'872, and Younan.
5. Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable
based on the combination of Warfield, Hong, DE'872, Younan,
and J ongerden. 7
DISCUSSION
Appellants have not presented substantive arguments for patentability
of claim 26 or any of the dependent claims. Therefore, we limit our
discussion to claim l; all other claims stand or fall with claim 1.
Appellants argue that the Examiner has not established a prima facie
case of obviousness in combining Warfield and Hong, because the Examiner
failed "to set forth any reason that the person of ordinary skill in the art
would have used the granules of Hong on the polymer structure of
Warfield." App. Br. 7, 10. Appellants further argue that a person of
ordinary skill in the art would have had no reason to use the granules of
Hong "in place of the screen-printed pattern of the DE'872 reference, as
5 Kataoka, JP 2000-150936 A issued May 30, 2000 (hereinafter "Kataoka").
6 Fujita, JP 07-074380 A issued March 17, 1995 (hereinafter "Fujita").
7_Jongerden, US 2003-0178058 Al published September 25, 2003 (hereinafter
Jongerden).
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Appeal2014-001685
Application 11/742,909
roofing granules were not known for use for anything other than the
protection of asphaltic surfaces from degradation." Id. 12.
We have reviewed each of Appellants' arguments, and find that a
preponderance of the evidence supports the conclusion of obviousness.
Accordingly, we sustain the rejections for the reasons explained in the
Answer. We add the following primarily for emphasis.
Appellants' argument that Warfield is insistent on a transparent
polymer structure, and therefore teaches away from use of opaque material
over the active face of the photovoltaic element, is not persuasive. App. Br.
10-11. As the Examiner correctly finds, Warfield is primarily directed
toward camouflaging a photovoltaic element in a roofing application, and
does not discuss reduction of light transmission or efficiency; by merely
teaching transparent sheets, Warfield does not teach away from the use of
opaque materials. Ans. 6. Appellants' further argument that neither Hong,
nor any of the other references, disclose roofing granules for the primary
purpose of aesthetics, also lacks persuasive merit. App. Br. 11-12. Hong
recognizes the aesthetic value of roofing granules (Hong i-f 5), and Warfield
and DE'872 are both directed at improving aesthetics of a photovoltaic
element by camouflage. Warfield i-f 13; DE'872 3-5. Thus, we determine
there was no harmful error in the reasoning applied to the rejection, i.e., a
person of ordinary skill in the art would recognize that roofing granules,
such as those of Hong having the appropriate sizes, would enable Warfield's
photovoltaic module to more closely resemble a conventional roofing
element, thus improving aesthetic appearance while maintaining efficiency
by limiting the percentage of active surface to be covered. Final Act. 5---6;
Warfield i-f 13; DE'872 6-7.
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Appeal2014-001685
Application 11/742,909
SUMMARY
We affirm the rejections of claims 1, 2, 13, 16, 19-21, 24--26, 28, 29,
34, 44--46, and 49 as unpatentable under 35 U.S.C. § 103(a), for the reasons
set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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