13423660 (P.T.A.B. Jan. 31, 2018)

Ex Parte Jacobs et al

Patent Trial and Appeal BoardJan 31, 2018

13423660 (P.T.A.B. Jan. 31, 2018)

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. 13/423,660 03/19/2012 Gregory F. Jacobs 2012-033 8691 27569 7590 PAUL AND PAUL 1717 Arch Street Three Logan Square SUITE 3740 PHILADELPHIA, PA 19103 EXAMINER TRINH, THANH TRUC ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): INFO @PAUL ANDPAUL.COM claire @paulandpaul.com fpanna@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY F. JACOBS and HUSNU M. KALKANOGLU Appeal 2016-002723 Application 13/423,6601 Technology Center 1700 Before JEFFREY T. SMITH, MONTE T. SQUIRE, and AVELYN M. ROSS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants timely request2 reconsideration of our Decision3 affirming the 35 U.S.C. § 103(a) rejections of claims 1-20. Appellants argue that the Board and the Examiner have failed to explain why the person having ordinary skill in the art would modify Younan as proposed by the Examiner and therefore have failed to establish a 1 According to Appellants, the real party in interest is CertainTeed Corporation. See App. Br. 1. 2 Request for Rehearing filed December 27, 2017 (“Request”). 3 Decision on Appeal mailed October 27, 2017 affirming the 35 U.S.C. § 103(a) rejections of claims 1-20 (cited henceforth as “Op.”). Appeal 2016-002723 Application 13/423,660 prima facie case of obviousness. (Request 2). Appellants also argue that the person having ordinary skill in the art would have absolutely no reason to reduce the efficient use of space and power output of the shingle of Younan by reducing the size of its photovoltaic elements. (Request 3). As stated in our decision (Op. 6) the test of obviousness is not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of [those] references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). A person of ordinary skill in the art would have recognized that shingles could have been formed having less than half of the total exposed area of the tab portion of the shingle covered by photovoltaic elements. A person of ordinary skill in the art would have recognized reducing the size of the photovoltaic elements on the tab portion of the shingle would have reduced the energy generated by the shingle. 2 Appeal 2016-002723 Application 13/423,660 CONCLUSION Based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed October 27, 2017, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). DENIED 3