Ex Parte Jacobs et al

Patent Trial and Appeal Board

Oct 25, 2017

13423660 (P.T.A.B. Oct. 25, 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.
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
10/27/2017 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):
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 APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—20. An oral hearing was held on September 28, 2017.2 We have
jurisdiction under 35 U.S.C. § 6.
1 According to Appellants, the real party in interest is CertainTeed
Corporation. See App. Br. 1.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal 2016-002723
Application 13/423,660
Appellants’ invention relates generally to a shingle having butt and
tab portions and wherein active photovoltaic element(s) appear on portions
only of the tab portions of the shingles. (Spec. 2). Claim 1 is illustrative of
the subject matter on appeal:
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 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 zone includes an active photovoltaic
element of predetermined height and width; said at least one
zone having at least one adjacent zone, said at least one
adjacent zone not including another active photovoltaic
element; and
the aggregate area of the total number of the photovoltaic
elements being less than half the area of the tab portion of the
shingle.
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Appeal 2016-002723
Application 13/423,660
App. Br. 14, Claims App’x.
Appellants (see generally App. Br.) request review of the following
rejections under 35 U.S.C. § 103(a):
I. Claims 1—4, 7—15, and 17—20 rejected as unpatentable over
the combined teachings of Younan et al. (US 5,437,735,
issued Aug. 1, 1995 (hereinafter “Younan”)) in view of
Fraas et al. (US 2003/0201007 Al, published Oct. 30, 2003
(hereinafter “Fraas”)).
II. Claims 5 and 6 rejected as unpatentable over the combined
teachings of Younan, Fraas, and Bondoc et al. (US
5,853,858) (“Bondoc”).
III. Claim 16 rejected as unpatentable over the combined
teachings of Younan, Fraas, and McCaskill et al. (US
2005/0178430 Al (hereinafter “McCaskill”)).
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 2—8).
OPINION3
After consideration of Appellants’ arguments and evidence and the
Examiner’s position in the Final Office Action and Answer, we AFFIRM the
obviousness determinations.
3 Appellants present substantial arguments for Rejection I, directed to claims
1—4, 7—15, and 17—20. Appellants’ arguments are directed to the claims as a
whole and do not address claims separately. Appellants did not present
substantial arguments addressing separately rejected dependent claims 5, 6,
and 16, Rejections II and III, and rely on the arguments presented for
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Appeal 2016-002723
Application 13/423,660
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner’s determination that the subject matter recited in claims 1—20
would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a). Accordingly, we sustain rejections I—III.
Appellants argue the Examiner has not provided an adequately
reasoned explanation to support the rejection. Appellants argue the
Examiner’s explanation that Fraas would motivate one of ordinary skill in
the art to reduce the number of photocells used by Younan in order to
achieve “a major cost reduction” would also require the inclusion of Fraas’
concentrator module. (App. Br. 9-11). Appellants further argue one of
ordinary skill in the art would not consider using a concentrator to be
obvious due to significant additional expense for the concentrator with no
likely increase in output from the photocells. {Id. at 11).
Appellants’ arguments are not persuasive of reversible error for the
reasons provided by the Examiner. The Examiner found Younan teaches
shingles having butt and tab portions and wherein active photovoltaic
element(s) appear on the tab portions of the shingles. (Final Act. 2—3;
Younan, col. 5). The Examiner found Younan does not teach the total
number of the at least one photovoltaic element on the tab portion of the
shingle being less than half the tab portion area of the shingle. (Final Act. 4;
Younan, col. 3,11. 14—17). The Examiner found Fraas teaches arranging
independent claim 1 for these claims. (App. Br. 11—13). We select
independent claim 1 as representative of Rejection I and limit our discussion
to independent claim 1.
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Appeal 2016-002723
Application 13/423,660
photovoltaic elements (solar cells) wherein the area of the photovoltaic
element is less than half of the total area for cost reduction. (Final Act. 4;
Fraas Tflf 12, 54, Fig. 6). The Examiner determined it would have been
obvious to a person skilled in the art to form the tab portion of a shingle such
that the area of the photovoltaic element is less than half (e.g., one third) of
the total exposing area. In support of this position, the Examiner explains:
A change in size is generally recognized as being within the level
of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ
237 (CCPA 1955). Where the only difference between the prior
art and the claims is a recitation of relative dimensions of the
claimed device, and the device having the claimed dimensions
would not perform differently than the prior art device, the
claimed device is not patentably distinct from the prior art
device, Gardner v. TEC Systems, Inc., 725 F.2d 1338,220 USPQ
111 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232
(1984).
Final Act. 4.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that
it would have been obvious for an artisan with ordinary skill to develop
workable ranges for result-effective parameters. In re Boesch, 617 F.2d 272,
276 (CCPA 1980); In reAller, 220 F.2d 454, 456 (CCPA 1955); In re
Woodruff, 919 F.2d 1575, 1577—78 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range).
We agree with the Examiner that a person of ordinary skill in the art
would have recognized that shingles could have been formed having less
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Appeal 2016-002723
Application 13/423,660
than half of the total exposed area of the tab portion covered by photovoltaic
elements. It has not been disputed that Fraas describes this arrangement. A
person of ordinary skill in the art would have also recognized that reduction
of the size of the photovoltaic element on the tab portion of a shingle would
have also resulted in a reduction in power output. Absent a showing of
criticality for the size of the photovoltaic element on the tab portion of a
shingle, Appellants have not adequately explained why one skilled in the art
would not have adjusted the size of Younan’s photovoltaic element on the
tab portion of a shingle to be within the claimed range in light of Fraas’
disclosure noted above.
Contrary to Appellants’ position, it is not necessary to physically
incorporate the reduced size of the photovoltaic element with the inclusion
of a concentrator module to render obvious the claimed invention. See In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be
incorporated in Ambrosio are basically irrelevant, the criterion being 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.”); and In reNievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
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Appeal 2016-002723
Application 13/423,660
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 reduction of the size of the photovoltaic element on the tab
portion of a shingle would have also resulted in a reduction in power output
from the shingle.
It is recognized, as argued by Appellants, that Fraas photovoltaic
arrangement also includes a concentrator module. Appellants’ argument is
essentially that a person of ordinary skill in the art would not have reduced
the size of the photovoltaic element without the inclusion of a concentrator
module. Appellants’ arguments lack persuasive merit because a person of
ordinary skill in the art would have recognized the consequences resulting
from reducing the size of the photovoltaic element on the tab portion of the
shingle. A person of ordinary skill in the art would have also recognized the
consequences of excluding a concentrator module whose function is to
focus/concentrate the light directed to the photovoltaic element.
Notwithstanding this known function of the concentrator module, this
disclosure would not have detracted from the knowledge of a person of
ordinary skill in the art. Specifically, that varying the size of the
photovoltaic elements on the shingle portion of the tab would have also
adjusted the amount of energy collected by that shingle. The Examiner cited
Fraas as evidence that it was known to vary the size of a photovoltaic
element on a shingle.
For the reasons stated above, and the reasons presented by the
Examiner, we sustain the rejections of claims 1—20 under 35 U.S.C.
§ 103(a).
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Appeal 2016-002723
Application 13/423,660
ORDER
The rejections of claims 1—20 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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