Ex Parte Jacobs et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201611742909 (P.T.A.B. Feb. 18, 2016) Copy Citation 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). 2 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). 3 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. 4 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 tc 5 Copy with citationCopy as parenthetical citation