Ex Parte Keller

Patent Trial and Appeal Board

Aug 9, 2016

13155458 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/155,458 06/08/2011
22045 7590 08/11/2016
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Uwe Keller
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.
KURA0123PUS 3046
EXAMINER
KOKKINOS, NICHOLAS C
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE KELLER
Appeal2015-000815
Application 13/155,458
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
November 26, 2013 decision finally rejecting claims 1---6 and 8-22 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as Kuraray Europe GmbH
(Appeal Br. 3).
Appeal2015-000815
Application 13/155,458
CLAIMED SUBJECT MATTER
Appellant's invention is directed to photovoltaic modules which include a
transparent front covering, one or more photosensitive semiconductor layers, a
reflective adhesive film, and a rear covering (Abstract). The adhesive film
contains titanium dioxide pigment with a Ti02 content of from 50 to 95% by
weight (id.). According to Appellant, the reflective adhesive film reflects light
which has passed through the photosensitive layers without activating them back
into the photosensitive layers to increase the overall efficiency of the cell
(Appeal Br. 4--5). It is said that titanium dioxide pigment with the claimed level
of Ti02 does not tum blue when exposed to UV radiation and, consequently,
does not significantly reduce the reflectivity of the film (Spec. 2--4). Details of
the claimed invention are set forth in independent claim 1, which is reproduced
below from the Claims Appendix (emphasis in italics added):
1. A laminated photovoltaic module, comprising:
a) a transparent front covering
b) one or more photosensitive semiconductor layers
c) at least one adhesive film and
d) a rear covering
wherein at least one adhesive film is reflective and contains
titanium dioxide pigment with a Ti02 content of 50 to 94%
by weight based on the weight of the titanium dioxide
pigment and wherein the at least one adhesive film which
is reflective is a polyvinyl acetal film containing a
softener.
2
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Application 13/155,458
DISCUSSION
Claims 1---6 and 8-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karpinski2 in view of Lorentz. 3 Appellant does not offer
separate arguments with respect to any of the claims.4 Accordingly, we
focus our discussion on the rejection of claim 1 over Karpinski in view of
Lorentz.
The Examiner finds that Karpinski teaches each element of claim 1,
including the use of titanium dioxide in the adhesive film, except that
Karpinksi does not disclose that the titanium dioxide pigment has a Ti02
content from 50 to 94 wt% (Final Act. 3). Appellant does not dispute these
findings, and states that the difference between Karpinski and claim 1 is the
use of a titanium dioxide pigment with a Ti02 content of 50-94 wt% which,
according to Appellant, allows the reflectance of the adhesive film to be
maintained "to a much greater extent" than a film in which the Ti02 makes
up more than 94 wt% of the pigment (Appeal Br. 4, 12).
The Examiner finds that Lorenz discloses the use of titanium dioxide
having a Ti02 content in the claimed range of 50 to 94 wt% in "similar
adhesives" (Final Act. 3). The Examiner finds that Lorenz teaches that the
use of Ti02 in Lorenz's adhesives improves their long term stability to UV
2 Karpinski et al., WO 2009/071703 A2, published June 11, 2009. (Both the
Examiner and Appellant, and we, refer to the U.S. counterpart of Karpinski
(because the WO publication is in German): U.S. Patent Pub. 2010/0275980
Al, published November 4, 2010)
3 Lorenz et al., U.S. Patent Pub. 2004/0014863 Al, published January 22, 2004.
4 Appellant states that claims 11-13 and 22 are argued separately (Appeal
Br. 5), but do not actually offer separate arguments for any of those claims
(see, Appeal Br. generally).
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Application 13/155,458
rays (Final Act. 3--4, citing Lorenz i-fi-f l, 2, 5, 6, 11, 31, 32, 34, 38, and 70),
The Examiner determines that it would have been obvious to use the
titanium dioxide pigment disclosed by Lorenz (having the claimed amount
of Ti02 content) in the Karpinski adhesive so that the resultant adhesive
would be more resistant to UV rays (Final Act. 4 ).
Appellant makes five arguments seeking reversal of the rejection: (1)
Lorenz is non-analogous art and not properly combined with Karpinski;
(2) the Examiner has not established sufficient motivation to combine the
references, (3) the references do not teach the advantage stated to be
achieved by the claimed invention, and ( 4) the combination is based on
hindsight reconstruction of the invention, and ( 5) the claimed invention
produces unexpected results.
After considering the arguments and evidence set forth in the Appeal
Brief and the Reply Brief, and the Examiner's positions as set forth in the
Final Action and the Answer, we conclude that Appellant has not shown
reversible error in the rejections. Accordingly, we affirm the rejection
essentially for the reasons articulated by the Examiner. We add the
following for emphasis.
We agree with the Examiner that Lorenz is analogous art and properly
combinable with Karpinski. As stated by the Federal Circuit:
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary
skill in the art. Id. ("[I]t is necessary to consider 'the reality of
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Application 13/155,458
the circumstances,' -in other words, common sense-in deciding
in which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor."
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). "A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In this instance, the Examiner finds that Lorenz is directed to solving
the problem of UV degradation of adhesive used in articles such as
photovoltaic panels. Appellant has stated (Appeal Br. 8) that all polymers,
including Appellant's preferred adhesive, "are not totally immune from UV
damage (no known polymers are totally immune)." Therefore,
notwithstanding Appellant's contention that the claimed polyvinyl acetal
adhesives "do not have any significant UV stability problems" (Appeal Br.
8), we agree with the Examiner that Lorenz is analogous art because it
relates to a matter which "logically would have commended itself' to the
inventor's attention. Clay, 966 F.2d at 659. Moreover, as found by the
Examiner, Karpinski itself discloses the use of Ti02 in the adhesive film
(Karpinski, i-fi-124, 25). Thus, as determined by the Examiner (Ans. 4--5), "a
person of ordinary skill in the art considering the Karpinski reference would
be motivated to search for similar references which disclose these
pigments ... those seeking to improve the Karpinski disclosure would search
for pigments that fall within" the description of Ti02 pigments in Karpinski,
like those in Lorenz which meet the limitations of the pigment in claim 1.
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Accordingly, we agree with the Examiner that Lorenz is analogous art
for purposes of the obviousness rejection.
Appellant also argues that the Examiner has not established a
motivation to combine the references (Appeal Br. 11-12). However, as
noted above, Karpinski explicitly discloses the use of titanium dioxide
pigments in the adhesive film. A person of skill in the art would be
motivated to look for titanium dioxide pigment in Lorenz to improve the UV
stability of the adhesive film in Karpinski (even if only marginally). There
must be articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). In this instance, the Examiner has provided such reasoning (Ans. 7-
8). Appellant has not persuaded us of reversible error in this regard.
Appellant contends that the rejection is based on hindsight
reconstruction and that neither reference teaches or suggests the advantages
allegedly obtained by using the lower purity titanium dioxide pigments
recited in claim 1 (Appeal Br. 12-20). However, as explained by the
Examiner (Ans. 8-12), recognition of the specific problem identified by
Appellant is not necessary to make the combination needed to arrive at the
claimed invention. 5
5 The Examiner determines that the language of claim 1 does not limit the
relative position of the adhesive film to a location between the
photosensitive semiconductor layers and the rear covering, while Appellant
argues that the only reasonable interpretation of the claims is that the
adhesive film must be located behind the photosensitive layers. The
resolution of this disagreement is not necessary to the disposition of this
appeal. However, while we agree with Appellant that their proposed
interpretation of the claim language appears to be the intended structure of
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Finally, Appellant argues that the use of the (relatively) low purity
titanium dioxide pigments of claim 1 results in unexpected and surprising
results (Appeal Br. 20-22). The burden of showing unexpected results rests
on the person who asserts them by establishing that the difference between
the claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing
of unexpected results must be commensurate in scope with the claims. See
In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
In this instance, we agree with the Examiner that the showing relied
on by Appellant is not commensurate in scope with the claims. In particular,
the showing does not encompass adhesive films made of anything other than
the preferred PVB (polyvinyl butyral), even though claim 1 recites the use of
polyvinyl acetal films generally and is not limited to the use of PVB.
Moreover, the showing does not demonstrate any results with amounts of
pigment which are different from 12.5% by weight of the film, though the
claims do not limit the concentration of pigment in the film. Nor does the
showing demonstrate any unexpected results for pigments in which the Ti02
content is near the bottom of the claimed range of 50-94% by weight.
Appellant argues (Appeal Br. 22) that claims 18-22 are sufficiently
narrow that the showing is commensurate with their scope. However, none
of the claims is limited with respect to the specific polyvinyl acetal. In
addition, the examples relied on for the showing only show a pigment
the claimed module, the claim language is not so limited. Should
prosecution of the application continue, Appellant may wish to consider
adding language to the claims to clarify the structure of the claimed module.
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concentration of 12.5%, which is not sufficient to support the patentability of
these claims. Thus, the showing is still deficient.
CONCLUSION
We affirm the appealed rejections.
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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