Ex Parte Lee

Patent Trial and Appeal Board

Nov 30, 2017

13952523 (P.T.A.B. Nov. 30, 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.
13/952,523 07/26/2013 Jason LEE 120935-001UT1 9416
27189 7590 12/04/2017
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1757
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
docketing @ procopio .com
PTONotifications @procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON LEE
Appeal 2016-003180
Application 13/952,523
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1,5,8, and 9 of Application
13/952,523 under 35 U.S.C. § 103(a) as obvious. Final Act. (April 12,
2016) 2—5. Appellant1 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The present application generally relates to a solar panel having an
array of active materials (such as a photovoltaic material) fixed to an
1 Jason Lee is identified as the real party in interest. Appeal Br. 2.
Appeal 2016-003180
Application 13/952,523
underside of a top cover of the solar panel and an array of tracking solar
collectors (reflectors) that concentrate solar energy onto the array of active
materials, the array of tracking solar collectors moving in relation to the
array of active materials. Spec. 1—2.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A solar panel, comprising:
a panel frame comprising a top glass cover that is mounted
within a rigid frame;
an array of active materials comprising strips of active
materials arranged in parallel and mounted directly to the top
glass cover in a fixed orientation; and
an array of tracking solar collectors that concentrate solar
energy onto the array of active materials, the array of tracking
solar collectors being mounted within the panel frame and
configured to move in relation to the array of active materials;
wherein the array of tracking solar collectors is an array of
parabolic troughs aligned with the strips of active materials and
is configured to rotate with respect to the active materials to
concentrate solar energy on the active materials;
wherein the array of tracking solar collectors is configured
to move independently of the panel frame.
Appeal Br. 11 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 8 are rejected under 35 U.S.C. § 103(a) as
obvious over Liu (CN 201359397 Y, published Dec. 9, 2009)2 in view of
2 The Examiner cites to an English translation of Liu. Final Act. 3.
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Appeal 2016-003180
Application 13/952,523
Weibezahn (US 2013/0104962 Al, published May 2, 2013). Final Act. 2—
5.3
2. Claims 5 and 9 are rejected under 35 U.S.C. § 103(a) as
obvious over Liu in view of Weibezahn and further in view of Hunter et al.
(US 2007/0227573 Al, published Oct. 4, 2007). Id. at 5.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 8 as obvious over
Liu in view of Weibezahn. Final Act. 2—5. The Examiner found that Liu
teaches all elements of claims 1 and 8 other than the placement of the active
materials “mounted directly to the top glass cover.” Id. at 4. The Examiner
further found that Weibezahn discloses that photovoltaic active materials can
be mounted directly to the cover glass. Appellant asserts error on several
bases.
First, Appellant argues that the Examiner has failed to articulate a
rational basis for combining the teachings of Liu and Weibezahn. Appeal
Br. 4—5. In the Answer, the Examiner indicates as follows:
the prior art elements according to known methods were
combined, namely Liu was modified so that the active materials
are directly bonded to the glass as disclosed by a known method
taught by Weibezahn and this combination would yield a
predictable result which would be a solar cell active material strip
in a fixed orientation of Liu being directly bonded to the cover
glass.
Answer 7.
3 In the Final Action, the Examiner rejected claim 6 over the same
references. Final Act. 3. That rejection was withdrawn subsequent to
cancellation of claim 6. Answer 4.
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Application 13/952,523
The Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Here, the Examiner finds that the components at issue
were known in the art and were combined according to known methods so as
to yield a predictable result. Accordingly, the Examiner has articulated a
rational basis for combining the teachings of Liu and Weibezahn.
Second, Appellant argues that Liu fails to provide a teaching to
modify the position of the active materials so as to be attached to the top
glass cover. Appeal Br. 5—8.
Appellant points out that Liu teaches to place the absorbing device
(such as a photovoltaic absorbing device) “fixed inside the frame of the
mirror at the focal line position of the mirror.” Id. at 6. Appellant argues
that such positioning allows for absorbance and ease of maintenance. Id.
Appellant further argues that “affixing such linear absorption means directly
to the top glass cover instead of the frame of the mirror will compromise the
operability of the assembly by moving the linear absorption means away
from the focal line of the mirror.” Id. Appellant argues that such
modification would change Liu’s principle of operation and compromise its
operability. Id. at 7.
In response, the Examiner finds that one of ordinary skill in the art
would understand that the focal line of the mirror can be adjusted based on
the shape and placement of the mirror. Answer 7 (citing Weibezahn Ligs. 1
and 4). Similarly, the Examiner finds that Weibezahn teaches that a
parabolic mirror can have a focal point which lies on a photovoltaic cell
directly attached to a glass cover. Answer 7.
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Application 13/952,523
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPACInc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted). “[I]t is not necessary that inventions of the references be
physically combinable to render obvious the invention under review.” 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 [secondary
reference] cannot be incorporated in [primary reference] 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.”).
Appellant essentially argues that the combination proposed by the
Examiner would not function as the absorbing device of Liu would be
improperly positioned relative to the reflectors. This is unpersuasive. A
person of ordinary skill in the art would know that a reflector and absorber
should be arranged so that the light is reflected so as to be focused on the
absorber. Answer 7 (“one of ordinary skill in the art. . . would have done
the appropriate adjustment.”). Accordingly, Appellant has failed to show
that Liu’s principle of operation would be changed or that Liu would be
rendered inoperable by combination with the teachings of Weibezahn as
proposed by the Examiner.
In view of the foregoing, Appellant has failed to show reversible error
in the rejections of claims 1 and 8.
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Application 13/952,523
Rejection 2. The Examiner additionally rejected claims 5 and 9 as
obvious over Liu in view of Weibezahn and further in view of Hunter. Final
Act. 5.
Claim 5
Claim 5 depends from claim 1 and further requires that “the array of
parabolic troughs is driven by a motor coupled to rotate the array of
parabolic troughs.” Appeal Br. 11 (Claims App.). Claim 1 requires that “the
array of tracking solar collectors is an array of parabolic troughs . . .
configured to rotate with respect to the active materials . . . configured to
move independently of the panel frame.” Id.
Appellant argues that claim 5, read in light of claim 1, requires that
the solar collectors must be driven by a motor such that the motion of the
collectors is independent of the frame. Appeal Br. 8. In rejecting claim 5,
the Examiner determined that Liu teaches that the solar collectors move
relative to the absorbing device but that Liu does not disclose any
mechanism to generate such movement. Final Act. 5. The Examiner further
determined that Hunter teaches a stepper motor and actuator arm used to
move an array of solar collectors. Id.
Appellant argues that this teaching is inadequate as the motor and
actuator arm taught by Hunter “does not drive the array of parabolic troughs
independently of the panel frame, and is directed to moving the entire body
of the apparatus while the parabolic troughs remain in a fixed orientation.”
Appeal Br. 8.
The Examiner agrees that the mechanism of Hunter moves the entire
frame rather than an individual collector. This, however, is not the
combination proposed by the Examiner. The Examiner finds that Liu
discloses that the parabolic troughs (solar collectors) move with respect to
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Application 13/952,523
the active materials and the frame, which are stationary. Answer 8. The
Examiner proposes a combination where Liu is modified with the teachings
of Hunter such that an actuator arm and stepper motor move the parabolic
troughs (solar collectors) of Liu. That is, Hunter supplies the mechanism for
movement of the individual solar collectors as to which Liu is silent.
Appellant further argues that “the Examiner has not explained how the
motor and actuator arm configured to move the panel frame as disclosed in
Hunter can be applied to rotate the parabolic troughs of Liu independently of
the panel frame.” Reply 9. The obviousness analysis, however, “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court [or this Board] can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“The test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art.” In re McLaughlin,
443 L.2d 1392, 1395 (CCPA 1971). In this case, Appellant has not directed
us to any evidence showing that the skill required to modify Liu as proposed
by the Examiner would be beyond the level of ordinary skill in the art.
further, as above, “it is not necessary that inventions of the references
be physically combinable to render obvious the invention under review.” In
re Sneed, 710 L.2d at 1550.
In view of the foregoing, Appellant has not shown that the rejection of
claim 5 is erroneous.
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Claim 9
Appellant additionally seeks review of the rejection of claim 9.
Appeal Br. 9—10. Claim 9 depends from claim 1 and further requires that
“each solar collector in the array of solar collectors is configured to rotate
through a drive mechanism.” Appeal Br. 12 (Claims App.). Appellant
alleges error in the rejection of claim 9 on the same basis as presented with
regard to claim 5. As such arguments were not found to be persuasive, we
sustain the rejection of claim 9.
CONCLUSION
The rejection of claims 1 and 8 as obvious over Liu and Weibezahn is
affirmed. The rejection of claims 5 and 9 as obvious over Liu, Weibezahn,
and Hunter is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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