Ex Parte Meitl et al

Patent Trials and Appeals Board

Jun 18, 2019

14211262 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/211,262 03/14/2014
24280 7590 06/20/2019
CHOATE, HALL & STEWARTLLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
FIRST NAMED INVENTOR
Matthew Meitl
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.
2011486-0607 1015
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
patentdocket@choate.com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MEITL, JOSEPH CARR, and KEVIN SCHNEIDER
Appeal2018-006669
Application 14/211,262
Technology Center 1700
Before BEYERL YA. FRANKLIN, MICHAEL G. McMANUS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 2, 5-8, 10-17, and 22-25 of
Application 14/211,262 under 35 U.S.C. § 103(a). Final Act. (Nov. 4, 2016)
8-25. Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The Appellant is the Applicant, X-Celeprint Limited, Cork, Ireland, which
is also identified as the real party in interest. Appeal Br. 2.
Appeal2018-006669
Application 14/211,262
BACKGROUND
The present application generally relates to power generation using
solar photovoltaic (PV) cells. Spec. ,r 2. More specifically, the application
relates to modules that include both concentrator photovoltaic (CPV) cells as
well as nonconcentrator photovoltaic cells. Id. ,r 6.
A concentrator photovoltaic cell uses lenses or mirrors to focus a
relatively large area of sunlight onto a smaller solar cell. Id. ,r 4. By
optically concentrating the sunlight into a smaller area, "fewer and smaller
solar cells with greater conversion performance can be used to create more
efficient photovoltaic systems at lower cost." Id. The nonconcentrator
photovoltaic cells of the module are configured "to capture diffuse light and
convert at least a portion of the non-direct solar EM radiation that passes off-
axis through the concentrating optics into electricity." Id. ,r 6.
Claim 2 is illustrative of the subject matter on appeal and is
reproduced below:
2. A concentrator-type photovoltaic module, comprising:
a backplane substrate;
a plurality of concentrator photovoltaic (CPV) receivers
on a surface of the backplane substrate;
concentrating optics positioned over the surface of the
backplane substrate and configured to focus on-axis incident
light onto the CPV receivers; and
a plurality of non-concentrator photovoltaic (PV) cells on
the surface of the backplane substrate between ones of the CPV
receivers, wherein the PV cells are positioned to receive light
that passes off-axis through the concentrating optics, and
wherein the backplane substrate comprises electrical
interconnections that combine electrical outputs of the CPV
receivers and the PV cells.
2
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Application 14/211,262
Appellant's Corrected Brief on Appeal (Jan 4, 2018) ("Corrected
Appeal Br.") 3 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 2, 14, and 22 are rejected under 35 U.S.C. § I03(a) (pre-
AIA)2 as obvious over Meitl et al. 3 in view of Kim et al. 4 Final
Act. 8-12.
2. Claims 5, 8, 12, and 13 are rejected under 35 U.S.C. § I03(a) (pre-
AIA) as obvious over Meitl in view of Kim and further in view of
Dimroth et al. 5 Id. at 12-15.
3. Claim 6 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as obvious
over Meitl in view of Kim and Dimroth and further in view of
Boydell. 6 Id. at 15-17.
2 The present application claims priority to Provisional Application Number
61/782,622, filed March 14, 2013.
3 WO 2011/156344 A2, published Dec. 15, 2011 ("Meitl"). While
Appellants and the Examiner cite to US 2013/0153934 Al, published June
20, 2013, as a corresponding English version to Meitl, we refer directly to
the WO 2011/156344 A2 document throughout our opinion because it is in
English.
4 US 2011/0030762 Al, published Feb. 10, 2011 ("Kim").
5 US 2009/0126794 Al, published May 21, 2009 ("Dimroth").
6 US 2011/0139225 Al, published June 16, 2011 ("Boydell").
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4. Claim 7 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious
over Meitl in view of Kim and Dimroth and further in view of
Lechner et al. 7 Id. at 17-18.
5. Claim 10 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Meitl in view of Kim and Dimroth and further in
view of Cohen et al. 8 Id. at 18-19.
6. Claim 11 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Meitl in view of Kim and Dimroth and further in
view of Wanlass et al. 9 Id. at 20.
7. Claim 15 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Meitl in view of Kim and further in view of
Sankrithi. 10 Id. at 20-21.
8. Claim 16 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Meitl in view of Kim and further in view of
Moslehi. 11 Id. at 22.
9. Claim 17 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Meitl in view of Kim and further in view of
Anderson et al. 12 Id. at 23.
7 US 2008/0142070 Al, published June 19, 2008 ("Lechner").
8 US 2001/0029974 Al, published Oct. 18, 2001 ("Cohen").
9 US 2007/0137698 Al, published June 21, 2007 ("Wanlass").
10 US 2011/0277815 Al, published Nov. 17, 2011 ("Sankrithi").
11 US 2008/0210294 Al, published Sept. 4, 2008 ("Moslehi").
12 US 4,016,586, issued April 5, 1977 ("Anderson").
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Application 14/211,262
10. Claims 23-25 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Meitl in view of Kim and further in view of Cohen et
al. Id. at 23-25.
DISCUSSION
The Examiner rejected all claims as being obvious over either Meitl in
view of Kim or Meitl in view of Kim in view of various tertiary references.
Final Act. 8-25. Appellant does not argue each claim individually. Appeal
Br. 14. Rather, Appellant argues that one of ordinary skill in the art would
not have had sufficient reason to combine the teachings of Meitl and Kim
and that, even had one done so, Meitl and Kim do not teach all elements of
claim 2 (from which all other claims depend). Id. at 7-8. Accordingly, we
select claim 2 as representative and determine that the rejections of the
remaining claims will stand or fall with claim 2. See 37 C.F.R. §
41.37 ( C )(iv).
Appellant argues that the rejection of claim 2 is in error on several
bases. First, Appellant argues that the working principles of Meitl and Kim
are fundamentally different such that the references cannot be combined.
Appeal Br. 8-11. That is, Appellant argues that Meitl and Kim address
different problems. Appeal Br. 8-9 (citing to Meitl 17: 1-16 to argue that
Meitl is directed to "display elements that must be capable of both emitting
and not emitting light or both absorbing and not absorbing ( e.g., reflecting
and not reflecting)."), 10 (citing to Kim ,r 10 and Figure 1 to argue that "the
purpose of Kim is to enhance the concentration efficiency in the process of
reflecting and absorbing sunlight continuously through a (single)
concentrator").
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Meitl is directed to a module that includes both CPV elements and
display elements arranged between the CPV elements. Id. at 8; Meitl, 2:26-
31. In an embodiment, the display elements of Meitl "can be used to
improve the visual appearance of the apparatus, to camouflage the apparatus,
and/or to communicate information." Meitl, 27:6-8. Figure 1 of Meitl is
reproduced below.
Figure 1 of Meitl depicts a photovoltaic and display apparatus 5 including "a
backplane substrate 10, a plurality of photovoltaic elements 20 distributed
over the backplane substrate 10, a plurality of display elements 30
distributed over the backplane substrate 10 between the photovoltaic
elements 20, and an optical element 40" designed to direct light onto the
photovoltaic elements 20. Id. at 12:3-10.
Kim is directed to a multilevel solar cell array that includes a
concentration lens 10 which focuses the sunlight into concentrated sunlight
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S3 which is transmitted to solar cell 124. Kim ,r,r 23-27. Figure 1 of Kim is
reproduced below.
Sl
Kim teaches that Figure 1 illustrates "the concept of an energy concentration
device of united reflection with multilevel solar cell array according to the
present invention." Id. ,r 19. Kim further teaches that sunlight S2 (not
concentrated) is absorbed by solar cells 120. Id. ,r 29.
In the Final Office Action, the Examiner determines that one of
ordinary skill in the art would have had reason "to utilize solar cells as the
active display elements in Meitl' s module, as taught by Kim, in order to
absorb non-concentrated radiation incident thereon and convert such
radiation to useable electrical energy." Final Act. 9 (citing Kim ,r,r 27-30).
Appellant argues that such determination is in error because the Examiner's
hypothetical combination would render Meitl unsatisfactory for its intended
purpose. Appeal Br. 9. Specifically, Appellant argues that the hypothetical
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Application 14/211,262
device proposed by the Examiner would lack the display functionality of
Meitl. Id.; Reply Br. 4---6. 13
The Examiner does not find such argument persuasive. Final Act. 3;
Answer 19-20. The Examiner determines that some absorbance and
reflection of light is inherent to the solar cells of Kim. Answer 20 ("the
solar cells disclosed by Kim are necessarily configured to selectively absorb
and reflect (i.e. not absorb) some amount of light"). Accordingly, the
Examiner determines, the device of the proposed combination could perform
the function of Meitl. Id. Appellant does not point to evidence in the record
that adequately dispels the Examiner's position.
Additionally, a claim will be rejected where "the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art." 35 U.S.C. § 103.
The ultimate determination of obviousness under § 103 is a question of law
based on underlying factual findings. In re Baxter Int'!, Inc., 678 F.3d 1357,
1361 (Fed. Cir. 2012). Where "a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416
(2007).
A "determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements." In
re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Instead, the pertinent
13 Appellant's Reply Brief is unpaginated. References are to sequential page
numbers as determined by the Panel.
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Application 14/211,262
question is "what the combined teachings of the references would have
suggested to those having ordinary skill in the art." Id. at 1333.
With respect to modifications that would render a prior art process
inoperable for intended purpose, in a 2016 decision, the Federal Circuit held
as follows:
On this record, the Board properly found that one of ordinary
skill would have been motivated to pursue the desirable
properties taught by [ one prior art reference], even at the
expense of foregoing the benefit taught by [ a second prior art
reference].
In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (affirming rejection
for obviousness over Applicant's argument that proposed modification of
prior art method would have rendered prior art process inoperable for
intended purpose). Similarly, the Federal Circuit has held that one of skill in
the art "cannot be assumed to ignore [ a reference] merely because it is
primarily directed to a specific application that is different from the
application claimed in the patent at issue." Raytheon Co. v. Sony Corp., 727
F. App'x 662, 667 (Fed. Cir. 2018). The Supreme Court has held that one of
ordinary skill in the art would not ignore a reference designed to solve a
different problem. KSR, 550 U.S. at 420-21 ("The idea that a designer
hoping to make an adjustable electronic pedal would ignore Asano because
Asano was designed to solve the constant ratio problem makes little sense.").
Here, the substitution of the nonconcentrated photovoltaic cell of Kim
for the display element of Meitl is "the mere substitution of one element for
another known in the field." Id. at 416. Appellant has not shown that the
claimed structure produces any unpredictable result. Considering the
teachings of the cited art on the whole, on the present record, Appellant has
not shown that a person of ordinary skill in the art would have been expected
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Application 14/211,262
to ignore the teachings of Meitl (regarding placement of an electronic
component between CPV cells) merely because they are directed, in part, to
a different problem.
Accordingly, Appellant has not shown error on this basis.
For its second argument, Appellant argues that Meitl and Kim cannot
be combined because Meitl can only function as intended with a single level
substrate while Kim requires multilevel substrates. Appeal Br. 9-11.
Appellant argues that Kim requires multiple levels of PV cells in order "to
enhance the concentration efficiency in the process of reflecting and
absorbing sunlight." Id. at 10. Appellant further argues that the multiple
levels of PV cells in Kim "would obscure light emitted/reflected from sub-
surface level solar cells." Accordingly, Appellant reasons, the proposed
combination would render Meitl unsatisfactory for its intended purpose. Id.
at 11.
As above, the substitution of the nonconcentrated photovoltaic cell of
Kim for the display element of Meitl is the mere substitution of one familiar
element for another. Appellant does not argue that the device of the
proposed combination would not function as proposed by the Examiner.
Rather, Appellant argues that it would not function in the same manner as
the prior art device of Meitl. However, as discussed supra, the Examiner
determined that some absorbance and reflection of light is inherent to the
solar cells of Kim. Answer 20 ("the solar cells disclosed by Kim are
necessarily configured to selectively absorb and reflect (i.e. not absorb)
some amount of light"). Accordingly, the Examiner determined, the device
of the proposed combination could perform the function of Meitl.
Furthermore, Appellant has not made a showing of unexpected results.
Similar to our conclusion above, on the present record, Appellant has not
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shown that a person of ordinary skill in the art would have been expected to
ignore the teachings of Meitl merely because they are directed, in part, to a
different problem.
Accordingly, Appellant has not shown error in this regard.
For its third argument, Appellant contends that, even if the references
were properly combinable, the cited references do not teach "PV cells [that]
are positioned to receive light that passes off-axis through the concentrating
optics" as required by claim 2. Appeal Br. 11-13. Appellant asserts that
"Meitl is directed to concentrating on-axis light onto its solar cells 20 ( on-
axis light). Kim provides similar on-axis light in [the] form of concentrated
light SI (see Fig. 1)." Id. at 11; see also Reply Br. 9.
The Examiner finds such argument unpersuasive and reiterates that
the device of Meitl, modified so that the PV cells of Kim are substituted for
the display elements of Meitl, would teach such limitations. Answer 22-23.
The Examiner finds that Meitl teaches "light rays entering the concentrating
element which pass through off-axis and fall incident onto the elements 30."
Id. at 22. In support, the Examiner looks to the path of light rays ( designated
by the letter "B") as shown in Figure 1 of Meitl. 14 Figure 1 shows the path
of light emitted or reflected from the display elements passing through the
concentrating element at off-axis. Meitl, Fig. 1, 12: 10-11 ("optical element
40 is designed to direct light B reflected or emitted from the display
elements 30 in a direction away from the normal.").
In its Reply Brief, Appellant responds as follows:
14 The Panel notes that Meitl Figure 1 is reproduced as Figure 6 in the
present application.
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Application 14/211,262
solar cells as taught by Kim require being disposed to receive
either (i) light passed on-axis through concentrating optics, (ii)
ambient light which does not pass through optics, or (iii) light
reflected off of other solar cells (which is not off-axis light).
Therefore, in so much as the Examiner is alleging non-central
solar cells 124 of Kim are to be disposed in the location of
display elements of Meitl, those solar cells would necessarily
need to be disposed to receive reflected light as taught by Kim.
Reply Br. 9 ( emphasis omitted).
"[T]he 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 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner has
made an explicit finding, supported by record evidence, that in the device of
the proposed combination some light would enter the concentrating element
and pass through off-axis such that it impinges upon the PV cells (rather
than the CPV cells). Appellant has not directly disputed this finding.
Rather, Appellant has sought to take issue with the references individually.
Accordingly, Appellant has not shown error on this basis.
For its fourth argument, Appellant asserts that the cited references do
not render obvious a combined electrical output circuit. Appeal Br. 13-14.
Claim 2 requires that "the backplane substrate comprises electrical
interconnections that combine electrical outputs of the CPV receivers and
the PV cells." Corrected Appeal Br. 3 (Claims App.). Appellant argues that
neither Meitl nor Kim, nor the two in combination, teaches such limitation.
Appeal Br. 13. Appellant contends that Meitl may describe electrical
interconnections such that the photovoltaic elements can provide respective
energy inputs to the display elements. Id. Appellant argues that controlling
a display element is not the same as combining electrical outputs. Id. at 13-
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14. Further, Appellant argues, there is no electrical output from a display
element. Appellant argues that Kim does not cure the foregoing defect
because it does not teach an electrical output from a display element. Id. at
14.
The Examiner does not find the foregoing persuasive. The Examiner
finds that Meitl Figure 6 teaches that "electrical connections (34) are
between the concentrated solar cells and the absorbing elements and
electrical connections (36) between concentrated solar cells and an external
connection." Answer 24. The Examiner concludes that "[t]herefore, in
combination, the absorbing elements being solar cells would necessarily
produce electrical energy in response to incident radiation such that the
connection between the absorbing elements, the concentrated solar cells and
an external connection (Meitl 34, 36 Fig. 6 and [0085]) would necessarily
and explicitly teach the claimed" limitation. 15 Id.
The Examiner additionally determines that "a skilled artisan would
readily appreciate the combination would result in an improved device as the
absorbing elements disclosed by Meitl would explicitly produce electrical
energy when combine with Kim such that the solar cell module would
produce more electrical output than Meitl's device alone would produce."
Id. at 25.
We are not persuaded of error by the Appellant's arguments. Such
argument would require us to accept that one of ordinary skill in the art
would assemble a module with multiple photovoltaic cells yet not arrange
15 In its Reply Brief, Appellant takes issue with the Examiner's finding that
the claimed connection is "necessarily and explicitly" taught. Reply Br. 10
( emphasis omitted). Our decision does not rest on this finding.
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the device so as to collect the electrical output of some cells. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 421. Further, as noted above, a "determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements." In re Mouttet, 686 F.3d at 1332.
In view of the foregoing, we determine that Appellant has not shown
reversible error in the rejection of claim 2. As a consequence, Appellant has
not shown reversible error in the rejection of any dependent claim. See
Appeal Br. 14.
CONCLUSION
The rejection of claim 2 as obvious over Meitl in view of Kim is
affirmed. The rejections of claims 5-8, 10-17, and 22-25 as obvious over
Meitl in view of Kim and certain additional references 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(a).
AFFIRMED
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