Ex Parte Reilly et al

Patent Trials and Appeals Board

Apr 22, 2019

13932721 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/932,721 07/01/2013
26875 7590 04/24/2019
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Richard T. Reilly
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.
ROUGH-15US 8823
EXAMINER
GONZALEZ RAMOS, MA YLA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RICHARDT. REILLY and WILLIAM L. VIETAS
Appeal2018-007239
Application 13/932, 721
Technology Center 1700
Before JEFFREY B. ROBERTSON, BRIAND. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-9, 12, and 13. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 This Decision includes citations to the following documents:
Specification filed July 1, 2013 ("Spec."); Final Office Action dated
December 1, 2016 ("Final Act."); Appeal Brief filed September 1, 2017
("Appeal Br."); Examiner's Answer dated May 10, 2018 ("Ans."); and
Reply Brief filed July 6, 2018 ("Reply Br.").
2 Appellant is the Applicant, RBI Solar, Inc., which is identified as the real
party in interest. (Appeal Br. 1.)
Appeal2018-007239
Application 13/932, 721
THE INVENTION
Appellant states that the invention relates to a solar mounting system
and more particularly, to grounding of solar panels that are mounted using
the solar mounting system. (Spec. ,r 1.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief ( with emphases added to highlight disputed
claim terms):
1. A solar mounting system, comprising:
at least one solar panel including at least one photovoltaic
cell and a panel frame manufactured from a conductive
material and supporting the at least one photovoltaic cell;
and
a support structure including a plurality of support
members configured to support the at least one solar
panel above a base surface and at least one elongated
support rail supported by at least one of the plurality of
support members and including a grounding structure
defining a raised edge formed from material of the at
least one elongated support rail, wherein the at least one
elongated support rail includes a first supporting surface
extending along a plane, with the at least one elongated
support rail defining a thickness at the first supporting
surface, and the raised edge projects outwardly from the
first supporting surface of the at least one elongated
support rail such that the raised edge extends in a
direction perpendicular to the plane an additional height
above the thickness of the at least one elongated support
rail and towards the at least one solar panel,
wherein when the at least one solar panel is secured with
the at least one elongated support rail with the panel
frame abutting the first supporting surface, the raised
edge of the grounding structure on the at least one
elongated support rail embeds into the panel frame as a
result of projecting the additional height above the
2
Appeal2018-007239
Application 13/932, 721
thickness of the at least one elongated support rail,
thereby to provide direct electrical contact with the
conductive material of the panel frame to ground the at
least one solar panel.
(Appeal Br. 12, Claims Appendix.)
REJECTIONS
The Examiner rejected claims 1, 2, 4--6, 8, 9, 12, and 13 under 35
U.S.C. § 103 as obvious over Poivet (US 2014/0041321 Al, published on
February 13, 2014), O'Brien et al. (US 2012/0275066 Al, published on
November 1, 2012, "O'Brien"), and DeLiddo et al. (US 2012/0266400 Al,
published on October 29, 2009, "DeLiddo").
The Examiner rejected claim 7 under 35 U.S.C. § 103 as obvious over
Poivet, O'Brien, DeLiddo, and Berry et al. (US 2013/0146554 Al, published
on June 13, 2013, "Berry").
We limit our discussion largely to claim 1, which is sufficient to
dispose of this appeal.
ISSUE
The Examiner found, inter alia, that Poi vet in view of DeLiddo
disclose a solar mounting system as recited in claim 1 with the exception of
a grounding structure defining a raised edge formed from a material of at
least one elongated support rail. (Ans. 5-8.) The Examiner found that
O'Brien discloses a grounding system for photovoltaic arrays, where the
grounding structure in the form of grounding clip 14 defines a raised edge
(serrated portion 50). (Ans. 8-9; O'Brien, Figs. 1, 5-9.) The Examiner
determined that it would have been obvious to one of ordinary skill in the art
3
Appeal2018-007239
Application 13/932, 721
to have modified the mounting system of Poi vet to include a raised edge as
disclosed in O'Brien in order to provide a suitable path for electrical current
to ground the solar panels. (Ans. 9.)
Appellant argues that neither Poi vet nor O'Brien provides a
suggestion to perform the grounding function without requiring a separate
insert or component, such as a star washer, a clip, or a clamp. (Appeal Br.
1-2.) Appellant argues that there is no indication in the art of record that
would suggest incorporation of raised edges as grounding structures in the
elongated support rails themselves. (Id.)
Accordingly, the dispositive issue on appeal is:
Has Appellant identified reversible error in the Examiner's position
that it would have been obvious to incorporate the raised edge in the form of
the serrated portion of the grounding clip disclosed in O'Brien into the
elongated support rail of Poi vet?
OPINION
Rejection 1
We are persuaded by Appellant's arguments that sufficient reasoning
is lacking for incorporating the serrated portion 50 of the clip 14 disclosed in
O'Brien into the elongated support rail of Poivet. In particular, the
Examiner's position is the longitudinal supporting component (LSC) of
Poivet can have the function of electrical conductor to provide electrical
grounding. (Ans. 20, citing Poivet ,r,r 156, 589.) The Examiner
acknowledged that Poivet discloses a clamp to achieve electrical grounding,
but found that Poivet is not limited to providing grounding through a clamp
in view of the teaching that the LSC can provide grounding. (Id.) The
4
Appeal2018-007239
Application 13/932, 721
Examiner further stated that because Poivet is silent as to how the
conductive LSC achieves grounding, it would have been obvious to have
included the raised edge of O'Brien in the LSC to create an electrical path to
provide grounding. (Id. at 20-21.)
However, Poivet discloses only that the "LSC can have the function of
electrical conductor (for example to form the electrical grounding)." (Poivet
,r 156.) Poivet discloses that the "LSC supports panels, for example attached
by a clamp ... provide electrical grounding through the LSC." (Poivet
,r 589.) In view of these disclosures, we agree with Appellant that Poi vet's
disclosure with respect to the LSC indicates that the LSC is part of the
grounding path, which would still require the presence of a separate piece in
the form of a clamp. (Reply Br. 2-3.) We do not subscribe to the
Examiner's position that Poivet as a whole discloses different embodiments
for providing grounding capabilities through the LSC alone. Likewise,
0 'Brien discloses a grounding clip as a replacement for the use of the
conventional star washer, screw, and nut combinations, which is again, in
the form of a separate piece. (O'Brien, ,r,r 5, 7, 26, 30, 35; Figs. 1, 5-9.)
Therefore, in view of Poivet's disclosure of a clamp, and O'Brien's
disclosure of a grounding clip, we are of the view that the Examiner has not
provided sufficient reasoning to incorporate only the serrated portion from
the grounding clip of O'Brien into the LSC of Poivet. Accordingly, we
reverse the Examiner's decision to reject claim 1, and claims 2, 4---6, 8, and 9
dependent therefrom.
Independent claim 12 also recites "a grounding structure defining a
raised edge formed from material of the first supporting surface." Thus, we
reverse the Examiner's rejection of claim 12, as well as the Examiner's
5
Appeal2018-007239
Application 13/932, 721
rejection of claim 13, dependent therefrom, for the same reasons as
discussed above for claim 1.
Accordingly, we reverse the Examiner's rejection of claims 1, 2, 4---6,
8, 9, 12, and 13.
Rejection 2
Claim 7, the subject of Rejection 2, depends indirectly from claim 1.
The Examiner's additional citation to Berry does not remedy the deficiencies
identified above with respect to claim 1. Accordingly, we reverse the
Examiner's decision to reject claim 7 for the same reasons as discussed
above for claim 1.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4--9, 12, and
13.
REVERSED
6