Ex Parte Shiao et al

Patent Trial and Appeal Board

Aug 9, 2017

12885757 (P.T.A.B. Aug. 9, 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.
12/885,757 09/20/2010 Ming Liang Shiao 2009-138 9308
27569 7590
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
INFO @PAUL ANDPAUL.COM
claire @paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MING LIANG SHIAO, GREGORY F. JACOBS, and
JOSEPH C. GOMBARICK
Appeal 2016-001576
Application 12/885,757
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of a final
rejection of claims 11—19, 26—39, 41, and 422. We have jurisdiction under
35 U.S.C. § 6(b).3
We AFFIRM.
1 Appellants identify the real party in interest as CertainTeed Corporation.
Appeal Brief filed February 17, 2015 (“App. Br.”), 1.
2 Claim 40 stands withdrawn from consideration. Final Office Action
entered July 31, 2014 (“Final Act.”), 2.
3 We heard oral arguments from Appellants’ representative on August 3,
2017.
Appeal 2016-001576
Application 12/885,757
STATEMENT OF THE CASE
Appellants claim a roofing product for use in a solar thermoelectric
power generating system and a solar thermoelectric power generation
system. App. Br. 2.
Independent claim 11 illustrates the subject matter on appeal and is
reproduced below:
11. A roofing product for use in a solar thermoelectric power
generating system, the roofing product comprising:
(a) at least one solar heat reflective area;
(b) at least one solar heat absorptive area;
(c) at least one thermoelectric power generating
element in thermal contact with the at least one solar heat
reflective area and the at least one solar heat absorptive area.
App. Br. 36 (Claims Appendix).
Appellants request review of the following rejections, which the
Examiner sets forth in the Final Action and maintains in the Answer entered
September 25, 2015 (“Ans.”):
I. Claims 27 and 33—36 under 35 U.S.C. § 112, first paragraph for
failing to comply with the written description requirement;
II. Claim 27 under 35 U.S.C. § 112, second paragraph as being
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention;
III. Claims 11, 12, 19, 41, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Beerwerth et al. (US 6,203,194 Bl, issued March 20,
2001) in view of Gomez (US 4,251,291, issued February 17, 1981) and
Banister (US 2004/0031219 Al, published February 19, 2004);
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IV. Claims 13—15 under 35 U.S.C. § 103(a) as unpatentable over
Beerwerth in view of Gomez, Banister, and Dinwoodie (US 6,883,290 B2,
issued April 26, 2005);
V. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Beerwerth in view of Gomez, Banister, and Shakun (US 4,640,977, issued
February 3, 1987);
VI. Claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Beerwerth in view of Gomez, Banister, and Shiao et al.
(US 2005/0072114 Al, published April 7, 2005;
VII. Claim 26 under 35 U.S.C. § 103(a) as unpatentable over
Beerwerth in view of Gomez;
VIII. Claims 26 and 27 under 35 U.S.C. § 103(a) as unpatentable
over Beerwerth in view of Gomez;
IX. Claims 28—30 under 35 U.S.C. § 103(a) as unpatentable over
Beerwerth in view of Gomez, Shiao, and Rone (US 4,201,193, issued
May 6, 1980);
X. Claim 31 under 35 U.S.C. § 103(a) as unpatentable over
Beerwerth in view of Gomez, Shiao, and Rone; and
XI. Claims 32—39 under 35 U.S.C. § 103(a) as unpatentable over
Beerwerth in view of Gomez, Banister, and Laaly et al. (US 4,860,509,
issued August 29, 1989).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claim 27 under 35 U.S.C. § 112, first paragraph for failing to comply with
the written description requirement, and rejections of claims 11—19, 26—39,
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41, and 42 under 35 U.S.C. § 103(a), for the reasons set forth in the Final
Action, the Answer, and below. We reverse the Examiner’s rejection of
claims 33—36 under 35 U.S.C. § 112, first paragraph for failing to comply
with the written description requirement, and rejection of claim 27 under
35 U.S.C. § 112, second paragraph, for the reasons set forth in the Appeal
Brief and below.
Rejection I
We summarily affirm the Examiner’s rejection of claim 27 for failing
to comply with the written description requirement because Appellants
indicate that the basis for the Examiner’s rejection “is an obvious error.”
Compare Final Act. 4—5, with App. Br. 4. Specifically, because Appellants
acknowledge in their Appeal Brief that “the reference to ‘said overlay’ in
claim 27 is an obvious error and [] the claim should correctly refer to ‘the
system’” (App. Br. 4), we sustain the Examiner’s rejection.
However, we do not agree with the Examiner’s rejection of
claims 33—36 for failing to comply with the written description requirement.
The Examiner finds that Appellants’ Specification does not describe a layer
of thermal insulation positioned under a solar heat absorptive area and over a
solar heat reflective area, as recited in claim 34. Final Act. 5. However, as
Appellants point out, their Specification discloses that the thermoelectric
power generation system of their invention can include thermal insulation
between a solar heat reflective area and a solar heat absorptive area.
Appellants further point out that Figure 3 illustrates a solar heat absorptive
area positioned over a solar heat reflective area. App. Br. 8 citing Spec. 4,11.
13—15 and Fig. 3.
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Based on these disclosures, one of ordinary skill in the art reasonably
would have understood that thermal insulation could be positioned between
the solar heat reflective area and the solar heat absorptive area of the system
illustrated in Figure 3, resulting in thermal insulation being positioned under
the solar heat absorptive area and over the solar heat reflective area, as
recited in claim 34. Therefore, on this record, the Examiner does not
establish that Appellants’ Specification fails to convey with reasonable
clarity to those skilled in the art that the inventors had possession at the time
of Appellants’ invention of a layer of thermal insulation positioned under a
solar heat absorptive area and over a solar heat reflective area, as recited in
claim 34. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (the purpose of the written description
requirement is to “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.”).
Because the Examiner also rejects claims 33, 35, and 36 for the same
reasons as claim 34, we do not sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 112, first paragraph for failing to comply with the
written description requirement.
Rejection II
The Examiner finds that “[i]t is unclear if the ‘at least one
thermoelectric power generating element’ recited in claim 26 is the same or
different from one of a plurality thermoelectric power generating elements
recited in claim 27.” Final Act. 6.
However, as Appellants correctly argue (see App. Br. 5), the
Examiner carries the burden of showing that one of ordinary skill in the art
would not understand that the at least one thermoelectric power generating
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element recited in claim 26 is the same as at least one of the plurality
thermoelectric power generating elements recited in claim 27.4 The
Examiner does not adequately show or explain why the recitation in claim
27 of a plurality of thermoelectric power generating elements renders the
scope of the claim unclear. Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927
F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is considered indefinite under
35 U.S.C. § 112, second paragraph, if it does not reasonably apprise those
skilled in the art of its scope).
Accordingly, we do not sustain the Examiner’s rejection of claim 27
under 35 U.S.C. § 112, second paragraph.
Rejections III, VII, and VIII
Appellants argue the claims included in Rejection III together
(claims 11, 12, 19, 41, and 42). App. Br. 9-16. Although Appellants
provide separate arguments for independent claim 26, the subject of
Rejection VII (App. Br. 23—24), and although Appellants also rely on these
arguments that they provide for claim 26 to address Rejection VIII, which is
directed to claims 26 and 27 (App. Br. 26), Appellants provide essentially
the same arguments for claim 26 that they provide for claims 11, 12, 19, 41,
and 42. Compare App. Br. 14—16, with App. Br. 23—24. Therefore, we
select claim 11 as representative of the group of claims 11, 12, 19, 26, 27,
41, and 42. 37 C.F.R. § 41.37(c)(l)(iv).
4 While it may be more precise for claim 27 to explicitly recite that the at
least one thermoelectric power generating element of claim 26 is a plurality
of thermoelectric power generating elements, one of ordinary skill in the art
would nevertheless understand the scope and meaning of claim 27 in its
present form, as discussed above.
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Beerwerth discloses a thermopile having hot junctions covered with a
radiation absorptive layer and cold junctions covered with a heat reflective
layer. Col. 3,11. 34—38, 55—58; Fig. 1. Beerwerth discloses that when
radiation impinges on the hot junctions, a temperature difference occurs
between the hot and cold junctions, resulting in generation of a sensor output
signal. Col. 4,11. 59-64.
The Examiner finds that Beerwerth does not disclose that the
thermopile described in the reference is a thermoelectric power generating
element, and the Examiner relies on Gomez’s disclosure of using a plurality
of connected thermopiles to generate electric power from solar energy.
Final Act. 8; Gomez col. 1,1. 58—col. 2,1. 2; col. 2,11. 56—56; col. 3,11. 26—
28; Fig. 1. The Examiner finds that one of ordinary skill in the art at the
time of Appellants’ invention would have been led to utilize a thermopile as
disclosed in Beerwerth to generate electric power from sunlight by forming a
plurality of such thermopiles into a thermoelectric power generator, as
disclosed in Gomez. Final Act. 8.
The Examiner finds that Beerwerth also does not disclose utilizing the
thermopile described in the reference in a roofing product, and the Examiner
relies on Banister’s disclosure of using tiles that contain thermo voltaic
elements in roofing applications. Final Act. 8; Banister || 2, 39, 40, 47, 48.
Banister defines “thermovoltaic” as “encompassing all known materials that
convert heat into electricity.” Banister 120. The Examiner finds that one
skilled in the art at the time of Appellants’ invention would have been led to
use the thermoelectric power generating thermopiles of Beerwerth as
modified by Gomez in a roofing product, as suggested by Banister. Final
Act. 8—9.
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Appellants argue that one of ordinary skill in that art would not have
adapted Beerwerth’s sensor to drive a load because Beerwerth’s sensor is
designed to provide highly accurate temperature readings and can be
miniaturized sufficiently to allow it to fit inside a human ear. App. Br. 15.
Appellants further argue that Beerwerth’s device requires amplification in
order for the output of the thermopile to be detected, and Appellants contend
that the device thus consumes power rather than generating it. Reply Br. 7,
11.
However, Appellants’ arguments are improperly based on Beerwerth
alone, and do not take into consideration what the combined disclosures of
the applied prior art would have suggested to one of ordinary skill in the art
at the time of the invention. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”)
Although Beerwerth’s thermopile is used to generate a sensor output
signal, and although it may be miniaturized, Gomez’s explicit disclosure of
the suitability of using a plurality of connected thermopiles to generate
electric power from solar energy reasonably would have suggested to one of
ordinary skill in the art that a thermopile as disclosed in Beerwerth could be
connected to other such thermopiles to successfully generate electric power
from solar energy. Contrary to Appellants’ arguments, we find no disclosure
in Beerwerth indicating that amplification is necessary in order for the
output of Beerwerth’s thermopile to be detected. Instead, Beerwerth
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discloses that “amplifiers for amplifying the signal output from the
thermopile may be provided,” and Beerwerth thus indicates that amplifiers
are not required. Col. 4,11. 23—24. We also do not find any disclosure in
Beerwerth indicating that Beerwerth’s thermopile consumes power rather
than generating it, as Appellants assert. Appellants’ arguments are therefore
unpersuasive of reversible error.
Appellants also argue that Gomez does not disclose or suggest a solar
heat reflective area because the heat radiator plate described in the reference
does not reflect heat. App. Br. 14—15. Appellants contend that because of
this, the proposed combination of Beerwerth and Gomez would not function,
and Appellants argue that if a solar reflective material were substituted for
Gomez’s radiator plate, the efficiency of Gomez’s device would be severely
downgraded, if not destroyed. App. Br. 14.
However, as set forth above, the Examiner’s proposed combination of
the relied-upon disclosures of Beerwerth and Gomez does not involve using
Gomez’s thermoelectric power generator itself to generate electric power
from sunlight. Final Act. 8; Ans. 10. Rather, the proposed combination
involves connecting Beerwerth’s thermopile to other such thermopiles to
generate electric power from sunlight, as suggested by Gomez’s disclosure
of using a plurality of connected thermopiles to generate electric power from
solar energy. Id. Because Appellants’ arguments do not adequately address
the rejection as actually presented by the Examiner, Appellants’ arguments
are unpersuasive of reversible error in the rejection.
Appellants further assert that it would be impossible to utilize
Gomez’s power generation system for roofing products because Gomez’s
solar generator requires latent heat transfer media, a bulky container for
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storing the latent heat storage media, and a heat exchanger. App. Br. 15—16;
Reply Br. 6—7.
However, Appellants’ arguments again do not address the rejection as
set forth by the Examiner. As discussed above, the Examiner’s proposed
combination is based on using Beerwerth’s thermopile to generate electric
power from sunlight by forming a plurality of such thermopiles into a
thermoelectric power generator as disclosed in Gomez, and using such a
thermoelectric power generator in a roofing product, as suggested by
Banister. The Examiner does not propose using Gomez’s power generation
system in roofing products.
Appellants further argue that Banister relates to roofing tiles having
photovoltaic or thermo voltaic cells, and Appellants contend that Banister
would not have suggested incorporating thermopiles into a roofing product
to generate power from temperature differences that result from areas of
differing solar reflectivity. Reply Br. 7.
However, Banister broadly defines “thermovoltaic” as “all known
materials that convert heat into electricity.” 120. Based on this definition,
the ordinarily skilled artisan would have understood Banister’s
thermovoltaic elements to encompass thermopiles, which were known in the
art at the time of Banister’s invention to convert heat into electricity, as
evidenced by Gomez. Accordingly, Banister’s disclosure of using
thermovoltaic elements—defined to include thermopiles—in roofing
applications reasonably would have suggested to one of ordinary skill in the
art that Beerwerth’s thermopile having hot junctions covered with an
absorptive layer and cold junctions covered with a heat reflective layer,
could be connected with other such thermopiles to form a thermoelectric
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power generator as disclosed by Gomez, in order to successfully generate
electric power from sunlight in roofing applications. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) ([A]n obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for [an examiner] can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”; see
also In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). Appellants’ arguments are therefore unpersuasive of
reversible error.
We accordingly sustain the Examiner’s rejection of claims 11, 12, 19,
41, and 42 under 35 U.S.C. § 103(a).
Rejection IV
Claims 13—15 depend from claim 11 and require the at least one solar
heat reflective area to differ in E* from the at least one solar heat absorptive
area by less than 10, less than 5, or less than 2, respectively. Appellants’
Specification defines E* as the strength in color space. Spec. 8,11. 12—14.
The Examiner relies on Dinwoodie’s disclosure of using appropriate
colors in photovoltaic shingle assemblies to provide an aesthetically pleasing
visual appearance to a roof. Final Act. 11—12; Ans. 14—15; Dinwoodie
col. 1,11. 44—60.
Appellants argue that Dinwoodie’s photovoltaic elements do not rely
on areas of different solar reflectivity for power generation, and Appellants
contend that Dinwoodie therefore does not address the problem of providing
a compatible appearance to areas of different solar reflectivity, as
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quantitatively defined by the E* value. App. Br. 18. Appellants further
assert that an aesthetically pleasing appearance can be achieved in an almost
infinite number of ways, including with the use of contrasting colors, and
Appellants argue that Dinwoodie does not suggest monotone shingle
assemblies. Id.
However, contrary to Appellants’ arguments, Dinwoodie’s disclosure
of using appropriate colors in photovoltaic shingle assemblies to provide an
aesthetically pleasing visual appearance to a roof reasonably would have
suggested any color scheme for roofing shingles that provides an
aesthetically pleasing appearance, including a monotone color scheme, as
recited in claims 13—15. Accordingly, regardless of the fact that
Dinwoodie’s photovoltaic elements may not rely on areas of different solar
reflectivity for power generation, Dinwoodie reasonably would have
suggested roofing shingles containing power generating elements that utilize
appropriate colors to provide a pleasing appearance, such as a monotone
color scheme.
We further note that claims 11—13 do not recite any function for the
E* value differences required by the claims; consequently, the recited E*
value differences do not patentably distinguish the claimed roofing product
from the product suggested by the combined disclosures of the applied prior
art. See In re Seid, 161 F.2d 229, 231 (CCPA 1947) (matters relating to
ornamentation only, which have no mechanical function, cannot be relied
upon to patentably distinguish the claimed invention from the prior art); see
also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (claimed feature solves no
stated problem and presents no unexpected result and “would be an obvious
matter of design choice within the skill of the art” (citations omitted)).
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Appellants’ arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 13—15 under
35 U.S.C. § 103(a).
Rejection V
Claim 16 requires the thermoelectric power generating system of
claim 11 to include a plurality of thermoelectric power generating elements
electrically connected in series to provide a predefined output voltage.
The Examiner relies on Shakun’s disclosure of connecting a sufficient
number of thermopiles in series to produce a required voltage. Final
Act. 12—13; Shakun col. 1,11. 24—26, col. 6,11. 33—39. The Examiner finds
that one of ordinary skill in the art at the time of Appellants’ invention
would have been led to connect in series a plurality of Beerwerth’s
thermopiles modified as suggested by Gomez and Banister to produce a
desired voltage, as taught by Shakun. Final Act. 12—13.
Appellants argue Shakun discloses using support pedestals for the
thermoelements described in the reference to increase thermal efficiency,
and Appellants contend that such support elements are inconsistent with
Beerwerth’s use of an insulative supporting membrane. App. Br. 19.
Appellants assert that Shakun consequently does not remedy the deficiencies
of the combination of Beerwerth, Gomez, and Banister. Id.
However, Appellants’ argument lacks persuasive merit because it
does not address the rejection as set forth by the Examiner, which is not
based on a literal combination of the apparatus disclosed in Shakun with the
thermopile disclosed in Beerwerth. Rather, as discussed above, the rejection
is based on Shakun’s suggestion of connecting in series a plurality of
Beerwerth’s thermopiles modified as suggested by Gomez and Banister to
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produce a desired voltage, as recited in claim 16. In re Keller, 642 F.2d 413,
425 (CCPA) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Appellants’ arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claim 16 under
35U.S.C. § 103(a).
Rejection VI
Claim 17 requires the solar heat reflective area of the roofing product
of claim 11 to include solar heat reflective roofing granules, and claim 18
requires the solar heat absorptive area of the roofing product of claim 11 to
include solar heat absorptive roofing granules.
The Examiner relies on Shiao’s disclosure of roofing granules that
provide increased solar heat reflectance, which can be mixed with, or
substituted for, conventional roofing granules. Final Act. 13; Shiao Tflf 10,
98. The Examiner finds that one of ordinary skill in the art at the time of
Appellants’ invention would have been led to modify the roofing product
suggested by the combined disclosures of Beerwerth, Gomez, and Banister
to include solar heat reflective roofing granules as taught by Shiao in the
solar heat reflective area of the roofing product, to increase the solar heat
reflectance of this area. Final Act. 13.
Appellants argue that Shiao teaches away from the roofing product of
claims 17 and 18 because Shiao is directed to a shingle that is entirely
covered in solar reflective roofing granules to minimize the heating of the
roof by the sun. App. Br. 22. Appellants contend that replacing portions of
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the shingle of Shiao with portions that are solar heat absorbing would defeat
the very object of the invention of Shiao and destroy it function of keeping
the roof as cool as possible. Id. Appellants further argue that coating both
the hot and cold junctions of Beerwerth’s thermopile with Shiao’s solar
reflective granules would render Beerwerth’s thermopile inoperative. Id.
However, Appellants’ arguments again do not address the rejection as
presented by the Examiner, which is not based on modification of the
shingles disclosed in Shiao to replace solar heat reflective portions with solar
heat absorbing portions. Nor is the rejection based on coating both the hot
and cold junctions of Beerwerth’s thermopile with Shiao’s solar reflective
granules. Rather, as discussed above, the Examiner correctly finds that
Shiao’s disclosure of solar heat reflective roofing granules would have led
one of ordinary skill in the art to include such granules in the solar heat
reflective area of the roofing product suggested by the combined disclosures
of Beerwerth, Gomez, and Banister to increase the solar heat reflectance of
this area.
Because Appellants’ arguments are unpersuasive of reversible error in
the rejection as actually presented by the Examiner, we sustain the
Examiner’s rejection of claims 17 and 18 under 35 U.S.C. § 103(a).
Rejection IX
Appellants argue claims 28—30 as a group on the basis of claim 28, to
which we limit our discussion. App. Br. 26—29. Claim 28 indirectly
depends from independent claim 26 and requires the solar heat absorptive
area of the claimed solar thermoelectric power generation system to be
coated with non-solar heat reflecting granules, and requires the solar heat
reflective area to be coated with solar heat reflecting granules.
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The Examiner again relies on Shiao’s disclosure of roofing granules
that provide increased solar heat reflectance, which can be mixed with, or
substituted for, conventional roofing granules. Final Act. 1819; Shiao Tflf 10,
98. The Examiner also relies on Rone’s disclosure of heat absorptive
roofing particles or granules. Final Act. 18—19; Rone col. 2,11. 11—18;
col. 3,11. 1—6; Figs. 3, 6. The Examiner finds that one of ordinary skill in the
art at the time of Appellants’ invention would have been led to modify the
roofing product suggested by the combined disclosures of Beerwerth,
Gomez, and Banister by coating the heat absorptive area with the heat
absorptive particles or granules taught by Rone to increase heat absorption in
this area, and coating the heat reflective area with the solar heat reflective
roofing granules taught by Shiao to increase heat reflection in this area.
Final Act. 18—19. The Examiner finds that increasing the heat absorption
and heat reflection in this way would increase the temperature gradient in
Beerwerth’s thermopile, which would improve the function of the roofing
product suggested by the combined disclosures of Beerwerth, Gomez, and
Banister for generating electricity from heat. Final Act. 18—19; Ans. 19.
Appellants argue that Rone merely discloses conventional roofing
granules that are dark enough to have high solar absorbency, and Appellants
contend that “[t]here is nothing to suggest that” the solar energy absorbing
roofing granules disclosed in Rone would improve the operation of
Beerwerth’s device. App. Br. 28—29.
However, as the Examiner points out (Final Act. 19), coating the heat
adsorptive area of the thermoelectric power generating thermopiles of
Beerwerth as modified by Gomez and Banister with the heat absorptive
particles or granules taught by Rone, and coating the heat reflective area
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with the solar heat reflective roofing granules taught by Shiao, would
involve nothing more than use of known materials for their intended
functions in a known environment to accomplish an expected result.
Accordingly, regardless of whether Rone’s roofing granules would improve
the operation of Beerwerth’s device, one of ordinary skill in the art would
have been led to use Rone’s roofing granules and Shiao’s roofing granules
according to their known functions of absorbing and reflecting solar heat to
coat the respective heat absorptive and heat reflective areas of the
thermoelectric power generating thermopiles of Beerwerth as modified by
Gomez and Banister to achieve the predictable result of increasing heat
absorption and reflection in the coated areas. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976) (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”)
Therefore, Appellants’ arguments are unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 28—30 under
35 U.S.C. § 103(a).
Rejections X and XI
Although Appellants provide separate arguments for Rejections X and
XI, Appellants provide essentially the same arguments for both rejections.
Compare App. Br. 30, with App. Br. 35. We accordingly select claim 31 as
representative, and decide the appeal as to the claims included in
Rejections X and XI (claims 31—39) based on claim 31 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
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Claim 31 depends indirectly from independent claim 26 and requires a
layer of thermal insulation to be positioned under the solar heat reflective
area and over portions of the plurality of thermoelectric power generating
elements located below the solar heat reflective area.
The Examiner relies on Gomez’s disclosure of including a layer of
thermal insulation over a portion of thermopiles in a thermoelectric power
generator to retain heat and maintain a constant temperature gradient
between hot and cold junctions in the thermopiles. Final Act. 20; Ans. 20;
Gomez col. 2,11. 56—61; col. 3,11. 16—30, Fig. 1. The Examiner finds that
one of ordinary skill in the art at the time of Appellants’ invention would
have been led to modify the roofing product suggested by the combined
disclosures of Beerwerth, Gomez, and Banister by including a layer of
thermal insulation over the thermopile as disclosed by Gomez to retain heat
and maintain a constant temperature gradient between the hot and cold
junctions. Final Act. 20.
Appellants argue that Beerwerth’s device is a temperature sensor, and
contend that adding insulation to the sensor with the goal of retaining heat
would defeat Beerwerth’s purpose by making the sensor unresponsive to
rapid temperature changes. App. Br. 30.
However, as discussed above, Beerwerth discloses that a temperature
difference between the hot and cold junctions of Beerwerth’s thermopile
generates a sensor output signal. A temperature difference between hot and
cold junctions would similarly generate electric power from sunlight in a
plurality of Beerwerth’s thermopiles formed into a thermoelectric power
generator as suggested by Gomez. Accordingly, because one of ordinary
skill in the art would have understood that such a temperature difference is
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Appeal 2016-001576
Application 12/885,757
required in order for the thermopiles in such a thermoelectric power
generator to function effectively, the ordinarily skilled artisan would have
been led to include a layer of thermal insulation over the thermopiles as
disclosed by Gomez to advantageously retain heat and maintain a constant
temperature gradient between the hot and cold junctions.
Therefore, Appellants’ arguments are unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 31—39 under
35 U.S.C. § 103(a).
Reply Brief
Appellants argue in their Reply Brief (filed September 26, 2016) that
the Examiner introduces three new evidentiary references in the Answer,
which Appellants assert is not permitted unless the Examiner makes a new
ground of rejection. Reply Br. 2. We do not address whether the Examiner
improperly made a new ground of rejection in the Answer because such
issues are reviewable by petition under 37 C.F.R. § 1.181, and are therefore
not within the jurisdiction of the Board. Ex parte Frye, 94 USPQ2d 1072,
1078 (BPAI 2010) (precedential); MPEP § 1201 (8th Ed., Rev. 8, Jul. 2010)
(the Board will not ordinarily hear a question that is reviewable by petition).
We also do not consider any new argument raised in Appellants’
Reply Brief that could have been raised in their Appeal Brief. 37 C.F.R.
§ 41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(explaining that under the previous rules, which are similar to the current
rules, “the reply brief [is not] an opportunity to make arguments that could
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Application 12/885,757
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”); Optivus Technology, Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived).
DECISION
We affirm the Examiner’s rejection of claim 27 under 35 U.S.C.
§112, first paragraph for failing to comply with the written description
requirement and also affirm the rejections of claims 11—19, 26—39, 41, and
42 under 35 U.S.C. § 103(a), but reverse the Examiner’s rejection of claims
33—36 under 35 U.S.C. § 112, first paragraph for failing to comply with the
written description requirement, and also reverse rejection of claim 27 under
35 U.S.C. § 112, second paragraph.
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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