Ex Parte Shiao et al

Patent Trial and Appeal Board

Nov 1, 2017

12885757 (P.T.A.B. Nov. 1, 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
11/03/2017 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 JR.
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 REQUEST FOR REHEARING
Appellants request rehearing of our Decision mailed August 11, 2017
(“Dec.”), affirming the Examiner’s rejections of claims 11-19, 26-39, 41,
and 42 under 35 U.S.C. § 103(a). Request for Rehearing filed October 9,
2017 (“Req. Reh.”), 1.
We deny Appellants’ request to change our Decision for the following
reasons.
Rejections II, VII, and VIII
Appellants contend that the “closest thing to supporting reasoning the
Board provides for sustaining the Examiner’s rejections 111, VII, and VII is”
the following statement in our Decision:
Appeal 2016-001576
Application 12/885,757
Banister’s disclosure of using thermo voltaic 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 power generator as disclosed by Gomez, in order
to successfully generate electric power from sunlight in roofing
applications.
Req. Reh. 2 (citing Dec. 10-11). Appellants argue, in reference to this
statement, that “[t]he Board assumes without basis in the evidence of record
that all thermoelectric devices are functionally equivalent and
interchangeable. The evidence of record suggests the opposite; namely, that
all thermoelectric device types are not suitable for the same tasks.” Req.
Reh. 2.
However, contrary to Appellants’ arguments, our Decision does not
assume “that all thermoelectric devices are functionally equivalent and
interchangeable.” Dec. 7-11. Rather, as our Decision indicates, 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. Dec. 8. In addition,
as our Decision also indicates, Banister’s disclosure of using tiles containing
thermovoltaic elements in roofing applications, and broad definition of
“thermovoltaic” as “encompassing all known materials that convert heat into
electricity,” reasonably would have suggested to one of ordinary skill in the
art that Beerwerth’s thermopile connected to other such thermopiles as
suggested by Gomez could be used in roofing applications to convert heat
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Application 12/885,757
into electricity. Dec. 10-11; Banister 2, 20, 39, 40, 47, and 48. In other
words, because Banister defines “thermovoltaic elements” to encompass “all
known materials that convert heat into electricity,” one of ordinary skill in
the art would have considered the thermopiles disclosed in Gomez that
generate electric power from solar energy to be “thermovoltaic elements” as
disclosed in Banister. Dec. 10-11. Accordingly, as set forth in our
Decision, Banister’s disclosure of using thermovoltaic elements—explicitly
defined to encompass thermopiles—in roofing applications, reasonably
would have suggested to one of ordinary skill in the art that Beerwerth’s
thermopile could be connected with other such thermopiles to form a
thermoelectric power generator as disclosed by Gomez, in order to
successfully generate electric power from sunlight in roofing applications.
Dec. 7, 8, and 10-11.
Although Appellants assert that the “evidence of record” suggests that
all thermoelectric device types are not suitable for the same tasks, the
suitability of all thermoelectric device for the same tasks is not germane to
the present appeal. Req. Reh. 2. Rather, the relevant inquiry in the present
appeal is whether the evidence relied upon by the Examiner would have
suggested to one of ordinary skill in the art that a thermopile as disclosed in
Beerwerth could be connected with other such thermopiles to form a
thermoelectric power generator, as disclosed in Gomez, to successfully
generate electric power from sunlight in roofing applications, as disclosed in
Banister. Rather than identifying any “evidence of record” indicating
otherwise, Appellants present a series of (apparently rhetorical) questions
and assert that if “electricity” means usable electric power, the
thermocouples disclosed in Beerwerth would not be considered devices for
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Application 12/885,757
converting heat into electricity because Beerwerth teaches their use for
temperature measurement or motion detection. Req. Reh. 2. Appellants
further assert that “none of the prior art teaches the use of the thermocouples
as used in Beerwerth for electric power generation.” Id.
However, as our Decision indicates, Gomez explicitly discloses using
a plurality of connected thermopiles to generate electric power from solar
energy. Dec. 9 (citing Gomez col. 1,1. 58-col. 2,1. 2; col. 2,11. 56-56; col.
3,11. 26-28; Fig. 1.) Appellants’ arguments ignore this disclosure in Gomez,
and therefore do not take into consideration what the combined disclosures
of the entirety of the applied prior art would have suggested to one of
ordinary skill in the art at the time of the invention (discussed above).
Appellants further argue that “Banister teaches thermovoltaic devices
based on GaAs, GaSb, and InGaAs have resulted in dramatic efficiency
gains over other types (Banister, [0005]),” and Appellants contend that one
of ordinary skill in the art “would have no reason to negate the efficiency
gains of the thermovoltaic devices of Banister by replacing them with the
silicon based devices of Beerwerth.” Req. Reh. 3. Appellants contend that
the Board has failed to explain why one of ordinary skill in the art would
make such a combination. Id.
However, Appellants did not raise this argument in their Appeal and
Reply Briefs, and we therefore do not consider it. 37 C.F.R. § 41.52(a)(1)
(arguments not raised, and evidence not previously relied upon, in Appeal
and Reply Briefs are not permitted in a request for rehearing, with limited
exceptions). Nonetheless, we do point out that, as discussed in our Decision,
the combination proposed by the Examiner does not involve replacing
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Application 12/885,757
thermovoltaic elements disclosed in Banister with the thermocouple
disclosed in Beerwerth. Dec. 7.
Appellants further argue that we incorrectly interpret Beerwerth’s
disclosure regarding amplifiers. Req. Reh. 3. Appellants argue that
Beerwerth does not imply that amplifiers are not required, but indicates that
the amplifiers may optionally be provided on the frame of the sensor rather
than on a separate circuit board or other support. Id.
However, the disclosure in Beerwerth that Appellants refer to reads in
its entirety:
The thermocouples are made of polysilicon/aluminum or p-
polysilicon/n-polysilicon, for example. The frame 2 is preferably
made of silicon. It may therefore serve as substrate for electronic
components; for instance, amplifiers for amplifying the signal
output from the thermopile may be provided on the frame.
Because these amplifiers produce a certain waste heat, they are
positioned symmetrically to the thermopile on the frame, thereby
preventing them from causing heat gradients in the thermopile.
Beerwerth col. 4,11. 19-29. The only other disclosure in Beerwerth
regarding amplifiers is in claim 6, which recites that “the frame (2) is
substantially made of silicon, and that electronic circuits, in particular
amplifiers, are disposed on the frame (2).”
As our Decision indicates, one of ordinary skill in the art would have
understood the above disclosures in Beerwerth to indicate that amplifiers are
not required for use with Beerwerth’s thermopile, but may optionally be
included on the thermopile’s frame. Dec. 8-9. That is, one of ordinary skill
in the art would have understood Beerwerth to indicate that amplifiers need
not be used with the thermopile disclosed in the reference, but if amplifiers
are used, they should be positioned on the frame. Only the single paragraph
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of Beerwerth quoted above discusses amplifiers, and the remainder of
Beerwerth’s disclosures, with the exception of claim 6, make no mention of
amplifiers. Beerwerth’s failure to discuss amplifiers in all of the general
disclosures provided in the reference, in all of the drawings, and in all of the
specifically described embodiments of Beerwerth’s invention, save one,
further supports the interpretation of Beerwerth’s disclosures as indicating
that amplifiers are not required for use with the thermopile described in the
reference.
Rejection IV
Appellants argue that the following statement in our Decision
constitutes legal error: “claims 11-13 [sic: 13-15] 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.” Req. Reh. 4. Appellants contend that “it is axiomatic that
claims are interpreted in light of the specification, and, in light of the
specification, one of ordinary skill would understand that the claimed E*
value differences function to increase the temperature gradient available for
thermal electric power generation.”1 Id.
However, Appellants’ Specification defines the strength in color space
(E*) as “E* = (L*2 + a*2 + b*2)1/2, where L*, a*, and b* are the color
measurements for a given sample using the 1976 CIE L*a*b* color space.”
1 Appellants include another paragraph in their discussion of Rejection IV,
but the statements in this paragraph do not “state with particularity the points
believed to have been misapprehended or overlooked by the Board” as
required by 37 C.F.R. § 41.52(a)(1). Req. Reh. 3—4. We accordingly do not
address these statements.
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Spec. 8,11. 12-14. Appellants’ Specification further states that the “total
color difference AE* is defined as AE* = (AL*2 + Aa*2 + Ab*2)/2 where
AL*2, Aa*2, and Ab*2 are respectively the differences in L*, a* and b* for
two different color measurements.” Spec. 8,11. 14-16. Appellants’
Specification also states that “[sjhingles may be coated with mixtures of
granules having different colors. In order to achieve a similar appearance,
areas having an enhanced solar heat reflectance preferably differ in color
space strength (E*) from solar heat absorptive areas by no more than 10,
more preferably by no more than 5, and still more preferably by no more
than 2.” Spec. 8,11. 26-30 (emphasis added). Appellants’ Specification
does not include any further description of color space strength (E*), other
than reciting the language included in claims 13-15. Spec. 4,11. 3-6, 25-27.
In view of these disclosures in Appellants’ Specification, considered in the
context of the Specification as a whole, one of ordinary skill in the art would
have understood that the purpose of the color space strength (E*) difference
recited in claims 13-15 is to achieve a similar appearance.
Although Appellants assert that the E* value differences recited in
claims 13-15 “function to increase the temperature gradient available for
thermal electric power generation,” Appellants’ Specification discloses that
areas of different solar reflectivity—rather than areas of different color space
strength (E*)—function to generate temperature differences for power
generation. Spec. 13,11. 1-11. Therefore, contrary to Appellants’
argument, the statement in our Decision that claims 13-15 do not recite any
function for the recited E* value differences does not constitute legal error.
As our Decision also indicates, matters of ornamentation having no
mechanical function—such as the color space strength (E*) differences
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Application 12/885,757
recited in claims 13-15 whose purpose is to achieve a similar appearance—
do not patentably distinguish the claimed roofing product from the product
suggested by the combined disclosures of the applied prior art. Dec. 12
(citing In re Seid, 161 F.2d 229, 231 (CCPA 1947), In re Kuhle, 526 F.2d
553, 555 (CCPA 1975)).
Rejections VI and IX
Appellants again impermissibly present an argument that they did not
raise in their Appeal and Reply Briefs, and we therefore do not consider this
new argument. Req. Reh. 4-5; 37 C.F.R. § 41.52(a)(1) (arguments not
raised, and evidence not previously relied upon, in Appeal and Reply Briefs
are not permitted in a request for rehearing, with limited exceptions).
CONCLUSION
In conclusion, based on the foregoing, we grant Appellants’
Request for Rehearing to the extent that we have reconsidered our Decision,
but we deny Appellants’ request to make any change therein.
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).
DENIED
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