Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201713048302 (P.T.A.B. Feb. 21, 2017) Copy Citation 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. 13/048,302 03/15/2011 Feng WANG 21334-2001(CS-01205US) 8426 29450 7590 02/23/2017 RART FY NNYDFR EXAMINER 2 Great Valley Parkway Suite 110 MERSHON, JAYNE L Malvern, PA 19355 ART UNIT PAPER NUMBER 1758 NOTIFICATION DATE DELIVERY MODE 02/23/2017 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): berwynipdocket @ barley. com hsalamone@barley.com sanastasi@barley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FENG WANG, XIAOQUN CHEN, CHUNFU ZHOU, and ZHENHUA ZHANG Appeal 2016-000150 Application 13/048,3021 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL A. STATEMENT OF THE CASE Appellants filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1—4 and 6—15. We have jurisdiction under 35 U.S.C. § 6(b).2 We AFFIRM. 1 According to Appellants, the real parties in interest are Tyco Electronics Co. Ltd. and Tyco Electronics Holdings. Br. 3. 2 Our Decision refers to the Appellants’ Specification filed Mar. 15, 2011 (Spec.), the Appeal Brief filed Mar. 6, 2015 (Br.), and the Examiner’s Answer mailed July 14, 2015 (Ans.). Appeal 2016-000150 Application 13/048,302 The subject matter on appeal relates to junction modules for a building integrated photovoltaic system (see, e.g., claim 1). A conventional method for using solar energy is to attach a solar cell panel on the roof of a building via a bracket, with a junction module generally disposed on a backside of the assembly. Spec. 13. Building integrated photovoltaic devices include solar cells integrated in part of a building, such as a sunlight roof, a window, or curtain wall glass, so the devices may generate electricity while providing sunlight or shelter. Id. 14. Appellants disclose that junction modules must meet safety standards for providing minimum distances between a conductor and a portion of the junction module at which a hand may enter the junction module. Id. 1 5. Asa result, it is difficult to reduce the size of a junction module while meeting the safety standards. Id. 17. In view of this, Appellants disclose a desire to provide a junction module with minimal size that satisfies the safety standards and can be easily mounted, replaced, and manufactured. Id. ^ 8. Independent claim 1 is illustrative and is reproduced below from the Claims Appendix of the Appeal Brief.3 The limitation at issue is italicized. 1. A junction module for a building integrated photovoltaic system, comprising: a housing being formed with at least one chamber enclosed by a first sidewall; a base for disposing the at least one chamber on; a cover for covering an opening of the at least one chamber, wherein the cover has a second sidewall enclosing an outer surface of the first sidewall of the at least one chamber and constituting a part of an outer wall of the junction module; 3 Br. Claims Appendix 19. 2 Appeal 2016-000150 Application 13/048,302 a ring groove formed in the outer surface of the first sidewall of the at least one chamber and extending around the circumference of first sidewall of the chamber; and a ring seal positioned in the ring groove and sandwiched between the first sidewall of the at least one chamber and the second sidewall of the cover. The claims on appeal stand rejected as follows: (1) claims 1, 2, 6—8, and 12—15 under 35 U.S.C. § 103(a) as unpatentable over Mills;4 (2) claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Mills in view of Silverbrook;5 (3) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Mills in view of Li;6 and (4) claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over Mills in view of Li and further in view of Maucher.7 B. DISCUSSION Rejection over Mills Claims 1,2, 6—8, and 12—15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mills. We select claim 1 as representative for discussing the issues on appeal. The dispositive issue on appeal is whether Appellants have demonstrated there would have been a lack of reason to modify the 4 Mills et al., US 2012/0060919 Al, published Mar. 15, 2012 (“Mills”). 5 Silverbrook, US 2009/0073244 Al, published Mar. 19, 2009 (“Silverbrook”). 6 Li, US 2010/0282294 Al, published Nov. 11, 2010 (“Li”). 7 Maucher et al., US 5,871,401 A, issued Feb. 16, 1999 (“Maucher”). 3 Appeal 2016-000150 Application 13/048,302 embodiment depicted in Figures 12a and 12b of Mills with a ring seal in view of the disclosure in paragraph 3 of Mills. The Examiner finds Figures 12a and 12b of Mills disclose a junction module for a photovoltaic system including a housing having a chamber enclosed by a sidewall, a base, and a cover having a second sidewall. Ans. 3. The Examiner finds “the cited embodiment” does not include, inter alia, a seal formed by a ring seal as recited in claim 1. Id. The Examiner finds paragraph 3 of Mills discloses it is known in the art to seal a housing with a ring seal. Id. The Examiner concludes it would have been obvious to substitute the ring seal disclosed in paragraph 3 for the sealant disclosed for the embodiment of Figures 12a and 12b of Mills. Id. at 4. Appellants contend the Examiner erred by not considering Mills as a whole, including portions that teach away from the claimed invention. Br. 10. In particular, Appellants argue that although paragraph 3 of Mills describes the use of a ring seal, paragraph 6 discloses “junction boxes are exposed to thermal differences that result in thermal expansion of the junction box” and “[sjuch an expansion can lead to a malfunction of a sealing element, such as the above mentioned sealing ring.” Id (emphasis added). Moreover, paragraph 10 states an object of Mills’ invention is to provide a junction box that does not have the disadvantages of the prior art junction boxes. Id. Specifically, Mills discloses using a filling material, such as a pottant or foam, to overcome the disadvantages of a sealing ring. Id. at 10—11. Appellants’ arguments are not persuasive. We note that although teaching away is a significant factor to be considered in the context of 4 Appeal 2016-000150 Application 13/048,302 obviousness, the nature of prior art teachings is highly relevant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Although Mills describes a disadvantage for the sealing ring in paragraph 6 and discloses the use of filling material in paragraphs 15, 16, and 116, one of ordinary skill in the art would have understood Mills as disclosing a ring seal and a filling material as alternative embodiments for sealing a junction housing with each having advantages and disadvantages.8 As explained by the Examiner at pages 13— 14 of the Examiner’s Answer, a known or obvious invention “does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” Id. Although a sealing ring may have certain disadvantages, such as with regard to resisting the effects of thermal expansion, as described in paragraph 6 of Mills, the Appellants have failed to show that using a ring seal to seal Mills’ junction housing would render Mills’ junction housing inoperable for its intended use (i.e., providing a connection between solar panel modules of a photovoltaic array or between solar panel modules and 8 “[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In this case, the Examiner undisputedly finds: [Fjilling and encapsulating a cavity with a filling material as taught by Mills, also has drawbacks well known to one of ordinary skill in the art of solar cells. For example, encapsulant or filling prevents re-work for any purpose; the unit becomes a throw-away unit. Further, filling material must be chosen with a coefficient of thermal expansion matching that of the junction box or the filling material will crack the junction box . . . and unused catalyst in the filling material may introduce corrosive agents into the cavity. Ans. 16. 5 Appeal 2016-000150 Application 13/048,302 other devices).9 See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reference teaches away when modification would render apparatus inoperable for its intended purpose). Appellants assert cases such as In re Gurley are not applicable because the cases regard disclosed embodiments or inventive embodiments, but here the Examiner relies upon paragraph 3 of Mills, which is part of a “Prior Art” section of Mills’disclosure. Br. 11—15. Appellants argue “Mills simply does not disclose any embodiments having a ring groove and ring seal, meaning that such embodiments are not known.” Br. 13. These arguments are also unpersuasive. As stated by the Examiner at page 14 of the Examiner’s Answer, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332—33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). Therefore, the “Prior Art” section of Mills, including the sealing ring disclosed in paragraph 3, is part of Mills’ disclosure and would have been available to one of ordinary skill in the art for all it teaches or suggests. As discussed above, one of ordinary skill in the art would have understood the sealing ring disclosed in paragraph 3 to be an alternative embodiment to the sealing material described for the inventive embodiments of Mills. Therefore, Appellants’ arguments do not demonstrate a lack of reason to modify the embodiment depicted in Figures 12a and 12b of Mills in view of the disclosure in paragraph 3 of Mills (i.e., to substitute the sealing ring of paragraph 3 for the filling material described in paragraph 116 of Mills). 9 Mills 11. 6 Appeal 2016-000150 Application 13/048,302 Appellants do not present any arguments in support of the separate patentability of claims 2, 6—8, and 12—15. Br. 10-15. Therefore, for the reasons set forth above and reasons provided in the Examiner’s Answer, the § 103(a) rejection of claims 1, 2, 6—8, and 12—15 over Mills is sustained. Obviousness rejections of claims 3, 4, and 9—11 Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mills in view of Silverbrook. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mills in view of Li. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mills in view of Li and further in view of Maucher. Lor claims 3, 4, and 9-11, Appellants merely reiterate the arguments set forth in support of the patentability of claim 1 and contend Silverbrook, Li, and Maucher do not remedy the deficiencies of the references applied in the rejection of claim 1. Br. 15—17. Lor the reasons set forth above, there are no deficiencies in the rejection of claim 1 that require curing by Silverbrook, Li, or Maucher. C. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.L.R. § 1.136(a)(1). ALLIRMED 7 Copy with citationCopy as parenthetical citation