Marc Vogt et al.

Patent Trials and Appeals Board

Sep 19, 2019

13139594 - (D) (P.T.A.B. Sep. 19, 2019)

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.
13/139,594 09/13/2011 Marc Vogt 5022-003 2125
35411 7590 09/19/2019
KILYK & BOWERSOX, P.L.L.C.
3925 CHAIN BRIDGE ROAD
SUITE D401
FAIRFAX, VA 22030
EXAMINER
TRAN, UYEN M
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
09/19/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARC VOGT, DOMINIQUE JOUSSET, STEPHANE BIZET,
and JEAN-JACQUES FLAT
____________________

Appeal 2018-003353
Application 13/139,594
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
March 27, 2017 decision finally rejecting claims 33, 34, 36–45, and 47–54
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
An oral hearing was held on August 29, 2019, a transcript of which will be
made part of the record.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Arkema France as the real party in interest (Br. 3).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a photovoltaic module that, as shown
in Appellant’s FIG. 2, includes upper protective layer 24, protective
backsheet film 26, polyolefin based encapsulant positioned 22 between
upper protective layer 24 and protective backsheet film 26, and one or more
photovoltaic cells 10 encased in encapsulant 22.

FIG. 2 shows the general structure of the claimed photovoltaic cell.
The independent claims further specify the specific composition of the
protective backsheet film and state that the backside surface of the protective
backsheet film is exposed, as shown in FIG. 2 above. Details of the claimed
invention are set forth in independent claim 33, which is reproduced below
from the Claims Appendix to the Appeal Brief:
33. (Previously Presented) A photovoltaic module, comprising:
an upper protective layer;
a protective backsheet film;
a polyolefin-based encapsulant between the upper
protective layer and the protective backsheet film; and
one or more photovoltaic cells encased in the encapsulant
in the form of an encapsulated cell between the upper protective
layer and the protective backsheet film;
characterized in that a space is provided between the one
or more photovoltaic cells and the upper protective layer and
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the protective backsheet film, the space has a shape, the
encapsulant takes up the shape of the space, the protective
backsheet film has a contact surface on a first side thereof and
an exposed backside surface on a second side thereof opposite
the first side, the contact surface being in direct contact with the
encapsulated cell, the exposed backside surface defining a
backside of the photovoltaic module, the protective backsheet
film comprising at least one layer of a composition comprising
at least one polyamide-grafted polymer comprising a polyolefin
backbone containing a residue of at least one unsaturated
monomer (X) and at least one polyamide graft, wherein
the at least one polyamide graft comprises a
homopolyamide selected from PA-6, PA-6.6, PA-6.T, PA-10.T,
PA-10.10, PA-10.12, PA-11, and PA-12, the at least one
polyamide graft is attached to the polyolefin backbone by the
residue of the unsaturated monomer (X) that comprises a
functional group capable of reacting via a condensation reaction
with a polyamide having at least one amine end group and/or at
least one carboxylic acid end group,
the residue of the unsaturated monomer (X) 1s attached
to the backbone by grafting or copolymerization,
the at least one polyamide-grafted polymer comprises,
relative to its total weight, from 40% by weight to 95% by
weight the polyolefin backbone comprising the unsaturated
monomer (X), and from 5% by weight to 60% by weight the at
least one polyamide graft, and
the melting point or glass transition temperature of the at
least one polyamide graft is greater than or equal to 85° C; and
wherein each of the contact surface and the exposed
backside surface consists of the composition.

Independent claim 54 differs from independent claim 33 in that (1)
neither the contact surface nor the exposed backside surface of the protective
backsheet film is required to consist of the composition; and (2) the at least
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one polyamide graft is selected from a slightly different group of specific
homopolyamides or from a group of specific copolyamides ( Br. 8).

REJECTIONS
1. Claims 33, 37–45, 47, and 49–54 are rejected under
35 U.S.C. § 103(a) as unpatentable over Hayes2 in view of Starkweather,3
Eberspacher,4 and Blondel.5
2. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hayes in view of Starkweather, Eberspacher, and Blondel, and further in
view of Xia.6
3. Claims 36 and 48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hayes in view of Starkweather, Eberspacher, and Blondel,
and further in view of Glotin.7

DISCUSSION
Appellant separately argues four groups of claims (1) claims 33, 34,
37–45, and 47–53, (2) claim 34, (3) claims 36 and 48, and (4) claim 54 ( Br.
5, 19). For group (1), we will focus our analysis on claim 33. We will
address claims 34, 36, and 54 separately.

2 Hayes, US 2008/0053516 A1, published March 6, 2008.
3 Starkweather, Jr. et al., US 4,217,430, issued August 12, 1980.
4 Eberspacher et al., US 2007/0074755 A1, published April 5, 2007.
5 Blondel et al., US 2006/0074158 A1, published April 6, 2006.
6 Xia, et al., US 2010/0043871 A1, published February 25, 2010.
7 Glotin et al., US 5,342,886, issued August 30, 1994.
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Claim 33. The Examiner finds that Hayes teaches the general
structure of the photovoltaic module recited in claim 33, except that Hayes
does not teach (1) the specific composition recited in the claim used in the
backsheet, though it does teach the use of a polyamide (Final Act. 4, citing
Hayes, Fig. 4 and ¶¶ 21, 57, and 58), (2) the use of the specific polyamides
recited in claim 33 (Final Act. 5), or (3) that the solar cells are completely
surrounded by the encapsulent (Final Act. 6).
The Examiner finds that Starkweather teaches a polyamide
composition which meets the requirements set forth in claim 33, and that
such a composition provides flexibility, strength, and toughness (Final Act.
4–5, citing Starkweather 1:64–2:17, 3:32–35, 4:42–59). The Examiner
determines that it would have been obvious to have used Starkweather’s
polyamide composition to impart the properties of flexibility, strength, and
toughness, and to use a specific polyamide taught by Blondel as providing
good impact strength and flexibility (Final Act. 5, citing Blondel ¶ 3).
Finally, the Examiner also determines that it would have been obvious
to encapsulate the solar cells in the Hayes structure as taught by Eberspacher
to protect the solar cells from environmental damage (Final Act. 6).
Appellant argues that the Examiner reversibly erred in not considering
the full teachings of several of the references and only selectively picking
and choosing specific teachings from them in order to make out the
obviousness rejection ( Br. 14).
First, Appellant argues that Hayes teaches that its invention is
specifically directed to the use of a backsheet having a particular primer
coating and, therefore, a person of skill in the art would not have replaced
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the composition making up the backsheet of Hayes with the composition
taught by Starkweather because doing so “would require completely
eliminating the inventive primer-coated backsheet that is the entire focus of
the teachings of Hayes” (Br. 15, citing Hayes, ¶ 9). This argument is not
persuasive because, inter alia, Hayes specifically teaches that while its
backsheet can be coated with the primer, the primer can instead by applied
to different layers in the structure (Hayes, ¶ 9).
Second, Appellant argues that Eberspacher’s focus is on providing a
structural support to its backsheet and, therefore, the combination of
Eberspacher and Hayes would produce a structure without the exposed
backside surface of the backsheet (Br. 15–18). This argument is not
persuasive because the Examiner has provided a reasoned explanation of
why a person of skill in the art would have modified the structure of Hayes
by fully encapsulating its solar cells (in order to protect them from
environment damage) (Final Act. 6). Appellant has not challenged, and
hence has not shown reversible error in, this determination. That a particular
feature taught by Eberspacher can be incorporated into Hayes does not mean
that every feature in Eberspacher need be incorporated in order to show the
obviousness of the combination.
Finally, during the oral hearing, Appellant’s counsel made an
argument that Hayes requires the use of a stiff backsheet and, therefore, a
person of skill in the art would not have substituted in the flexible material
taught by Starkweather. This argument was not made in the Appeal Brief, or
the Reply Brief. Accordingly, we will not consider it on appeal. Any
substantive arguments we consider on appeal are those raised in the Appeal
Brief. 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments of appellant . . . and the
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basis therefor[e], with citations to the . . . parts of the [r]ecord relied [up]on”
are the arguments considered; 37 C.F.R. § 41.47(e)(1) (“At the oral hearing,
appellant may only . . . present argument that has been relied upon in the
brief or reply brief except as permitted by paragraph (e)(2) of this
section”.8 Furthermore, “[t]he arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant.”); see also Ex
parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (explaining that arguments
and evidence not timely presented in the principal Brief, will not be
considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not
first raised in the brief to the Board is waived on appeal).
Claim 34. Although Appellant includes claim 34 in a separate section
of the Appeal Brief, the arguments set forth therein are the same as for claim
33, and are similarly unpersuasive.
Claims 36 and 48. Appellant argues that the Examiner has not
established an adequate reason to combine Glotin with the other references.
However, the Examiner finds that Hayes in view of Starkweather teaches a
graft copolymer having a monomer X comprising carboxylic acid, while
Glotin teaches a graft copolymer having a monomer X comprising either
fumaric acid (which is one product of carboxylic acid) or maleic anhydride.
Therefore, the Examiner determines, it would have been obvious to modify

8 37 C.F.R. § 41.47(e)(2) states that “[u]pon a showing of good cause,
appellant . . . may rely on a new argument based upon a recent relevant
decision of either the Board or a Federal Circuit.” That section is not
applicable here.
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the monomer X as taught by Hayes to be made of maleic anhydride as taught
by Glotin, as Glotin evidences that carboxylic acid and maleic anhydride
would be used as an alternative and equivalent material for the monomer X
for the same intended use. Appellant has not disputed the foregoing
determination, and thus has not shown reversible error in it.
Claim 54. Although Appellant indicates that claim 54 is argued
separately from claim 33, the arguments are the same as those for claim 33
(see, Br. 20–22). These arguments are unpersuasive for the same reasons set
forth above in connection with claim 33.
For all of the foregoing reasons, we sustain the rejections on appeal.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
33, 37–45, 47, and
49–54
§ 103(a)
Hayes, Starkweather,
Eberspacher, and
Blondel
33, 37–45, 47,
and 49–54

34 § 103(a)
Hayes, Starkweather,
Eberspacher,
Blondel, and Xia
34
36 and 48 § 103(a)
Hayes, Starkweather,
Eberspacher,
Blondel, and Xia
36 and 48
Overall Outcome 33, 34, 36–45,
and 47–54

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED