SOUTHERN TAIWAN UNIVERSITY OF SCIENCE AND TECHNOLOGYDownload PDFPatent Trials and Appeals BoardDec 10, 20202019006109 (P.T.A.B. Dec. 10, 2020) 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. 14/272,819 05/08/2014 RUEI-TANG CHEN MR957-2754 1006 4586 7590 12/10/2020 ROSENBERG, KLEIN & LEE 3458 ELLICOTT CENTER DRIVE-SUITE 101 ELLICOTT CITY, MD 21043 EXAMINER AYAD, TAMIR ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 12/10/2020 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): ptoactions@rklpatlaw.com ptoactions@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RUEI-TANG CHEN, CHONG-YOU LIAO, HONG-MING SYU, and LIEN-YI WANG1 ____________ Appeal 2019-006109 Application 14/272,819 Technology Center 1700 ____________ Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and JANE E. INGLESE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 4–6, and 9–11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to solar modules having uniform light transmission. E.g., Spec. 1:4–10; Claim 1. The Specification discloses that such modules may be useful when used on, for example, the roof of a 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Southern Taiwan University of Science and Technology. Appeal Br. 1. Appeal 2019-006109 Application 14/272,819 2 greenhouse, because the module generates power but still allows sunlight into the greenhouse. Id. at 1:4–10, 21–23. Claim 1 is reproduced below from page 37 (Claims Appendix) of the Appeal Brief: 1. A solar module having uniform transmitted light mounted to a roof portion of a greenhouse, comprising: a transparent substrate formed by a transparent plastic film as a bottom-most layer of the solar module; a diffusion film disposed on the transparent substrate; at least one solar chip disposed on the diffusion film, an area of the solar module corresponding to the at least one solar chip defining an opaque region thereof that produces a shaded area of the solar module corresponding to portions of the diffusion film and substrate disposed beneath the at least one solar chip, the solar module having a light transmittable region surrounding the opaque region, wherein the light transmittable region accounts for 5% to 70% of the area of the solar module; a transparent cover plate covered on the at least one solar chip, wherein the transparent cover plate is an ironless glass having a thickness less than 1 mm; and a hot melt adhesive film joining the at least one solar chip and the transparent cover plate; wherein the diffusion film at the light transmittable region is aligned with a bottom portion of the at least one solar chip and the light transmittable region has a transmittance ranging from 20% to 99%, and the diffusion film scatters sunlight travelling through the light transmittable region to the shaded area of the solar module to generate light transmitted through the transparent substrate that is uniform with respect to both the light transmittable region and the shaded area. Appeal 2019-006109 Application 14/272,819 3 REJECTIONS ON APPEAL2 The claims stand rejected under 35 U.S.C. § 103 as follows: 1. Claims 1, 2, 4, 6, 9, and 10 over Ricaud (US 5,254,179, issued Oct. 19, 1993), Hunter (US 2007/0227573 A1, published Oct. 4, 2007), Kalkanoglu (US 2008/0006323 A1, published Jan. 10, 2008), Chuang (US 8,186,100 B2, issued May 29, 2012), and Kalejs (US 2009/0178704 A1, published July 16, 2009). Ans. 10–11. 2. Claim 5 over Ricaud, Hunter, Kalkanoglu, Chuang, and Chu (US 2010/0215931 A1, published Aug. 26, 2010). Ans. 8. 3. Claims 6 and 9 over Ricaud, Hunter, Kalkanoglu, Chuang, and Kalejs. Ans. 9. 4. Claim 11 over Ricaud, Hunter, Kalkanoglu, Chuang, and Seligman (US 8,026,637 B2, published Sept. 27, 2011). Ans. 10. 5. Claims 1, 2, 4, and 10 over Ricaud, Hunter, Kalkanoglu, and Chuang. Ans. 3. ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in Rejections 1, 2, and 4, which encompass all of the claims on appeal. We affirm those rejections for 2 What we have listed as Rejection 1 is a New Ground of Rejection in the Examiner’s Answer. See Ans. 10–11. Rejection 1 differs from what we have listed as Rejection 5 only in that Rejection 1 adds the Kalejs reference to provide further support for the Examiner’s findings as to one claim limitation. Because the Examiner’s addition of Kalejs results in a more comprehensive basis for rejection, we have listed the ground that includes Kalejs as Rejection 1. Appeal 2019-006109 Application 14/272,819 4 reasons set forth below, in the Non-Final Action dated August 21, 2017 (“Office Act.”), and in the Examiner’s Answer. See generally Office Act. 2–11; Ans. 3–13. We decline to address Rejections 3 and 5 for reasons set forth below. Rejection 1 The Appellant argues the claims as a group. We select claim 1 as representative, and the remaining claims subject to Rejection 1 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner’s rejection of claim 1 appears at pages 10–14 of the Answer. Of particular relevance to the Appellant’s arguments concerning this rejection, the Examiner finds that Ricaud’s “protective insulating layer 15” corresponds to the claimed diffusion film. Ans. 11 (citing Ricaud at 4:58; Fig. 5 (element 15)). The Examiner finds that Ricaud “does not explicitly disclose that the protective insulating layer [15]” scatters sunlight to generate light that is “uniform with respect to both the light transmittable region and the shaded area,” as recited by claim 1. Ans. 13–14. The Examiner finds, however, that Kalejs discloses a similar solar module with a diffusion film made of materials that are the same as materials disclosed by the Appellant as suitable for carrying out the light scattering function recited by claim 1. Id. at 14 (citing Kalejs ¶ 136 for its disclosure of ethyl vinyl acetate (EVA) with light scattering particles). The Examiner determines that it would have been obvious to use EVA with light scattering particles, as taught by Kalejs, as the material of layer 15 of Ricaud, “because as taught by Kalejs, any light scattered . . . will be redirected toward an adjacent solar cell.” Ans. 14. Appeal 2019-006109 Application 14/272,819 5 As to the requirement of claim 1 that the “transparent cover plate” be made of “ironless glass having a thickness less than 1 mm,” the Examiner finds that Ricaud discloses a transparent glass cover plate but does not specify that it is ironless glass having a thickness less than 1 mm. Ans. 11. The Examiner finds, however, that Hunter discloses a similar solar module having a transparent cover plate made of ironless glass with a thickness less than 1 mm. Id. The Examiner determines that it would have been obvious to use Hunter’s cover plate in the solar module of Ricaud “because as taught by Hunter, the cover plate has adequate hail resistance and optimum transmissivity.” Id. at 12. In view of those and other findings less relevant to the arguments raised by the Appellant in this appeal, the Examiner concludes that the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art. The Appellant first argues that “Ricaud clearly fails to teach the transmission of light in a uniform fashion.” Appeal Br. 12; Reply Br. 13. That argument is unpersuasive because the Examiner relies on the combination of Ricaud and Kalejs—not Ricaud alone—as yielding a layer structure that would transmit light in a way that falls within the scope of claim 1. See Ans. 14; see also In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). The Appellant also argues that Kalejs’ light scattering film “is a reflective film which redirects the incident light from the surface of the reflective film 132, but does not permit the light to scatter within its body.” Reply Br. 22. Appeal 2019-006109 Application 14/272,819 6 That argument is not persuasive for at least two reasons. First, the Examiner finds that, because the material of Kalejs is the same as a material disclosed by the Appellant as suitable for carrying out its light scattering function, the material of Kalejs would naturally result in a film that performs the recited light scattering function. See Ans. 14 (“[W]hen the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.”); compare Kalejs ¶ 136 (disclosing ethyl vinyl acetate with scattering particles), with Appeal Br. 39 (claim 6) (reciting a diffusion film made from polyethylene vinyl acetate resin with scattering particles). The Appellant fails to address that rationale or otherwise show error in it. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). Second, the Appellant’s argument that Kalejs’s film “does not permit the light to scatter within its body” is attorney argument unsupported by any citations to Kalejs or other evidence of record. See Reply 21–22; see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Kalejs describes its film 132 as “a light scattering film.” E.g., Kalejs ¶ 119. Particularly in view of the fact that the Appellant does not persuasively dispute the Examiner’s finding that Kalejs discloses a material (EVA with scattering particles) equivalent to a material recited by the Appellant’s Specification as suitable for carrying out the light scattering function, the Appellant’s unsupported argument that Kalejs’s material does not scatter light in a way that falls within the scope of claim 1 is not persuasive. See Jung, 637 F.3d at 1365. Appeal 2019-006109 Application 14/272,819 7 The Appellant also argues that “Hunter does NOT use an ironless glass,” and that Hunter’s cover plate is “made of a highly reflective material.” Appeal Br. 17; Reply Br. 18. That argument is not persuasive because, as the Examiner explains, see Ans. 23–24, Hunter explicitly discloses the use of “clear iron free” glass “with a minimum of reflectance.” See Hunter ¶ 51. The Appellant fails to address those disclosures in Hunter. The Appellant also raises various arguments attacking the references individually. E.g., Appeal Br. 17 (arguing that Ricaud does not teach a hot melt adhesive), 18 (arguing that Kalkanoglu fails to disclose certain claim limitations), 19 (arguing that Chuang’s layer structure is not the same as the claimed layer structure). Those arguments are not persuasive because, as explained above, “one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” See Keller, 642 F.2d at 426. We have carefully considered each of the Appellant’s arguments, but we are not persuaded of reversible error in the Examiner’s rejection. See Jung, 637 F.3d at 1365. Rejections 2 and 4 The Appellant argues that the Examiner’s additional reliance on Chu (Rejection 2) and Seligman (Rejection 4) “fails to remedy” the alleged deficiencies in Rejection 1, discussed above. See Appeal Br. 24, 29; Reply Br. 31, 34. Because we are not persuaded by the Appellant’s arguments concerning Rejection 1, and the Appellant raises no distinct arguments as to Rejections 2 and 4, we affirm Rejections 2 and 4. Appeal 2019-006109 Application 14/272,819 8 Rejection 3 Rejection 3 concerns claims 6 and 9, and it involves the same prior art as Rejection 1. Compare Ans. 10–11 (Rejection 1), with Ans. 9 (Rejection 3). Rejection 3 appears to be redundant of Rejection 1, which also addresses claims 6 and 9. Compare Ans. 14–15 (addressing claims 6 and 9 in the context of Rejection 1), with Ans. 9 (addressing claims 6 and 9 in the context of Rejection 3). Because we affirm the Examiner’s rejection of claims 6 and 9 in the context of Rejection 1 above, we decline to separately address Rejection 3. Rejection 5 Rejection 5 is similar to Rejection 1 but fails to include the Kalejs reference and does not encompass claims 6 and 9. Because Rejection 1 encompasses all of the claims and all of the prior art references subject to Rejection 5, and we affirm Rejection 1 above, we decline to separately address Rejection 5. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 2, 4, 6, 9, 10 103 Ricaud, Hunter, Kalkanoglu, Chuang, Kalejs 1, 2, 4, 6, 9, 10 5 103 Ricaud, Hunter, Kalkanoglu, Chuang, Chu 5 6, 9 103 Ricaud, Hunter, Kalkanoglu, Chuang, Kalejs 11 103 Ricaud, Hunter, Kalkanoglu, Chuang, 11 Appeal 2019-006109 Application 14/272,819 9 Claims Rejected 35 U.S.C. § References Affirmed Reversed Seligman 1, 2, 4, 10 103 Ricaud, Hunter, Kalkanoglu, Chuang Overall Outcome 1, 2, 4–6, 9–11 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 Copy with citationCopy as parenthetical citation