DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/19/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As newly added, claim 21 recites “the photovoltaic material directly contacts the base layer” (emphasis added) in lines 3-4. Applicant has no support for the limitation in the originally filed disclosure. Applicant discloses each solar cell comprises a photovoltaic material and associated conductors, and the photovoltaic material includes semiconductor ([0013-0014]). The description of the photovoltaic material of semiconductor being in direct contact with the base layer is nowhere to be found. The term “directly contacts” is nowhere to be found, and the description that reasonably conveys one skilled in the art that the photovoltaic material (or the semiconductor) directly contacts the base layer (or an insulation) is nowhere to be found.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As newly added, claim 21 recites “the photovoltaic material directly contacts the base layer” in lines 2-4. It is not clear what is to be encompassed by the term “directly contacts”. Applicant points to description “the amorphous silicon is deposited onto the Kapton film or another material that comprises the base layer 108 by sputtering” in paragraph [0015] of Applicant’s disclosure and definition of “sputtering” from dictionary.com, and argues that one skilled in the art would understand that the photovoltaic material inherently contacts the base layer directly. However, sputtering is a deposition process, in which material is dislodged from a target (or the source material) to deposit onto a substrate (or base) opposite from the target; and a solar cell requires electrodes (or contacts or conductor) on the bottom and/or top of the photovoltaic material (e.g. semiconductor) to extract electrons (or carriers) generated from the photovoltaic material. As such, there is always interference of electrodes (or contact or conductor) between the photovoltaic material and the base (or substrate). A sputtering process is not an inherency to “the photovoltaic material directly contacts the base”, unless there is a specific design of solar cell that does not requires electrodes or more specifically any bottom electrodes to allow the photovoltaic material directly contacts the base.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “directly contacts” of the recitation “the photovoltaic material directly contacts the base layer” in line claim 1 is used by the claim to mean “the photovoltaic material being disposed onto the base layer” according to Applicant’s disclosure and arguments 10/11/2024, while the accepted meaning is “contact with no interference therebetween”. The term is indefinite because the specification does not clearly redefine the term.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hayes (US 2008/0053516) in view of Noguchi et al. (US Patent 5,236,516), and further in view of Korman et al. (US 2005/0139253).
Regarding claims 1 and 8, Hayes discloses a solar array (or solar cell laminate shown fig. 4) comprising:
a power generating layer comprising a base layer (35) and a plurality of solar cells (33) comprising a photovoltaic material ([0044-0045]) that is applied to the base layer (35, see fig. 4); and
a durable layer (31 of polyester film 10 and 32) comprising a transparent or translucent polymer film of polyester (10, [0018], figs. 1 and 4) adhesively secured to the power generating layer by way of the primer (14) and adhesive encapsulant (32) as Hayes discloses the polyester film is with high adhesion ([0008]) and the encapsulant includes adhesive or is treated to enhance adhesion ([0050] and [0054]);
wherein a homogenous portion of the base layer (35) extends fully each of the plurality of solar cells (33) and the space between adjacent solar cells (33, see fig. 4), and the base layer (35) is glass (or layer 35, see [0035]).
Hayes teaches the solar cell array (or solar cell laminate) is flexible (see [0053]).
Hayes does not disclose including a layer of conductive material disposed on an external surface of the base layer, wherein the layer of conductive material extends fully each of the plurality of solar cells and a space between adjacent solar cells.
Noguchi et al. discloses including a light shielding substrate (1 in figs. 3 and 6 or 25 in fig. 7) formed of metal (see col. 2, lines 9-27) such as stainless steel (col. 3, lines 31-33) or silver or copper (see col. 5, lines 2-5 and lines 25-31) disposed on an external surface of a base layer (2 in fig. 3 and 6 or 24 in fig. 7) to increase in the light absorbed and result in drastic enhancement of the conversion efficiency (see col. 2, lines 9-27).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the solar array of Hayes et al. by incorporating a layer of conductive material (or metal material such as stainless steel, silver or copper) to form a light shielding substrate to increase the absorbed light which results in drastic enhancement of the conversion efficiency as taught Noguchi et al.
Hayes does not disclose including an ultraviolet radiation blocking layer on top of the durable layer such that the durable layer is disposed between the power generation layer and the ultraviolet radiation blocking layer, and the durable layer extend fully each of the plurality of solar cells and the space between adjacent solar cells.
Korman et al. teaches including an ultraviolet radiation blocking layer (46, figs. 5 and 7) comprising zinc oxide to capture electrons that are traveling in space that contact the solar array (or solar panel assemblies) and conducts electrons away from the solar cell to prevent electro-static discharge therein (see [0031]); wherein the ultraviolet radiation blocking layer (46, see figs. 5 and 7) is disposed on top of the durable layer (44) extends fully each of the plurality of solar cells (32/34/36/30) and the space between adjacent solar cells (see figs. 5 and 7) such that the durable layer (44) is between the power generation layer (32/34/36/30/40/42) and the ultraviolet radiation blocking layer (46, see figs. 5 and 7).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the solar array of Hayes by incorporating an ultraviolet radiation blocking layer comprising zinc oxide taught by Korman et al. on top of the durable layer (31/32) such that the durable layer (31/32) is disposed between the power generation layer (33-35) and the ultraviolet radiation blocking layer; because Korman et al. discloses the ultraviolet radiation blocking layer (46) would protect the solar cells on the second electrode side by covering the solar cells by conducting electrons away from solar cells to prevent electro-static discharge ([0031]).
Modified Hayes discloses all the structural limitations of the claimed solar cell array. Statement “for extraterrestrial deployment” in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art solar cell array. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115. Korman et al. teaches using solar cell array to be flexible for extraterrestrial deployment, or in an outer space environment or a non-earth environment (see title, [0001-0004]).
Regarding claim 10, modified Hayes discloses a solar array as in claim 1 above, wherein the durable layer comprises polyester and the ultraviolet radiation blocking layer comprises zinc oxide (see claim 1 above).
Modified Hayes does not explicitly disclose the durable layer comprises Mylar.
However, Korman et al. teaches Mylar is a tradename for polyester manufactured by E.I. du Pont de Nemours & Co. (see [0036] of Korman et al.).
Therefore, it would have been obvious to one skilled in the art to have used Mylar for the polyester film of the durable layer comprising polyester disclosed Hayes, because Korman et al. teaches Mylar is the tradename for polyester manufactured by E.I du Pont de Nemours & Co., which is commercially available and ready for use.
Claim(s) 2, 4-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over modified Hayes (US 2008/0053516) as applied to claim 1 above, and further in view of Kim et al. (KR 10-20160116851, see machine translation).
Regarding claims 2 and 11, modified Hayes discloses a solar array as in claim 1 above, wherein Korman et al. discloses the ultraviolet radiation blocking layer is a conductive oxide, e.g. zinc oxide, to conduct electrons away from the solar cells (see claim 1 above).
Modified Hayes does not explicitly disclose the ultraviolet radiation is coupled to electrical ground that is separate from the flexible solar array.
Kim et al. discloses coupling an electrically conductive layer (150, fig. 1, [0030-0031]) to electrical ground (or frame 140, fig. 1, [0032]) to suppress the occurrence of leakage current and prevent a potential induced degradation PID phenomenon, thereby suppressing deterioration of the solar cell module ([0032], also see [0005-0007]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have coupled the electrically conductive ultraviolet radiation blocking layer of modified Hayes to electrical ground such as a frame that is separate from the flexible solar array (e.g. base layer, solar cells, durable layer and ultraviolet radiation blocking layer) as taught by Kim et al.; because Korman et al. explicitly teaches the electrically conductive ultraviolet radiation blocking layer is used to conduct electrons away from the solar cells, and Kim et al. teaches such coupling of the electrically conductive ultraviolet radiation blocking layer would suppress the occurrence of leakage current and prevent a potential induced degradation PID phenomenon, thereby suppressing deterioration of the solar array (or module).
Regarding claim 4, modified Hayes discloses a solar array as in claim 2 above, wherein Hayes discloses the photovoltaic material comprising a semiconductor (see [0044-0045]).
Regarding claim 5, modified Hayes a solar array as in claim 2 above, wherein durable layer comprises polyester and the base comprising glass (see claim 1 above).
Modified Hayes does not explicitly disclose the durable layer comprises Mylar such that the durable and base having similar coefficients of expansion.
However, Korman et al. teaches Mylar is a tradename for polyester manufactured by E.I. du Pont de Nemours & Co. (see [0036] of Korman et al.).
Therefore, it would have been obvious to one skilled in the art to have used Mylar for the polyester film of the durable layer comprising polyester disclosed Hayes, because Korman et al. teaches Mylar is the tradename for polyester manufactured by E.I du Pont de Nemours & Co., which is commercially available and ready for use. As such, modified Hayes uses the same materials for the durable layer and the base layer as claimed and disclosed, therefore the durable layer and the base layer will display the same characteristic/property of having the similar coefficients of expansion as claimed. See MPEP 2112.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over modified Hayes as applied to claim 1 above, and further in view of Heckeroth (US 2002/0129849).
Regarding claim 9, Hayes discloses a flexible solar array as claim 1 above.
Modified Hayes does not explicitly disclose combining the flexible array with a spool wherein the flexible solar array is rolled about a spindle of a spool.
Heckeroth discloses combining a flexible solar array with a spool (figs. 8-9), wherein the flexible solar array (10) is rolled about a spindle of a spool (see figs. 8-9) for dispensing the flexible solar array (or photovoltaic material) from the transport and storage spool (see figs. 7-9, [0037-0040]).
It would have been obvious to one skilled in the art at the time of the invention was made to have combined the flexible solar array of Hayes with a spool, wherein the flexible solar array is rolled about a spindle of a spool as taught Heckeroth, because Heckeroth discloses such combination would allow the flexible solar array to be stored, transported and dispensed from the transport and storage spool ([0037-0041]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hamakawa et al. (US Patent 4,773,942) in view of Korman et al. (US 2005/0139253), and further in view of Hayes (US 2008/0053516).
Regarding claims 1 and 8, Hamakawa et al. discloses a solar array comprising:
a power generating layer comprising a base layer (see insulating layer 12, fig. 5C) and a plurality of solar cells (13/14/15, fig. 5C) comprising a photovoltaic material (16) that is directly contacts with the base layer (12, see fig. 5C; col. 9 line 27 through col. 10, line 49); and
a layer of conductive material (see metal foil 11, fig. 5C; col. 9, lines 29-31) disposed on an external surface of the base layer (12, see fig. 5C);
wherein the layer of conductive material (11) extends fully each of the plurality of solar cells (13/14/15) and a space between adjacent solar cells (see fig. 5C);
wherein a homogenous portion of the base layer (12) extends fully each of the plurality of solar cells (13/14/15) and the space between adjacent solar cells (see fig. 5C); and
wherein the base layer comprises polymer such as polyimide (see col. 3, line 11 through col. 4, line 58).
Hamakawa et al. discloses it is advantageous for practical use to protect the photovoltaic device by covering the device from the second electrode side (or the top side of the solar array, see fig. 5C and col. 10, lines 44-49).
Hamakawa et al. does not explicitly disclose a durable layer and an ultraviolet radiation blocking layer, wherein the durable layer is disposed between the power generation layer and the ultraviolet radiation blocking layer, and the durable layer extend fully each of the plurality of solar cells and the space between adjacent solar cells.
Korman et al. teaches forming a durable layer (44, figs. 5 and 7) and an ultraviolet radiation blocking layer (46, figs. 5 and 7) comprising zinc oxide to capture electrons that are traveling in space that contact the solar array (or solar panel assemblies) and conducts electrons away from the solar cell to prevent electro-static discharge therein (see [0031]); wherein the durable layer (44) is disposed between the power generation layer (or solar cells 32/34/36/30/40/42) and the ultraviolet radiation blocking layer (46, see figs. 5 and 7), and the durable layer (44) extends fully each of the plurality of solar cells (32/34/36/30) and the space between adjacent solar cells (see figs. 5 and 7).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the solar array of Hamakawa et al. by incorporating a durable layer and an ultraviolet radiation blocking layer as taught by Korman et al.; because Hamakawa et al. explicitly discloses it is advantageous for practical use to protect the photovoltaic device by covering the device from the second electrode side (col. 10, lines 44-49), and Korman et al. discloses the durable layer (44) and the ultraviolet radiation blocking layer (46) would protect the solar cells on the second electrode side by covering the solar cells by conducting electrons away from solar cells to prevent electro-static discharge ([0031]) and having the solar cell to be maintained with an optimal temperature range ([0028]).
Hamakawa et al. teaches the base layer comprises a polymer, e.g. polyimide (see col. 3, line 11 through col. 4, line 58). Hamakawa et al. does not teach the base layer comprising glass.
Hayes discloses a base layer (or backsheet 35) is formed of glass, metal or polymeric films (see [0043]).
Since Hayes recognizes the equivalency of polymer and a glass to be used for the base layer (or the back sheet) in the field of solar cell (array), it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to replace the polymeric base layer of Hamakawa with the base layer comprising glass of Hayes as it is merely the selection of functionally equivalent material for the base layer (or substrate or back-sheet of solar cell array) recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Such modification would involve nothing more than use of known material for its intended use in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Modified Hamakawa et al. discloses all the structural limitations of the claimed solar cell array. Statement “for extraterrestrial deployment” in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art solar cell array. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115. Korman et al. teaches using solar cell array for extraterrestrial deployment, or in an outer space environment or a non-earth environment (see title, [0001-0004]).
Response to Arguments
Applicant's arguments filed 8/19/2025 have been fully considered but they are not persuasive.
Declaration of Jud Yamane under 37 CFR 1.132:
Mr. Yamane provides no factual supported objective evidence, but only opinions that one skilled in the art would understand that a conductor in the solar cell is to conduct electricity to a load and does not have to be deposited between the photovoltaic material and the (dielectric) base layer of glass, and a person of ordinary skill in the art would understand that such conductors may be coupled to the solar cell proximate an edge surface or the boundary surface thereof, and one of ordinary skill in the art would understand sputtered photovoltaic material would be in full or at least in partial contact with the base layer.
The examiner replies that there is no description of the conductors coupled to the solar cell proximate an edge surface or the boundary surface in the originally filed disclosure. A solar cell requires conductors or electrodes for collecting charges, e.g. holes and electrons, generated from the photovoltaic material. A typical solar cell, or a majority of solar cells known in the art, has an electrode at the bottom surface of the photovoltaic material for collecting a type of charge. Unless a special solar cell, or a non-typical solar cell, that is designed to have the electrode being arranged at the edge surface or some boundary surface to collect less charge to have less efficiency described in the originally filed disclosure. Such special solar cell is no where to be described nor mentioned in the originally filed disclosure. Such design is possible but not described in the originally filed disclosure, and not inherent in the art since it is a non-typical design.
Sputtered photovoltaic material is understood the as the photovoltaic material is deposited by sputtering process. Applicant does not define sputtered photovoltaic material as the photovoltaic material directly contacts the base layer. There is no description in the originally filed disclosure that would convey to one skilled in the relevant art that the inventor or a joint inventor had a possession of the photovoltaic material directly contacts the base layer, e.g. glass.
One skilled in the art would not understand the subject matter that is not described in the originally filed disclosure to be supported or described in the originally filed disclosure.
One skilled in the art would find and understand that the subject matter that is not described in the originally filed disclosure is not supported by the originally filed disclosure.
Applicant’s arguments:
Applicant construes the recitation “the photovoltaic material is applied to the base layer” in claim 1 to be “the photovoltaic material is brought into contact with by being spread or put on to the glass base layer”, because “apply” is defined as “to layer or spread on” by Meriam Webster Dictionary, and as “to bring into contact: spread or put on” by Webster’s New Basic Dictionary, Houghton Mifflin Company, 2007. Applicant provides a link to Meriam Webster Dictionary, and no copy of the definition by Webster’s New Basic Dictionary, Houghton Mifflin Company, 2007.
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As defined by Merriam-webster dictionary, the verb “apply” does not mean “directly contacts” and does not have equivalent meaning (or synonyms) to “directly contacts”. Applicant also does not define “apply” to be “directly contacts”.
Applicant then concludes cited references do not teach to bring the photovoltaic into contact with the base layer. The examiner replies that Applicant does not claim the photovoltaic material to be in contact with the base layer, and “apply” in English does not mean or equivalent to “to be in contact”.
Applicant points to the declaration of Jud Yamane for the support of the photovoltaic material directly contacts the base layer. However, the declaration of Jud Yamane is not the originally filed disclosure, and sputtered photovoltaic material is not understood in the art as the photovoltaic material directly contacts the base, but understood as the photovoltaic material is deposited by sputtering process.
Conclusion
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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