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 .
Claim Objections
Claim 13 is objected to because of the following informalities: there appears to be a typographical error in line 10 of claim 13 with regard to the limitation “a reflective sheet positioned to reflected a portion of the first part … “. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 6-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2014/0332073) in view of Haghanifar et al. ("Flexible nanograss with highest combination of transparency and haze for optoelectronic plastic substrates").
Regarding claim 1, Chen discloses a photovoltaic module for transforming an
incident light into electrical energy (abstract), the photovoltaic module comprising plural solar cells configured to transform a first part of the incident light into the electrical energy (12 in Fig. 2); a first sheet that is transparent to incident light (14 in Fig. 2); a second sheet that is transparent to the incident light (11 in Fig. 2), an encapsulating material distributed between the first and second sheets that encapsulates the plural solar cells (Chen – 13, 15 in Fig. 2), wherein the plurality solar cells are opaque to the incident light ([0022] L10-11 discloses an opaque region A formed by sheltering of the solar chip) and are sandwiched between the first sheet and the second sheet (12 and 13 in relation to 11 and 14).
While Chen does disclose the encapsulating material has a high transparency regarding the incident light and also a high scattering of the incident light ([0023] lines 12-14 disclose the light transmittable region (B) has a transmittance of 20% to 99% and a haze of 10 to 99), Chen does not explicitly disclose each of the first sheet and the second sheet has a high transparency regarding the incident light of more than 85% and high scattering of the incident light of more than 40%.
Haghanifar discloses a photovoltaic module for transforming an incident light into electrical energy (abstract L2 discloses solar cells) and further discloses optoelectronic applications such as solar cells and light emitting-diodes would benefit from substrates with both high transparency and high haze, which increase how much light scatters into or out of the underlying photoactive layers (abstract L2-4). Haghanifar further discloses while bare PET has a transparency and haze of 88.4% and 1.1% at 550 nm, respectively, the 9 micron height nanograss samples exhibit a transparency and haze of 92.4% and 89.4%, respectively (page 2, left column, second full paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the transparent cover plate (14) and the transparent substrate (11) of Chen with the PET substrates of Haghanifar, because as taught by Haghanifar, while bare PET has a transparency and haze of 88.4% and 1.1% at 550 nm, respectively, the 9 micron height nanograss samples exhibit a transparency and haze of 92.4% and 89.4%, respectively (page 2, left column, second full paragraph).
Modified Chen discloses the high transparency is defined as allowing more than 85% light transmission of the incident light, and wherein the high scattering is defined as scattering more than 40% of a transmitted light (Haghanifar - page 2, left column, second full paragraph).
Modified Chen discloses a second part of the incident light, which passes through the photovoltaic module, has a uniform light intensity distribution (Chen – [0022]).
It is noted that with regard to the limitation “a second part of the incident light, which passes through the photovoltaic module, has a uniform light intensity distribution due to the high scattering resulting from a cumulative scattering of the incident light through each of the first sheet, the encapsulating material, and the second sheet,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 6, modified Chen discloses all the claim limitations as set forth above. Modified Chen further discloses the plural solar cells are made of silicon (Chen – [0023]).
Regarding claim 7, modified Chen discloses all the claim limitations as set forth above. Modified Chen further discloses the encapsulating material is distributed between the first and second sheets (Chen – 13, 15 in Fig. 2).
With regard to the limitation “to hold the first and second sheets together,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 9, modified Chen discloses all the claim limitations as set forth above. Modified Chen further discloses the encapsulating material fully extends between the first and second sheets so that the first sheet does not directly touch the second sheet (Chen – 13, 15 in relation to 11 and 14 in Fig. 2).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Van Roosmalen et al. (US 2017/0148942) in view of Haghanifar et al. ("Flexible nanograss with highest combination of transparency and haze for optoelectronic plastic substrates").
Regarding claim 13, Van Roosmalen discloses a photovoltaic module (Fig. 8) comprising: plural solar cells (2 in Fig. 8; [0074]); a first sheet that is transparent to the incident light (4 in Fig. 8; [0082]; [0083]); a second sheet that is transparent to the incident light (6 in Fig. 8; [0020],[0082]; [0083]); an encapsulating material distributed between the first and second sheets (10 in Fig. 8; [0074]); and a reflective sheet positioned to reflect a portion of the first part of the incident light back to the plural solar cells while allowing a second part of the incident light to pass through gaps between the plural solar cells (22 in Fig. 8; [0074]), wherein the plural solar cells are opaque to the incident light ([0071] discloses silicon based solar cells) and the plural solar cells and the encapsulating material are sandwiched between the first sheet and the second sheet (2 and 10 in relation to 4 and 6 in Fig. 8).
While Van Roosmalen does disclose light scattering particles on a back sheet, a back encapsulant, a rear glass, a front glass, and/or a front encapsulant ([0094]), Van Roosmalen does not explicitly disclose each of the first and second sheets has a high transparency regarding the incident light of more than 85% and high scattering of the incident light of more than 40%.
Haghanifar discloses a photovoltaic module for transforming an incident light into electrical energy (abstract L2 discloses solar cells) and further discloses optoelectronic applications such as solar cells and light emitting-diodes would benefit from substrates with both high transparency and high haze, which increase how much light scatters into or out of the underlying photoactive layers (abstract L2-4). Haghanifar further discloses while bare PET has a transparency and haze of 88.4% and 1.1% at 550 nm, respectively, the 9 micron height nanograss samples exhibit a transparency and haze of 92.4% and 89.4%, respectively (page 2, left column, second full paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the front plate and the rear plate of Van Roosmalen with the PET substrates of Haghanifar, because as taught by Haghanifar, while bare PET has a transparency and haze of 88.4% and 1.1% at 550 nm, respectively, the 9 micron height nanograss samples exhibit a transparency and haze of 92.4% and 89.4%, respectively (page 2, left column, second full paragraph).
Modified Van Roosmalen discloses the high transparency is defined as allowing more than 85% light transmission of the incident light, and wherein the high scattering is defined as scattering more than 40% of a transmitted light (Haghanifar - page 2, left column, second full paragraph).
With regard to the limitations “for transforming an incident light into electrical energy,” “configured to transform a first part of the incident light into the electrical energy,” “to hold the first and second sheets together,” and “to reflect a portion of the first part of the incident light back to the plural solar cells while allowing a second part of the incident light to pass through gaps between the plural solar cells,” the limitations are directed to the manner in which the apparatus is intended to be used, and it is noted that a limitation directed to the manner in which an apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding the limitation “wherein the second part of the incident light, which passes through the photovoltaic module, has a uniform light intensity distribution resulting from a cumulative scattering of the incident light through each of the first sheet, the encapsulating material, and the second sheet,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a limitation directed to the manner in which an apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Additionally, it is noted that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
Applicant's arguments filed 05/07/2026 have been fully considered but they are not persuasive. Specifically, Applicant argues that Chen does not disclose or suggest that the other layers, specifically the transparent substrate or the transparent cover plate possess high scattering.
In response to Applicant’s argument, modified Chen is relied upon to teach the
claim limitations as set forth in the office action, not Chen in isolation. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that while Haghanifar provides a single layer with these properties, it does not disclose a multi-layered photovoltaic module where all components, including the encapsulant, share these properties.
In response to Applicant’s argument, modified Chen is relied upon to teach the
claim limitations as set forth in the office action, not Haghanifar in isolation. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that the Office’s proposed combination of Chen and Haghanifar does not result in the claimed invention because it lacks the cumulative optical synergy required by the claims.
In response to Applicant’s argument, as set forth in the office action, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Applicant has not provided evidence showing that the structure claimed differs from the structure of the cited prior art in a manner which would allow the structure claimed to perform the claimed function while the structure of the prior art would be incapable of performing the claimed function.
Applicant argues that neither Chen nor Haghanifar suggests a multi-stage scattering architecture, and fail to disclose the structural means necessary to achieve the specific uniformity described in the present application.
In response to Applicant’s argument, as set forth above, modified Chem satisfies the limitations claimed. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Applicant has not provided evidence showing that the structure claimed differs from the structure of the cited prior art in a manner which would allow the structure claimed to perform the claimed function while the structure of the prior art would be incapable of performing the claimed function.
Applicant argues that the combination of Chen and Haghanifar teaches away from the claimed invention, and that a person of ordinary skill in the art would recognize that reaching a cumulative scattering coefficient of >40% in each of these three distinct layers would be expected to degrade the total transparency of the assembly.
In response to Applicant’s argument, Applicant has not provided evidence that the combination of the teachings of Chen and Haghanifar, as set forth in the office action, would result in a module too dim for Chen’s primary purpose of providing sufficient sunlight for plant growth.
Applicant’s remaining arguments are directed to rejections which are not included in this office action and are therefore moot.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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