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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/19/2025 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-5, 8, 23, 26-30, 35, 41, and 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flanigan (US 2018/0115275 A1) in view of Matsumoto (JP2006-177077, Machine Translation) in view of Albert (US 2012/0085392 A1) in view of DeJarnette (US 2015/0047285 A1) in view of Grieco (US 2013/0014455 A1) in view of Benensky (US 2019/0093344 A1).
Regarding claims 1, 4, 27, 28, 41 and 42, Flanigan discloses a system, comprising:
a roof deck (Abstract, installed on roof);
a plurality of roofing modules installed on the roof deck (any one of 204, see Figs. 2, 204, Fig. 3, 304, Fig. 4, 400, 402, 406, Fig. 8 -11 804 [0062]),
wherein the plurality of roofing modules comprises at least a first roofing module
and a second roofing module (see any of the Figs noted above, any two of the modules could be the first and second roofing module);
a plurality of photovoltaic modules (see any of the Figs noted above, any two of the modules could be the first and second photovoltaic module) above installed on the roof deck wherein the plurality of photovoltaic modules comprises at least a first photovoltaic module and a second photovoltaic module, wherein each of the first and second photovoltaic modules comprises:
at least one solar cell (224), an encapsulant (226), wherein the encapsulant encapsulates the at least one solar cell, and a backsheet (228 and/or 204 230 and/or 204), wherein a surface of the backsheet is juxtaposed with the encapsulant.
Flanigan discloses that the roof tile can be made of variety of materials but does not disclose the specific structure of the roof tile structure ([0056]).
Matsumoto discloses a roofing module (See Fig. 1) comprising a first layer (2), wherein the first layer comprises a polypropylene (see Description of Fig. 1, pg. 2, and also description of synthetic resin used in A and B, 2nd to last paragraph pg. 2, which includes polypropylene), and a second layer (1), wherein the second layer comprises: a first material (synthetic resin), and a second material, wherein the second material comprises fiberglass (see last paragraph, pg. 2) ; and a third layer (2), wherein the second layer is between the first layer and the third layer, and wherein the third layer comprises polypropylene (see Description of Fig. 1, pg. 2, and also description of synthetic resin used in A and B, 2nd to last paragraph pg. 2, which includes polypropylene).
It would have been obvious to one of ordinary skill in the art at the time of the filing to modify the roof module of Flanigan by using the roofing module as disclosed by Matsumoto because Matsumoto discloses an effective structure for a roof module.
Modified Flanigan discloses that the first and third layer which comprises polypropylene with filler materials however, modified Flanigan does not disclose that the first and third layer comprise thermoplastic polyolefins.
Matsumoto discloses the resin of the first and third layer can comprise a thermoplastic polypropylene (see last paragraph pg. 2 and first paragraph pg. 3).
Albert discloses a roof tile wherein the resin which forms the matrix layer includes a thermoplastic polyolefin where in the polyolefin includes a polypropylene [0026].
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the resin of modified Flanigan to be a thermoplastic polyolefin wherein the polyolefin includes polypropylene as disclosed by Albert because Matsumoto discloses that a variety of resins can be used including a thermoplastic polypropylene resin and Albert discloses thermoplastic polyolefin is an appropriate synthetic resin that can comprise a filler in a roof tile.
Modified Flanigan will include the first layer of Matsumoto being patterned since Flanigan discloses a patterned structure on the first layer.
However, modified Flanigan does not disclose wherein each of the first and second roofing modules is configured to flex to conform to a surface contour of the roof deck or that the first layer is between 20 to 80 mils.
In addition, Matsumoto discloses that the total thickness of the roof tiles can be adjusted to be between 3mm to 6mm based on the preferred strength and rigidity (pg. 3 fourth paragraph).
DeJarnette discloses that shingles should include flexible characteristics with the ability to bend and conform to the shape of the object beneath them ([0036]).
It would have been obvious to one of ordinary skill in the art at the time of the filing to modify the thickness of the resin composite roofing tile including the thickness of the first layer of modified Flanigan to be within the claimed range and to have the desired characteristic of being able to conform to a contour of a roof because Matsumoto and DeJarnette discloses it is possible to do so and doing so would result in the shingles forming a more effective weatherproofing structure.
Flanigan discloses that the roof tile can be made of a variety of materials but does not disclose the specific roof tile structure ([0056]) and in addition discloses a head lap portion (note that roof tiles overlap one another, see Fig. 2J and 2K and Fig. 5).
However, Flanigan does not disclose the roofing module includes that the first layer is a polymer layer with a reveal portion that is textured and a third (back) layer wherein the third/back layer includes a head lap portion extending from a first end to a second opposite end, a first side lap at the first end, and a second side lap at the second end, wherein the reveal portion of the first layer is between the first side lap and the second side lap of the second layer and wherein the backsheet of photovoltaic module includes a side lap at the second end of the photovoltaic module.
Grieco discloses a roofing module (see Fig. 7, 24) that can be coupled to a photovoltaic assembly which includes a first layer is a polymer layer (24, is an attachment panel and materials which can form layers of the attachment panel include polymers [0013][0033][0036]-[0036], 20 is first layer) and a back layer (26 is another layer--note that 20 or 26 can include more layers, see last sentence [0036], include glass reinforced polymers [0033]) wherein the back layer a first side lap at the first end (see Fig. 7, 28, left side), and a second side lap at the second end (see Fig. 7, 28, right side) of the back layer, wherein a reveal portion (center portion where PV module is placed, see Fig. 5) of the first layer is between the first side lap and the second side lap (these are on the back layer which has portions 28, which are side laps) of the back layer and wherein the backsheet of photovoltaic module (includes roofing module) includes a side lap at the second end of the photovoltaic module (see Fig. 7, 28, right side).
It would have been obvious to one of ordinary skill in the art at the time of the filing to modify the roof module of Flanigan by using the roofing module as disclosed by Grieco including the back layer/third layer having head lap and side lap portions because Grieco discloses an effective structure for a roof module.
In addition, Grieco discloses that the roofing module includes a head lap portion (head lap portion shown of attachment panel, see Figs. 4 and 14 which shows head lap portions which are overlapped with bottom of adjacent tile) which is how the tiles are attached to the roof through nails ([0038], see Fig. 4, reinforced nail zone 34 and that multiple nails are used [0065]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the third layer of roof tile which is included in the roofing modules and the photovoltaic modules of modified Flanigan to include a head lap portion in the third layer by having a head lap reinforced zone structure as disclosed by Grieco because Flanigan discloses that the roof tiles can be attached through overlapping covers and Grieco discloses that overlapping covers of tiles are attached through fasteners to a roof.
The backsheet of the photovoltaic module of Flanigan will also include side laps and head lap segments since the backmost layer/third layer of the roof tile has the segments due to modification with Greico.
Modified Flanigan will include the first layer reveal being textured since Flanigan discloses a pattern structure to mimic silicon elements on the first layer ([0046]) and the textured portion (reveal portion) will be between side lap portions portion (see modification above with Grieco).
However, modified Flanigan does not disclose the wherein a first photovoltaic module of the plurality of photovoltaic modules is vertically adjacent to a second photovoltaic module of the plurality of photovoltaic modules, wherein a first roofing module of the plurality of roofing modules is vertically adjacent to a second roofing module of the plurality of roofing modules, wherein the second roofing module overlays the head lap portion of the first roofing module, wherein the first roofing module is horizontally adjacent to the first photovoltaic module in a first row, wherein the first side lap of the first roofing module overlays the side lap of the first photovoltaic module, and
wherein the second roofing module is horizontally adjacent to the second photovoltaic module in a second row, and wherein the first side lap of the second roofing module overlays the side lap of the second photovoltaic module.
Benensky discloses a roofing tile and a shingling method wherein the tiles are shingled such that side lap portions (portions to the right of lines depicted in Fig. 3 of 116) and head lap portions (118) overlie one another (see Fig. 9).
Flanigan discloses that different arrangements between PV modules and roofing modules can be used ([0082]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the arrangement and method of attachment between neighboring modules in a row of modified Flanigan to have the arrangement as claimed above and furthermore to have the attachment method between modules as disclosed by Benensky because it is an effective method to attach modules to a roof and furthermore because Flanigan discloses different arrangements are feasible and should be optimized based on aesthetics, energy production needs, and cost.
Regarding claim 3, modified Flanigan discloses all of the claim limitations as set forth above.
In addition, Matsumoto discloses that the first material comprises a synthetic resin (see description of layer 1 in Fig. 1 on pg. 2).
Regarding claims 5, 30, and 35, modified Flanigan discloses all of the claim limitations as set forth above.
In addition, Flanigan disclose that the first layer can include a patterning to mimic a photovoltaic module ([0046] a pattern will have a texture).
Regarding claim 8, modified Flanigan discloses all of the claim limitations as set forth above.
Matsumoto does not explicitly disclose whether the fiber glass in the polymer matrix is isotropic or anisotropic.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the FRP of modified Flanigan to use a FRP with an anisotropic fiber glass dispersion because it would have been choosing out of limited listing of dispersion possibilities for fiber glass within a polymer matrix, which would have been a choice from a finite number of identified, fiber glass matrix materials with a reasonable expectation of success.
Regarding claim 23, modified Flanigan discloses all of the claim limitations as set forth above.
In addition, Matsumoto discloses wherein at least two of the first layer, the second layer, and the third layer are laminated to one another (Abstract).
Regarding claims 26, and 29, modified Flanigan discloses all of the claim limitations as set forth above.
In addition, Flanigan discloses that the modules of different types and the same type can overlap (see Fig. 5) and that the side edges of different modules are adjacent.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flanigan (US 2018/0115275 A1) in view of Matsumoto (JP2006-177077, Machine Translation) in view of Albert (US 2012/0085392 A1) in view of DeJarnette (US 2015/0047285 A1) in view of Grieco (US 2013/0014455 A1) in view of Benensky (US 2019/0093344 A1) as applied to claims 1, 3-5, 8, 23, 26-30, 35, 41, and 42 above and in further view of King (US 6,220,329 B1).
Regarding claim 22, modified Flanigan discloses all of the claim limitations as set forth above.
Matsumoto does disclose that the roofing module is formed through a lamination process but does not disclose the details.
King discloses first (36,38), second (60,62) and third layer (42,44) which form a roofing shingle and are formed through a lamination method where adhesive layers (50,78) are provided at the interface of the first and second layer and the second and third layer (see Fig. 2, C6/L34-50 and C7/L10-20).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the method of laminating the layers of the roofing module of Flanigan by having an adhesive at the interface of the layers as disclosed by King because King discloses this is an effective lamination method for attaching roofing shingles containing three layers.
Claim(s) 36 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flanigan (US 2018/0115275 A1) in view of Matsumoto (JP2006-177077, Machine Translation) in view of Albert (US 2012/0085392 A1) in view of DeJarnette (US 2015/0047285 A1) in view of Grieco (US 2013/0014455 A1) in view of Benensky (US 2019/0093344 A1) as applied to claims 1, 3-5, 8, 23, 26-30, 35, 41, and 42 above and in further view of Stancel (US 2008/0302030 A1).
Regarding claims 36 and 37, modified Flanigan discloses all of the claim limitations as set forth above.
However, Flanigan does not disclose that the texture structure can include dimples or channels.
Stancel discloses that textured surfaces on a roof tile which can include solar cells can have dimples or corrugated patterns (channels) which increases turbulent flow of wind on the surface and thus increase heat dissipation ([0062]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the texture structure of modified Flanigan to further include dimples or corrugated patterns as disclosed by Stancel because it increases turbulent flow of wind on the surface and thus increase heat dissipation.
Claim(s) 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flanigan (US 2018/0115275 A1) in view of Matsumoto (JP2006-177077, Machine Translation) in view of Albert (US 2012/0085392 A1) in view of DeJarnette (US 2015/0047285 A1) in view of Grieco (US 2013/0014455 A1) in view of Benensky (US 2019/0093344 A1) as applied to claims 1, 3-5, 8, 23, 26-30, 35, 41, and 42 above and in further view of Liu (US 2021/0044250 A1).
Regarding claims 38-40, modified Flanigan discloses all of the claim limitations as set forth above.
In addition, Flanigan disclose that the roof tile can include a patterning to mimic a photovoltaic module ([0046), however, does not disclose an upper glossy surface paint or a black color paint.
Liu discloses that mimicking a solar cell can be achieved with paint layers ([0071]) or that textures can have glossy levels ([0107]).
It would have been obvious to one of ordinary skill in the art at the time of the invention by modifying the reveal portion of modified Flanigan by applying a paint layer as disclosed by Liu because applying a paint layer can mimic appearance of a solar cell and furthermore Flanigan discloses that mimicking a photovoltaic cell is a desired aesthetic.
However, modified Flanigan does not disclose that the finish is glossy or that color is black.
Liu discloses that the paint layer or coatings can be any color or finish to achieve desired aesthetics ([0091][0071][0107]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the color of the paint or glossiness of coating of modified Flanigan so that it was the claimed color or the claimed finish because as disclosed by Liu this can be chosen based on preference.
Matters relating to ornamentation or aesthetic design choice which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see 2144.04 I).
Response to Arguments
Applicant argues that Flanigan either alone, or in combination with Liu, Grieco, and/or Benensky does not disclose, teach, or suggest at least the following limitations wherein the first and second roofing module include a second layer wherein the second layer includes ... a first side lap at the first end, and a second side lap at the second end, wherein the reveal portion of the first layer is between the first side lap and the second side lap of the second layer, and also does not discloses wherein the backsheet includes a side lap at the second end of the photovoltaic module.
It is noted that the side lap portions of the first and second roofing module are included in the third layer according to claim 1.
Applicant argues that Greico in Fig. 7 does not disclose first and second side laps at opposite ends of a roofing module and instead discloses mounting members (28 [0038]).
The definition of lap is “the amount by which one object projects beyond another”. Therefore because the ends of 26 (26C and 26D, see Fig. 7) project beyond the boundaries of 20 which is the attachment panel ([0035] see element 14, Fig. 4) these can be considered side lap portions given the broadest reasonable interpretation of the definition of laps.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that Flanigan either alone, or in combination with Liu, Grieco, and/or Benensky does not disclose, teach, or suggest at least the following limitations wherein the first side lap of the first roofing module overlays the side lap of the first photovoltaic module," and "wherein the first side lap of the second roofing module overlays the side lap of the second photovoltaic module”.
Applicant further argues with respect to Grieco that overlaying the mounting member 28 of the first attachment panel 24 over the mounting member 28 of the second attachment member 24 is not practical, because doing so would alter the position and angle of the first attachment panel relative to the roof deck, and result in not enabling the upwardly facing surfaces of the array of the solar shingles to be even in the same plane.
Benensky discloses a roofing tile and a shingling method wherein the tiles are shingled such that side lap portions (portions to the right of lines depicted in Fig. 3 of 116) and head lap portions (118) overlie one another (see Fig. 9) and are used as mounting members to mount the tiles on the roof and also to adjacent tiles and that the tiles are even in the same plane.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T Barton can be reached at 517-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/Primary Examiner, Art Unit 1726