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 .
Response to Amendment
The amendment filed August 5th, 2026 does not place the application in condition for allowance.
The previous 112(a) rejection of Claims 1-20 and 41-43 have been withdrawn due to Applicant’s amendment.
The rejections based over Balasubramanian et al. in view of Lin et al. or Kim et al. are withdrawn due to Applicant’s amendment.
New rejections follow.
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.
Claims 1-20, and 41-43 are 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.
Regarding Claim 1, Applicant recites, “a plurality of material portions”, and “wherein the material layer comprises a plurality of islands provided in a form of dots”. Applicant has not disclosed in the instant specification an embodiment where there are two separate types of material portions including a plurality of material portions and a plurality of islands provided in a form of dots. The broad disclosure discloses “a plurality of material portions”, while the narrow embodiment of this same disclosure is that the plurality of material portions are the plurality of islands in the form of dots. Applicant has drafted this claim as if they are two separate features yet there is no support for this in the instant specification. Accordingly, the claim 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. Appropriate action is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-20, and 41-43 are 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.
Regarding Claim 1, Applicant recites, “a plurality of material portions”, and “a plurality of islands provided in a form of dots”. Its unclear if these are referencing the same elements. Applicant’s attention is directed to MPEP 2173.03, “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971)”. Appropriate action 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.
Claims 1, 3-10, 13-19, and 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over Balasubramanian et al. (US 2017/0085216 A1) in view of Alameh et al. (WO 2019/200425 A1)
In view of Claim 1, as best understood by the Examiner, Balasubramanian et al. teaches a photovoltaic module (Figs. 2A & 12 - abstract), the module comprising: at least one solar cell having black or dark surface portions (Figure 12, #1208 & Paragraph 0003 – panels generally black); a material layer configured to provide for a selectable light-transmission gradient by structurally modulating transmission of light therethrough (Figure 1, #122 & Paragraph 0046-0047 – each region may be the same or different and have varying levels of opacity/transparency) the material layer is positioned over the black or dark surface portions of the at least one solar cell (Fig.12, #1203 & Paragraph 0082), the material layer having material portions with variable thickness, composition and/or coverage (Figure 8A-D, the “white” portions & Paragraph 0059) that are formed in a plurality of islands provided in a form of dots (Figs. 2B-E, #220 & Paragraph 0047) being lighter in colour or appearance than the black or dark surface portions of the at least one solar cell, the material portions having a transmissivity for visible light dependent on the composition and/or thickness of each material portion, the material layer being at least largely transmissive for light at areas between the material portions (Figure 1D, #122 & Paragraph 0063); and wherein the thickness, composition and/or lateral coverage of the material portions of the material layer are dependent on a required contract and/or a darkness, brightness or colour of features of the photovoltaic module (Figure 1D, #124 & Paragraph 0064-0070), and wherein the thickness and composition of the material portions vary across the module (Figure 8A-D & Paragraph 0059).
Balasubramanian et al. does not disclose a visible layer positioned over the material layer, wherein the visible layer comprises a continuous layer covering the plurality of material portions, wherein the visible layer includes a printed image formed within the visible layer without the use of black ink.
Alameh et al. discloses a visible layer (Fig. 2, #9) positioned over a material layer (Fig. 2, #5 - Page), wherein the visible layer comprises a continuous layer covering the plurality of material portions (Fig. 2, #9 covers #5 - Page 18, Lines 18-25), wherein the visible layer includes a printed image within the visible layer (Page 18, Lines 11-17). Alameh et al. discloses that this configuration of providing a visible layer over a material improves resolution and therefore visibility of an image while providing enhanced contrast to the image (Page 2, Lines 19-27) and that this configurations also allows a large portion of incident light to pass through gaps in the material layer (Page 19, Lines 11-20) Alameh discloses examples of inks used to create the printed image, its noted that most of these inks do not comprise the color black (Page 21, Lines 16-28), therefore the printed image formed within the visible layer can be formed without the use of black ink. Alameh et al. further discloses that darkness can be controlled by changing ink thickness (Page 19, Lines 1-10), therefore features of the printed image as visualized from outside of the photovoltaic module could appear black or dark. Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have a visible layer positioned over the material layer, wherein the visible layer comprises a continuous layer covering the plurality of material portions, wherein the visible layer includes a printed image formed within the visible layer without the use of black ink, even though features of the printed image as visualized from outside of the photovoltaic module appear black or dark for the advantages of improving resolution and therefore visibility of an image while providing enhanced contrast to the image while allowing a large portion of incident light to pass through gaps in the material layer.
In view of Claim 3, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that the dots can each have a local thickness dependent on contrast, and darkness/brightness of features of the visible layer where the dot is located on the photovoltaic module (Figure 8A-D & Paragraph 0033, 0059).
In view of Claim 4, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that at least some of the dots have a transmissivity for visible light (Paragraph 0059-0060).
In view of Claim 5, Balasubramanian et al. and Alameh et al. are are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. does disclose that the majority of the dots are largely invisible to the naked eye by being at least 95% transparent (Paragraph 0007), but does not disclose that the thickness of the dots is within the range of 0-5 microns.
Alameh discloses that the majority of dots have a thickness of 0.5-20 microns (Page 7, Lines 10-11). Alameh discloses that the instant invention solves problems in the prior art of printing thin layers of inks of different colors directly onto a dark solar panel typically yields dark images of very low contrast making this direct printing approach impractical (Page 2, Lines 1-3). Accordingly, it would have been obvious to adopt the printing configuration of Alameh in making the dots of Balasubramanian et al. photovoltaic module such that the majority of the dots have a thickness of 0.5-20 microns for the advantages of printing a higher contrast image over a dark solar panel.
In view of Claim 6, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that the dots have a composition dependent on required/predetermined contrast and/or darkness or brightness of features of the photovoltaic module (Paragraph 0018 & 059-0060).
In view of Claim 7, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 6. Balasubramanian et al. teaches that the dots have a transmissivity dependent on the compositive of the dots (Paragraph 0049 & 0076).
In view of Claim 8, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 6. Balasubramanian et al. teaches that the dots comprise a first ink that (Paragraph 0018) may be opaque or not transparent (Paragraph 0065) and the dots comprise a second ink that may be a varnish (Paragraph 0066).
In view of Claim 9, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 8. Balasubramanian et al. teaches that the dots can have a composition of 100% varnish have a local transmissivity that can vary from 0-50% (Paragraph 0060).
In view of Claim 10, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches the dots are formed using a digital printing process (Paragraph 0064).
In view of Claim 13, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches a diameter of the dots of the material layer and distance between the dots determines a coverage of the material layer selected based on contrast or darkness of brightness of the photovoltaic module (Paragraph 0053-0063).
In view of Claim 14, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that the dots have a diameter ranged from 20 microns, 40 microns, 60 microns, 80 microns (Paragraph 0052).
In view of Claim 15, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that the thickness and composition of the dots of the material layer and properties of the image of the visible layer are selected such that at least the majority or all areas of the visible layer and the material layer have a transmissivity for visible light greater than zero (Figure 8 - Paragraph 0033, 0049).
In view of Claim 16, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that the thickness of the dots may be reduced to at least half of their size (Paragraph 0059) and the dots can block transmission of visible light by more than 90% (Paragraph 0060).
In view of Claim 17, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches that the isolated regions may be made from 100% ink (Paragraph 0064).
In view of Claim 18, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 11. Balasubramanian et al. teaches the at least one solar cell is a cadmium telluride based solar cell (Paragraph 0085 – cadmium telluride).
In view of Claim 19, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. teaches the visible layer the first visible layer is positioned over a first major surface of the at least one solar cell (Figure 12, #1203), and a second visible layer that includes a colour, and wherein the second visible layer is positioned over a second major surface of the at least one solar cell and which is opposite the first major surface such that the first and second visible layers are visible at opposite sides of the at least one solar cell (Figure 12, #1210 & Paragraph 0082 – a protective back cover has a colour).
In view of Claim 41, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 14. Balasubramanian et al. discloses that at least one of the gaps between adjacent dots can have an extension approximately of 30 microns (Paragraph 0052-0053).
In view of Claim 42, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 16. Balasubramanian et al. teaches that the thickness of the dots may be reduced to 30% or less (Paragraph 0059 – when in a 5:1 ratio) and the dots can block transmission of visible light by more than 90% (Paragraph 0060).
In view of Claim 43, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 17. Balasubramanian et al. teaches that the isolated regions may be made from 100% ink (Paragraph 0064).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Balasubramanian et al. (US 2017/0085216 A1) in view of Alameh et al. (WO 2019/200425 A1) in view of Abel et al. (US 2013/0342858 A1),
In view of Claim 20, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Alameh et al. does not explicitly disclose that the printed image is printed using the colors cyan, magenta, and yellow only.
Abel et al. discloses that printed systems can include cyan, magenta, and yellow, and while black ink can be used, black and shades of gray can be simulated with combinations of cyan, magenta, and yellow, and thus black ink is not necessary, and CMY based printing is faster than CMYK printing (Paragraph 0001). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to print the printed image using CMY because its faster and black ink is not necessary.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Balasubramanian et al. (US 2017/0085216 A1) in view of Alameh et al. (WO 2019/200425 A1) in view of Lin et al. (US 2011/0114178 A1).
In view of Claim 20, Balasubramanian et al. and Alameh et al. are relied upon for the reasons given above in addressing Claim 1. Balasubramanian et al. does not explicitly disclose a layer of clear varnish or transparent ink is positioned over the material layer to substantially equalize height differences of the dots and substantially fill gaps between adjacent dots.
Lin et al. discloses a transparent varnish is positioned over a material layer to substantially equalize height differences of dots and substantially fill gaps between adjacent dots (Figure 1-2, #510 fills the gaps between dots of material layer #420 – Paragraph 0019) as well as being directed towards a photovoltaic module that exhibit a colorful picture or pattern (Paragraph 0008). Lin et al. teaches that this configuration may also prevent the photovoltaic member from oxidation or erosion (Paragraph 0028). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate a layer of transparent varnish positioned over a material layer to substantially equalize height differences of dots and substantially fill gaps between adjacent dots as disclosed by Lin et al. in Balasubramanian et al. material layer for the advantages of preventing the photovoltaic member from oxidation or erosion.
Response to Arguments
Applicant argues that Balasubramanian does not disclose that the underlying solar cell is dark or black. The Examiner respectfully points out to Applicant that Balasubramanian et al. discloses that since the earliest deployments of solar in the post WWII years, the visual appearance of solar panels has not changed significantly, with the overwhelming majority of the panels having a generally black or dark blue color (Paragraph 0003). Its respectfully pointed out to Applicant that the Examiner off the top of his head, could not tell you any other color that the base material of a silicon solar cell would be other than these two colors, be it monocrystalline or polycrystalline. Furthermore, Applicant even discloses what a monocrystalline solar panel looks like (its black, see Applicant’s remarks 8/5/2026 – Page 12, Monocrystalline Solar panel). Balasubramanian et al. discloses that the cells are explicitly monocrystalline (Paragraph 0105). Therefore, this argument is unpersuasive as the general color of a solar panel being black is generally known since WWII and Balasubramanian et al. explicitly discloses an example of using monocrystalline solar cells and as evidenced by Applicant’s arguments they would be black. Furthermore, the Examiner is taking official notice that even if the solar cells of Balasubramanian et al. were polycrystalline one of ordinary skill in the art would readily recognize and understand the advantages of using a monocrystalline solar for at least the efficiency gains alone.
Applicant’s arguments with respect to the claims have been considered but are moot because the arguments do not apply to the new grounds for rejection being used in the current rejection.
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 DANIEL P MALLEY JR. whose telephone number is (571)270-1638. The examiner can normally be reached Monday-Friday 8am-430pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T Barton can be reached at 571-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P MALLEY JR./Primary Examiner, Art Unit 1726
