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 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 8-10 and 19-20 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.
Claim 8 recites “the first layer of the backsheet is in direct contact with the roofing substrate”. However, claim 1 from which claim 8 depends upon already recites a thermally conductive film is directly in contact with the roofing substrate, such that it is unclear how the first layer of the backsheet can also be in direct contact with the roofing substrate.
Looking at Figure 2 of the instant specification, one can see the first layer that is recited in claim 1 to be in direct contact with a surface of the second encapsulant layer would be layer 222, such that layer 222 is not in direct contact with the roofing substrate and cannot be in directed contact with the roofing substrate. Additionally, Figure 3 shows layer 322 that is in direct contact with a surface of the second encapsulant layer also cannot be in direct contact with the roofing substrate, and neither does layer 422 in Figure 4. Further, nowhere does the instant specification recite this feature.
Claim 9 recites “the first layer further comprises an encapsulant”. However, nowhere does the instant specification state the first layer in direct contact with a surface of the second encapsulant layer comprising 50 % to 99.5% by weight of a polymer and 0.5% to 50% by weight of a graphene component to further comprise an encapsulant.
Similar deficiency is found in claims 19 and 20.
Therefore, the claims fail to comply with the written description requirement.
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.
Claim(s) 1-3, 5-7, 11-13, 15-17, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (WO 2013/125877; see English machine translation) in view of Yoo et al. (KR 2013-0007248; see English machine translation) in view of Li et al. (CN 110518083; see English machine translation) in view of Deyine (WO 2020/249412).
Regarding claim 1, Kang discloses a photovoltaic module (see Figure 7) comprising:
a frontsheet (transparent member 210);
an encapsulated solar cell (encapsulation layer 220),
wherein the encapsulated solar cell comprises:
a first encapsulant layer (221);
at least one solar cell (C);
a second encapsulant layer (222),
wherein the at least one solar cell is located between the first encapsulant layer and the second encapsulant layer (see Figure 7);
wherein the second encapsulant layer comprises a polymer (the encapsulation can be EVA; page 7); and
a backsheet (100);
wherein the backsheet is below the encapsulated solar cell (see Figure 7);
wherein the backsheet comprises a first layer (surface layer 20/polyethylene based film 22), the first layer comprising:
80% to 98% by weight of a polymer based on a total weight of one of the first layer of the backsheet (it is disclosed the polyethylene based film layer 22 as shown in Figure 5 includes a white inorganic material in 2 to 20 parts by weight (page 5), which means the polymer is 80 to 98 % by weight of the polyethylene based film layer 22);
wherein the polymer comprises a thermoplastic polyolefin (polyethylene is a known thermoplastic polyolefin);
wherein the first layer directly contacts a surface of the second encapsulant layer (the backsheet directly contacts the second encapsulant layer; see Figures 5 and 7); and
a thermally conductive film (heat dissipating fluorine coating layer 30),
wherein the thermally conductive film comprises a graphite (it is disclosed the carbon material can be graphite; page 7).
Kang does not expressly disclose the first layer comprises 0.5 % to 50% by weight of a graphene component based on the total weight of the first layer of the backsheet, wherein the graphene component does not comprise a graphite.
Yoo discloses a heat conductive back sheet comprising 95%-99.9% by weight of a thermoplastic polyolefin polymer ([0035]) and 0.1-5% by weight of a graphene component ([0036]), wherein the back sheet is in direct contact with a surface of the second encapsulant layer (see Figure 1).
Li discloses a heat conductive back sheet comprising a surface layer and a substrate layer, wherein the surface layer comprises a polyolefin and 0 wt% to 3 wt% of an inorganic pigment that can be white or black pigment, where the black pigment can be graphene, such that the incorporation of a carbon material provides UV stabilization and thermal conductivity and providing degradation by protecting the material from radiation of a certain wavelength (page 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated 0-5 wt% graphene in the first layer of Kang, as taught by Yoo and Li above, to improve thermal conductivity of the layer as graphene is more conductive than metal powder and mixes will with resin materials (Yoo [0034]) as well as preventing degradation of the first layer material (page 3 of Li).
Kang does not expressly disclose 50% to 99.5% by weight of the polymer based on a total weight of the first layer of the backsheet and 0.5% to 50% by weight of a graphene component based on the total weight of the first layer of the backsheet.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Modified Kang does not expressly disclose a roofing system comprising: a roofing substrate; and a plurality of the photovoltaic modules installed on the roofing substrate.
Deyine discloses a roofing system (100) comprising: a roofing substrate (11); and a plurality of photovoltaic modules (1) installed on the roofing substrate (see Figure 6), wherein each of the photovoltaic modules comprises a backsheet (33) below an encapsulated solar cell (5) (see Figure 1), wherein the backsheet comprises a polymer and a graphene component, wherein the graphene component does not comprise a graphite (it is disclosed the backsheet can be made of polycarbonate with heat conducting particles such as graphene; page 11).
Modified Kang and Deyine are analogous arts because both are directed to encapsulated photovoltaic devices with a rear backsheet comprising graphene.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a plurality of the photovoltaic modules of modified Kang into a roofing system installed on a roofing substrate, as taught by Deyine above, as photovoltaic systems having solar panels installed on roofing of structures is well known in the art.
It is noted that the above modifications would expressly disclose the thermally conductive film directly contacts the roofing substrate, as set forth in Figure 7 of Kang.
Regarding claim 11, Kang discloses a photovoltaic module (see Figure 7) comprising:
a frontsheet (transparent member 210);
a backsheet (100);
an encapsulated solar cell (encapsulation layer 220) between the frontsheet and the backsheet (see Figure 7),
wherein the encapsulated solar cell comprises:
a first encapsulant layer (221);
at least one solar cell (C);
a second encapsulant layer (222),
wherein the at least one solar cell is located between the first encapsulant layer and the second encapsulant layer (see Figure 7);
wherein the second encapsulant layer comprises a polymer (the encapsulation can be EVA; page 7); and
wherein the backsheet comprises a first layer (surface layer 20/polyethylene based film 22), the first layer comprising:
80% to 98% by weight of a polymer based on a total weight of one of the first layer of the backsheet (it is disclosed the polyethylene based film layer 22 as shown in Figure 5 includes a white inorganic material in 2 to 20 parts by weight (page 5), which means the polymer is 80 to 98 % by weight of the polyethylene based film layer 22);
wherein the polymer comprises a thermoplastic polyolefin (polyethylene is a known thermoplastic polyolefin);
wherein the first layer directly contacts a surface of the second encapsulant layer (the backsheet directly contacts the second encapsulant layer; see Figures 5 and 7); and
a thermally conductive film (heat dissipating fluorine coating layer 30),
wherein the thermally conductive film comprises a graphite (it is disclosed the carbon material can be graphite; page 7),
wherein the backsheet is located between the encapsulated solar cell and the thermally conductive film (see Figure 7).
Kang does not expressly disclose the first layer comprises 0.5 % to 50% by weight of a graphene component based on the total weight of the first layer of the backsheet, wherein the graphene component does not comprise a graphite.
Yoo discloses a heat conductive back sheet comprising 95%-99.9% by weight of a thermoplastic polyolefin polymer ([0035]) and 0.1-5% by weight of a graphene component ([0036]), wherein the back sheet is in direct contact with a surface of the second encapsulant layer (see Figure 1).
Li discloses a heat conductive back sheet comprising a surface layer and a substrate layer, wherein the surface layer comprises a polyolefin and 0 wt% to 3 wt% of an inorganic pigment that can be white or black pigment, where the black pigment can be graphene, such that the incorporation of a carbon material provides UV stabilization and thermal conductivity and providing degradation by protecting the material from radiation of a certain wavelength (page 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated 0-5 wt% graphene in the first layer of Kang, as taught by Yoo and Li above, to improve thermal conductivity of the layer as graphene is more conductive than metal powder and mixes will with resin materials (Yoo [0034]) as well as preventing degradation of the first layer material (page 3 of Li).
Kang does not expressly disclose 50% to 99.5% by weight of the polymer based on a total weight of the first layer of the backsheet and 0.5% to 50% by weight of a graphene component based on the total weight of the first layer of the backsheet.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Modified Kang does not expressly disclose the thermally conductive film directly contacts a roofing substrate.
Deyine discloses a roofing system (100) comprising: a roofing substrate (11); and a plurality of photovoltaic modules (1) installed on the roofing substrate (see Figure 6), wherein each of the photovoltaic modules comprises a backsheet (33).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the photovoltaic module of modified Kang into a roofing system by installing the photovoltaic module on a roofing substrate, as taught by Deyine above, as photovoltaic systems having solar panels installed on roofing of structures is well known in the art.
It is noted that the above modifications would expressly disclose the thermally conductive film directly contacts the roofing substrate, as set forth in Figure 7 of Kang.
Regarding claims 2 and 12, modified Kang discloses all the claim limitations as set forth above.
Deyine further discloses the roofing substrate comprises at least one of a roof deck, an underlayment, or any combination thereof (as set forth above).
Regarding claims 3 and 13, modified Kang discloses all the claim limitations as set forth above.
Yoo further discloses the graphene component comprises at least one of graphene particles, graphene sheets, graphene flakes, or any combination thereof (graphene sheets; [0028]-[0030]).
As modified Kang is not limited to any specific examples of the graphene component and as a graphene component in the backsheet being graphene sheets was well known in the art before the effective filing date of the claimed invention, as disclosed by Yoo above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any suitable graphene material, including graphene sheets in the device of modified Kang. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
Regarding claims 5 and 15, modified Kang discloses all the claim limitations as set forth above.
Kang further discloses the graphene component in the thermally conductive film to have a median particle size of 0.1 nm to 200 μm (page 7), but the reference does not expressly disclose the graphene component having a median particle size of 1 μm to 300 μm.
As Kang is not limited to any specific examples of the graphene component median particle size and as a median particle size for graphene in a backsheet of between 0.1 nm to 200 microns was well known in the art before the effective filing date of the claimed invention, as disclosed by Kang above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any suitable size for the median particle size of the graphene component, including 0.1 nm to 200 microns in the device of modified Kang. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Regarding claims 6 and 16, modified Kang discloses all the claim limitations as set forth above, but the reference does not expressly disclose the first layer having a thermal conductivity of 0.3 W m-1 K-1 to 3 W m-1 K-1.
Regarding limitations directed to specific properties of the first layer recited in said claim, it is noted that once the first layer is disclosed to comprise the above-recited composition of the polymer and graphene component, as set forth above, and therefore is substantially the same as the backsheet as recited in the instant specification in paragraphs [39], [40], [51], [54] and [55], it will, inherently, display the recited properties. See MPEP 2112.01.
Regarding claims 7 and 17, modified Kang discloses all the claim limitations as set forth above, and further discloses the polyethylene film layer 22 of the backsheet having a thickness of 10 microns to 500 microns (page 6), but the reference does not expressly disclose the first layer of the backsheet having a thickness of 0.2 mm to 4 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Regarding claims 22 and 23, modified Kang discloses all the claim limitations as set forth above, and further discloses the thermoplastic polyolefin comprises at least one of a copolymer of propylene and ethylene, a blend of propylene and ethylene, a copolymer of ethylene alpha-olefin, a propylene homopolymer, an ethylene homopolymer, a propylene block copolymer, an ethylene block copolymer, a propylene elastomer, an ethylene elastomer, or any combination thereof (as set forth above).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5-7-13, 15-17, 19-20, 22, and 23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CHRISTINA CHERN whose telephone number is (408)918-7559. The examiner can normally be reached Monday-Friday, 9:30 AM-5:30 PM PT.
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/CHRISTINA CHERN/Primary Examiner, Art Unit 1722