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 .
Response to Amendment
The amendment to claims filed on 11/26/2025 is acknowledged. Claims 1-2, 5-6, 11-13, 15-20 are amended. Currently, claims 1-20 are pending in the application.
Previous 112 rejection is withdrawn in view of the above amendment.
Previous prior art rejection is withdrawn in view of the above amendment.
Claims 1-20 are rejected under a new ground of rejection below.
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 11-20 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.
Claim 11 recites the limitation "the width of," in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites “the upper flange supporting at least two solar panels secured against, and arranged relative to each other transversely across the width of, the upper flange of the rail”. It is unclear what “secured against”, e.g. the upper flange and the two solar cell panels or the two solar panels. It is also unclear what are being “arranged relative to each other transversely across the width of,”, e.g. the upper flange and two solar panels or two solar panels. The claim language is required to be changed.
Claims 12-20 are rejected on the same ground as claim 11.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 depends on claim 11 and recites “the rail has a length and a width transverse the length, and the rail support more than one solar panel across its length” in lines 1-2, while claim 11 recites “the upper flange support at least two solar panels” in lines 6-7. A rail inherently has a length and a width transverse the length. “More than one solar panels” and “at least two solar panels” are different wordings but describing the same limitation. As such, claim 13 recites the same limitation recited in claim 11, and fail to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 11-15 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP ‘231 (JP 4637231, see machine translation).
Regarding claim 11, JP ‘231 discloses an apparatus (figs. 1-5, 9-10, 26A-D, and 27) comprising:
a plurality of spaced apart standoffs (65, fig. 26A-D) each having a top end and a foot member at a lower end (see figs. 26A-D); and
a rail (11 or 12) interconnecting the top ends of supported by at least two standoffs (65, see figs. 26, also see figs. 1-3);
wherein the rail comprises an upper flange (11a or 12a) and a lower flange (11b or 12b) connected by a web (11c or 12c, see figs. 2-3), the upper flange (11a or 12a) supporting at least two solar panels (2, see figs. 1-3, 4c, 5d, 9-10, 26D and 27).
JP ‘231 discloses all the structural limitations of the claimed apparatus in claim 11. The reference is deemed to be anticipatory.
Regarding claim 12, JP ‘231 discloses an apparatus as in claim 11 above, and teaches the upper flange (11a or 12a) and the lower flange (11b or 12b) extend extending in opposite directions from a web (11c or 12c, see figs. 1-3, 4c, and 5c, 9-10)
Regarding claim 13, JP ‘231 discloses an apparatus as in claim 11 above, and teaches the rail has a length and a width transverse to the length, and the rail (11 or 12) supports more than one solar panel (2) across its length (see fig. 1, also see fig. 27).
Regarding claim 14, JP ‘231 discloses an apparatus as in claim 11 above, and teaches the rail (11 or 12) has a cross-section that is generally Z- shaped (see figs. 1-3, 4c, 5c, 9-10 and 26A-D).
Regarding claim 15, JP ‘231 discloses an apparatus as in claim 11 above, and teaches the upper flange (11a or 12a) extends from the web (11c or 12c) at an interior angle different than that of the lower flange (11b or 12b, see figs. 1-3, 4c, 5c, 9-10 and 26A-D).
Regarding claims 19-20, JP ‘231 discloses an apparatus as in claim 11 above, and teaches at least 50% or at least 75% of the space between the standoffs (65) is unobstructed (see figs. 26A-D).
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.
Claim(s) 1-5, 9-15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP’977 (JP 5213977B2, see machine translation) in view of JP ‘231 (JP 4637231B2, see machine translation).
Regarding claims 1 and 11-12, JP ‘977 discloses an apparatus (figs. 1, 3, 5) comprising:
a plurality of spaced apart, elongate standoffs (see support columns 11, fig. 1), each having a top end and a foot member at a lower end (see fig. 1); and
a first rail or a rail (12, figs. 1, 3 and 5) connected to the top end of a standoff (11, see figs. 1, 3 and 5);
wherein the first rail/rail (12) comprising a beam having an upper flange (12b, fig. 3) supporting the at least one solar panel (16, fig. 1) and a lower flange (12c, fig. 3), the upper flange (12b) and the lower flange (12c) extending in opposite directions from a web (12a) that connects the upper flange (12b) to the lower flange (12c, see fig. 3);
where each elongate standoff (11) is connected to the first rail/rail (12) at a side surface of the web (see figs. 1 and 3).
JP ‘977 shows one elongate standoff (or support column 11) on each side of the apparatus (see fig. 1). JP ‘977 does not show a plurality of standoffs (11) on each side of the apparatus such that the first rail/rail interconnects at least two standoffs (11).
JP ‘231 shows using a plurality of standoffs (or anchors 65) on each side of the apparatus such that the rail (11 or 12) interconnects at least two standoffs (65, see figs. 26A-D).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the apparatus of JP ‘977 by using a plurality of elongate standoffs (or support column 11) on each side of the apparatus such that the first rail/rail interconnects at least two standoffs as taught by JP ‘231; because JP ‘231 discloses such arrangement would firmly supports the solar cell module (see [0013] of the translation). Such modification would involve nothing more than a mere duplication of parts, and mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claims 2, 4 and 14, modified JP ‘977 discloses an apparatus as in claims 1 and 11 above, wherein JP ‘977 discloses the first rail is a generally Z-shaped (see fig. 3), or the same shape being claimed in claims 4 and 14. As such, the Z-shaped rail of JP ‘977 is fully capable for facilitate splicing another said first rail to the first rail along longitudinally overlapping end sections of the first rail and the another said first rail as claimed. In addition, JP ‘231 discloses a generally Z-shaped rail is capable facilitate splicing another rail to the rail along longitudinally overlapping end sections of the rails (see figs. 26A-D of JP ‘231).
Regarding claims 3 and 13, modified JP ‘977 discloses an apparatus as in claims 1 and 11 above, wherein JP ‘977 the first rail (12) has a length and a width transverse to the length, and the first rail supports more than one solar panel (16) across its length (see fig. 1). JP ‘231 also teaches the same (see figs. 1-3, 26 and 27).
Regarding claims 5 and 15, modified JP ‘977 discloses an apparatus as in claims 1 and 11 above, wherein JP ‘977 discloses arranging the solar panels (16) and the first rails (12, fig. 1 and 5) at an angle (see [0043] of the translation).
JP ‘977 does not disclose the upper flange extends from the web at an interior angle different than that of the lower flange.
JP ‘231 discloses a first rail/rail (11 or 12) having the upper flange (11a or 12a) extends from the web (11c or 12c) at an interior angle different from that of the lower flange (11b or 12b, see figs. 3, 7-10, 25, 26C and 27).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the apparatus of JP ‘977 by using a first rail/rail having the upper flange extends from the web at an interior angle different from that of the lower flange to enable the solar panels being arranged at an angle as taught by JP ‘231; because JP ‘977 teaches arranging the solar panels at an angle and JP ‘231 teaches such first rail/rail allow the solar cell module being mounted firmly with small number of parts, requiring less work time and labor even when installing a large number of solar cells, and allowing for easy arrangement and installation of a large number of solar cell panels (see [0013] of the translation of JP ‘231).
Regarding claims 9-10 and 19-20, modified JP ‘977 discloses an apparatus as in claims 1 and 11 above, wherein JP ‘977 shows there is no obstruction between the standoffs (11, see fig. 1 of JP ‘977). JP ‘231 also teaches there is no obstruction between the standoffs (65, see figs. 26A-D). As such, modified JP ‘977 teaches at least 50% of the space between standoffs is unobstructed as claimed in claim 9, or at least 75% of the space between standoffs is unobstructed as claimed in claim 10.
Claim(s) 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘231 or modified JP’977 (JP 5213977B2, see machine translation) as applied to claims 5 and 15 above, and further in view of Sade et al. (US 2008/0087275).
Regarding claims 6 and 16, JP ‘231 disclose an apparatus as in claim 15 above or modified JP ‘977 discloses an apparatus as in claims 5 and 15 above, wherein JP ‘231 discloses the upper flange extends from the web at an interior angle different than that of the lower flange (see claims 5 and 15 above).
Modified JP ‘977 does not disclose the upper flange extends from the web at an interior angle greater than 90 degrees angle is less than 150-degrees.
Sade et al. teaches a Z-shaped rail having an upper flange (or 24, figs. 1-3) extending from the web (18) at an interior angle greater than 90 degrees and less than 150-degrees to allow and support the solar panel (100) to be arranged at an angle (see fig. 1).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the Z-shaped rail of modified JP ‘977 by rearranging the upper flange extending from the web at an anterior angle greater than 90 degrees and less than 150 degrees to allow and support the solar panels to be arranged at an angle as taught by Sade et al.. It has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
Claim(s) 7-8 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘231 or modified JP’977 (JP 5213977B2, see machine translation) as applied to claims 1 and 11 above, and further in view of Conger (US 2010/0089433).
Regarding claims 7-8 and 17-18, JP ‘231 discloses an apparatus as in claim 11 above or modified JP ‘977 discloses an apparatus as in claims 1 and 11 above.
JP ‘231 does not disclose each of the elongate standoffs has a height of at least six inches as claimed in claim 17 or at least twelve inches as claimed in claim 18.
Modified JP ‘977 does not disclose each of the elongate standoffs has a height of at least six inches as claimed in claims 7 and 17 or at least twelve inches as claimed in claims 8 and 18.
Conger discloses the height of the column supporting the solar panel to be 8-15 feet for the purpose of being located in area that may be not suitable for another construction purpose or may be used to fill in unusable spaced within a commercial or industrial area for less safety concern compared to overhead mounted solar panels and resulting in significant cost saving (see [0204]). It is noted that 8-15 feet is right within the claimed ranges of at least six inches and at least twelve inches as claimed in claims 7-8 and 17-18.
It would have been obvious to one skilled in the art before the time of the invention was made to modify the apparatus of JP ‘231 or modified JP ‘977 by using the standoffs (or anchor 65 of JP ‘231 or support columns 11 of JP ‘977) having a height of 8-15 feet for the purpose of being located in area that may not be suitable for other construction purposes or may be used to fill in unusable spaced within a commercial or industrial area for less safety concern and resulting in significant cost saving as taught by Conger.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 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.
Applicant argues Belikoff does not teach the claimed invention as amended.
However, Applicant’s arguments are moot in view of the new ground of rejection. See the rejection above.
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 THANH-TRUC TRINH whose telephone number is (571)272-6594. The examiner can normally be reached 9:00am - 6:00pm.
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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 5712721307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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