DETAILED ACTION
This is the first office action for 18/584,683, filed 2/22/2024, which is a continuation of PCT/JP2022/017271, filed 4/7/2022, which claims priority to Japanese application PCT/JP2021/030842 8/23/2021, after the request for continued examination filed 1/30/2026.
Claims 1-10 are pending, and are considered herein.
In light of the claim amendments, the rejections of record are withdrawn, and new grounds of rejection are presented herein.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/30/2026 has been entered.
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
U.S. Patent 5,571,338: This reference teaches a photovoltaic mounting structure comprising a deformable clip 260 (Fig. 19).
U.S. Patent 6,254,397: This reference teaches a flexible photovoltaic mounting structure (Fig. 2).
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 1-10 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 1 recites “the base portion” in line 22. This limitation is indefinite, because Claim 1 includes references to “a base portion” of both a pressing member (line 13) and a support member (line 21). Therefore, it is unclear to which “base portion” is referred in line 22.
Claim 1 recites “the base portion” in line 25. This limitation is indefinite, because Claim 1 includes references to “a base portion” of both a pressing member (line 13) and a support member (line 21). Therefore, it is unclear to which “base portion” is referred in line 25.
Claim 1 recites “the base portion” in line 26. This limitation is indefinite, because Claim 1 includes references to “a base portion” of both a pressing member (line 13) and a support member (line 21). Therefore, it is unclear to which “base portion” is referred in line 26.
Claims 2-8 are indefinite, because of their dependence on Claim 1.
Claim 4 recites “the base portion.” This limitation is indefinite, because Claim 1 includes references to “a base portion” of both a pressing member (line 13) and a support member (line 21). Therefore, it is unclear to which “base portion” is referred in Claim 6.
Claim 5 is indefinite, because of its dependence on Claim 4.
Claim 6 recites “the base portion.” This limitation is indefinite, because Claim 1 includes references to “a base portion” of both a pressing member (line 13) and a support member (line 21). Therefore, it is unclear to which “base portion” is referred in Claim 6.
Claim 7 recites “the base portion.” This limitation is indefinite, because Claim 1 includes references to “a base portion” of both a pressing member (line 13) and a support member (line 21). Therefore, it is unclear to which “base portion” is referred in Claim 7.
Claim 9 recites “the base portion” in line 21. This limitation is indefinite, because Claim 9 includes references to “a base portion” of both a pressing member and a support member. Therefore, it is unclear to which “base portion” is referred in line 21.
Claim 9 recites “the base portion” in line 24. This limitation is indefinite, because Claim 9 includes references to “a base portion” of both a pressing member and a support member. Therefore, it is unclear to which “base portion” is referred in line 24.
Claim 9 recites “the base portion” in line 25. This limitation is indefinite, because Claim 9 includes references to “a base portion” of both a pressing member and a support member. Therefore, it is unclear to which “base portion” is referred in line 25.
Claim 10 is indefinite, because of its dependence on Claim 9.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hartelius, et al. (U.S. Patent Application Publication 2011/0068244 A1).
In reference to Claim 1, it is noted that Claim 1 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Hartelius teaches a fastening tool 250 for mounting plate-shaped photovoltaic modules 130 on a mounting target object (Figs. 10-12, paragraphs [0047]-[0053], with details given in Fig. 1).
The fastening tool comprises a support member 1020 including a first support portion 1088 to support part of an edge portion of a lower surface of a photovoltaic module amongst two adjacent photovoltaic modules.
The support member 1020 comprises a second support portion 1089 to support part of an edge portion of a lower surface of the other photovoltaic module amongst the two adjacent photovoltaic modules.
Fig. 1 teaches that the support member 1020 (which is part of clip structure 250) is arranged on the mounting target object.
The fastening tool comprises a pressing member 1000 including a base portion and a regulating portion (indicated in the inset below).
The inset below teaches that the base portion is fastened to the mounting target object by a fastening member 1050 via the support member 1020 (paragraph [0047]).
The inset below teaches that the regulating portion is provided on the base portion and configured to regulate movement of the photovoltaic module in a direction away from the mounting target object (i.e. to hold the modules to the rails).
The inset below teaches that a support member base portion of the support member 1020 is arranged between the mounting target object (i.e. the rails shown in Fig. 1) and the base portion of the pressing member (indicated in the inset below).
Hartelius teaches that a deformation portion 1212/1215 formed as part of the support member base portion and provided between the base portion (i.e. the base portion of the pressing member) and the mounting target object in a first posture of being tilted with respect to the support member base portion. Specifically, Fig. 12B teaches that this “deformation portion” 1212/1215 is tilted with respect to the bottom portion of item 1020, and comprises a portion that is disposed between a portion of the base portion of the pressing member and the mounting target object (as shown in the inset below).
Hartelius teaches that the support member 1020 and the pressing member 1000 are separate pieces that are connected to each other and to the underlying rail with bolt 1050 (paragraph [0048]).
Therefore, this disclosure teaches the structural limitations required by the limitations “the deformation portion being configured to be pressed and deformed by the base portion to a second posture upon fastening of the base portion to the mounting target object by the fastening member in a fastened state, wherein in the fastened state, the pressing member is fastened to the mounting target object by the fastening member, and in another state in which the pressing member is not fastened to the mounting target object by the fastening member, a clearance between the photovoltaic module and the regulating portion of the pressing member is larger than that when the fastening member is in the fastened state.”
This disclosure further teaches the structural limitations required by the recitation that “the deformation portion 1212/1215 is further configured to bring the regulating portion to a posture for regulating the movement of the photovoltaic module in the direction away from the mounting target object.”
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It is noted that all of the “configured to” limitations in the claim are considered intended use limitations of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
In reference to Claim 2, the inset under the rejection of Claim 1 above teaches that the deformation portion 1212/1215 is angled with respect to the regulating portion.
This disclosure teaches the structural limitations required by the limitations “wherein the deformation portion is configured to, prior to the fastening of the base portion to the mounting target object by the fastening member, tilt the regulating portion with respect to the posture of the regulating portion regulating the movement of the photovoltaic module and to be tilted in a direction different from a tilting direction of the regulating portion.”
It is noted that all of the “configured to” limitations in the claim are considered intended use limitations of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus.
In reference to Claim 4, it is noted that Claim 4 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Hartelius teaches that the fastening tool 250 further comprises an interposed portion arranged between the mounting target object 220 and the base portion (i.e. the base portion of pressing member 1000). This “interposed portion” corresponds to the opening in item 1020 through which the fastening member 1050 extends, as shown in the inset under the rejection of Claim 1 above.
Hartelius teaches that the deformation portion is provided between the base portion (i.e. the base portion of the pressing member 1000) and the interposed portion (i.e. the opening in item 1020 through which the fastening member 1050 extends, as shown in the inset under the rejection of Claim 1 above).
The inset below teaches that the regulating portion includes a first regulating portion 1504 and a second regulating portion, the first regulating portion being provided on the base portion (i.e. the base portion of the pressing member 1000) and extending upward from the base portion to face a side surface of the photovoltaic module (i.e. a top side surface of the photovoltaic module).
The inset below teaches that the second regulating portion is provided on the first regulating portion to face a main surface of the photovoltaic module on a side opposite to the mounting target object.
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In reference to Claim 5, it is noted that Claim 5 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
The inset below teaches that the tool further comprises a support portion provided in the interposed portion and configured to support a main surface of the photovoltaic module on the mounting target object side (i.e. structurally capable of supporting a bottom surface of the photovoltaic module).
Fig. 1 teaches that the first regulating portion (which is part of tool 250) is arranged between two adjacent photovoltaic modules (i.e. between portions of adjacent photovoltaic modules).
The inset below teaches that the second regulating portion includes a third regulating portion facing one of the two photovoltaic modules and a fourth regulating portion facing the other of the two photovoltaic modules. It is noted that both of the third and fourth regulating portions have components that face/are angled toward the first and second photovoltaic modules, because both of the third and fourth regulating portions face downwards toward the underlying photovoltaic modules.
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In reference to Claim 6, it is noted that Claim 6 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
The inset below teaches that the fastening member 1050 includes a shaft portion, and the deformation portion is provided between the base portion (i.e. the support member base portion) and the shaft portion.
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In reference to Claim 7, Hartelius teaches that the fastening member of the devices of his invention are bolts and nuts used to secure the clip structures of his invention to the rails 220 of his invention (paragraph [0031]).
This disclosure teaches the limitations of Claim 7, wherein the fastening member 1050 is a bolt and nut screwed to the bolt with the mounting target object 220 and the base portion (indicated in the inset under the rejection of Claim 1 above) interposed.
In reference to Claim 8, Fig. 1 teaches a fastening device comprising: the fastening tool 250 according to claim 1; and a base member 220 fastened to an installation position of the photovoltaic module (paragraph [0034]).
In reference to Claim 9, it is noted that Claim 1 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Hartelius teaches a fastening tool 250 for mounting plate-shaped photovoltaic modules 130 on a mounting target object (Figs. 10-12, paragraphs [0047]-[0053], with details given in Fig. 1).
The fastening tool 250 comprises a support member 1020 including a first support portion 1088 to support part of an edge portion of a lower surface of a photovoltaic module amongst two adjacent photovoltaic modules.
The support member 1020 comprises a second support portion 1089 to support part of an edge portion of a lower surface of the other photovoltaic module amongst the two adjacent photovoltaic modules.
Fig. 1 teaches that the support member 1020 (which is part of clip structure 250) is arranged on the mounting target object.
The fastening tool comprises a pressing member 1000 including a base portion and a regulating portion (indicated in the inset below).
The inset below teaches that the base portion is fastened to the mounting target object by a fastening member 1050 via the support member 1020 (paragraph [0047]).
The inset below teaches that the regulating portion is provided on the base portion and configured to regulate movement of the photovoltaic module in a direction away from the mounting target object (i.e. to hold the modules to the rails 102).
The inset below teaches that a support member base portion of the support member 1020 is arranged between the mounting target object (i.e. the rails shown in Fig. 1) and the base portion of the pressing member (indicated in the inset below).
Hartelius teaches that a deformation portion 1212/1215 formed as part of the support member base portion and provided between the base portion (i.e. the base portion of the pressing member) and the mounting target object in a first posture of being tilted with respect to the support member base portion. Specifically, Fig. 12B teaches that this “deformation portion” 1212/1215 is tilted with respect to the bottom portion of item 1020, and comprises a portion that is disposed between a portion of the base portion of the pressing member and the mounting target object (as shown in the inset below).
Hartelius teaches that the support member 1020 and the pressing member 1000 are separate pieces that are connected to each other and to the underlying rail with bolt 1050 (paragraph [0048]).
Therefore, this disclosure teaches the structural limitations required by the limitations “the deformation portion being configured to be pressed and deformed by the base portion to a second posture upon fastening of the base portion to the mounting target object by the fastening member in a fastened state, wherein in the fastened state, the pressing member is fastened to the mounting target object by the fastening member, and in another state in which the pressing member is not fastened to the mounting target object by the fastening member, a clearance between the photovoltaic module and the regulating portion of the pressing member is larger than that when the fastening member is in the fastened state.”
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Claims 3 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hartelius, et al. (U.S. Patent Application Publication 2011/0068244 A1), as evidenced by Nishino, et al. (U.S. Patent Application Publication 2008/0006516 A1).
In reference to Claims 3 and 10, Hartelius teaches that the clip inserts of his invention (of which item 1020 is one) are made of silicone rubber (paragraph [0039]).
Evidentiary reference Nishino teaches that rubber parts function as biasing members, based on their elastic restoring force (paragraph [0008]).
This disclosure teaches that the rubber deformation portion 1215/1212 is a biasing portion having a restorative force.
Response to Arguments
Applicant’s arguments with respect to the claim rejections have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made under 35 U.S.C. 112(b) and 102.
Conclusion
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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