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 Objections
Claim 22 is objected to because of the following informalities: claim 22 recites “wherein the transmissive thin film solar panel is separated from a thin film roll and before the mechanical coupling to the solar panel,” however, there appears to be a typographical error in the recitation with regard to the insertion of the word “and.” Appropriate correction is required.
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.
Claim 22 is 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. Specifically, while the as-filed specification does describe each thin film 255 can be separated or cut from the thin film roll 310 in paragraph [0034], the as-filed specification does not describe the transmissive thin film solar panel is separated from a thin film roll and before the mechanical coupling to the solar panel, as recited in claim 22.
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.
Claims 1-8, 10, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Shibasaki et al. (US 2018/0083151) in view of Fleischer et al. (WO 2020065060 – see attached machine translation) and further in view of Baskett et al. (US 3,957,537).
Regarding claim 1, Shibasaki discloses a system comprising: a transmissive thin
film solar panel ([0029]; first solar panel 10; it is noted that the claim does not specify the thickness of the film required, therefore, the disclosed layer satisfies the limitation “thin” because the term is relative) comprising a first material that absorbs light within a first band gap ([0058]) and transmits a remaining portion of the light ([0029]), the first material comprising a cadmium alloy ([0058]), the transmissive thin film solar panel being electrically connected to an intermediate electrical device ([0032]; converter), the transmissive thin film solar panel converting the light within the first band gap to a first electricity ([0032]), and the transmissive thin film solar panel providing the first electricity to the intermediate electrical device ([0032]; converter); a solar panel comprising a second material that absorbs the remaining portion of the light transmitted by the transmissive thin film solar panel ([0029]), the solar panel comprising crystalline silicon ([0030]) and being electrically distinct from the transmissive thin film solar panel ([0032]), the solar panel converting the remaining portion of the light to a second electricity ([0032]).
Shibasaki does not explicitly disclose a mechanical coupling between the solar panel and the transmissive thin film solar panel.
Fleischer discloses a system comprising first and second PV subsystems ([0077],[0082]; 110 and 120 in Fig. 2) and a mechanical coupling between the PV subsystems ([0091];129 in Fig. 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to fasten the thin film and solar panel of Shibasaki in the manner disclosed by Fleischer, because the use of a transparent adhesive to bond two PV subsystems together amounts to the use of a known configuration in the art, and one of ordinary skill would have a reasonable expectation of success when bonding the solar panel and thin film of Shibasaki with a transparent adhesive based on the teaching of Fleischer.
While modified Shibasaki does disclose the mechanical coupling between the solar panel and the transmissive thin film solar panel implemented by an adhesive film (Fleischer - [0091];129 in Fig. 2); modified Shibasaki does not explicitly disclose the adhesive film forming a grid of adhesive material respective to non-photosensitive space between semiconductors of the solar panel.
Baskett discloses modules comprising photocells and further discloses two members adhesively bonded together by means of a transparent or opaque hot melt adhesive which does not cover the light-sensitive surface to any substantial extent (C4/L18-22).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the adhesive film of modified Shibasaki in the form of a grid of adhesive material respective to non-photosensitive space between semiconductors of the solar panel, because as taught by Baskett, the choice of using a transparent or opaque hot melt adhesive which does not cover the light-sensitive surface amounts to the choice from among two known configurations in the art for adhesively bonding members of a system comprising solar modules, and one skilled in the art would have a reasonable expectation of success when using an opaque hot melt adhesive which does not cover the light-sensitive surface of modified Shibasaki based on the teaching of Baskett.
It is noted that with regard to the limitation requiring “a grid,” Shibasaki discloses the solar panel is comprised of a grid between cells (Fig. 11).
Regarding claim 2, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the intermediate electrical device converts the first electricity generated by the transmissive thin film solar panel to a current and voltage combinable with the second electricity generated by the solar panel (Shibasaki – [0032]).
Regarding claim 3, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the transmissive thin film solar panel and the solar panel are directly coupled (Shibasaki – 129 in Fig. 2). It is noted that with regard to the limitation “to avoid a housing structure,” the limitation is directed to the manner in which the device is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 4, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the transmissive thin film solar panel comprises cadmium telluride (Shibasaki – [0055]).
Regarding claim 5, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the transmissive thin film solar panel comprises a front layer (Shibasaki – 14; [0054]), an absorbing layer (Shibasaki – 15; [0054]), and a back layer (Shibasaki – 17; [0069]).
Regarding claim 6, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the front layer comprises a transmissive conducting film that allows incident light to the system to pass through to the absorbing layer (Shibasaki – [0052]).
Regarding claim 7, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the absorbing layer comprises a photoactive layer that converts the light within the first band gap to the first electricity (Shibasaki - [0032],[0055]), and the photoactive layer comprises the cadmium alloy (Shibasaki - [0055]).
Regarding claim 8, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the back layer comprises an electrode that completes a junction that enables generation of the first electricity by the absorbing layer (Shibasaki – 17; [0069]).
Regarding claim 10, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the adhesive material (Fleischer – [0091]) is further provided on an edge portion of the solar panel (Fleischer – 129 in relation to edges of 110 and 120 in Fig. 2).
It is noted that the limitation “is further provided” is directed to the method in which the product is made, and limitations directed to the method in which a product is made are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
Regarding claim 21, modified Shibasaki discloses all the claim limitations as set forth above. Modified Shibasaki further discloses the mechanical coupling comprises a direct physical coupling (Fleischer - [0091];129 in Fig. 2).
With regard to the limitation “to avoid additional housing or frame structure,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 22, modified Shibasaki discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the transmissive thin film solar panel is separated from a thin film roll and before the mechanical coupling to the solar panel,” the limitation is directed to the method in which the product is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shibasaki et al. (US 2018/0083151) in view of Fleischer et al. (WO 2020065060 – see attached machine translation) further in view of Baskett et al. (US 3,957,537) as applied to claim 1 above, and further in view of Khouri et al. (US 2013/0160824).
Regarding claim 9, modified Shibasaki discloses all the claim limitations as set
forth above.
While modified Shibasaki does disclose the mechanical coupling is implemented by the adhesive material (Fleischer – 129 in Fig. 2; [0091] discloses a transparent adhesive); modified Shibasaki does not explicitly disclose the mechanical coupling is implemented by one or more fasteners and the adhesive material.
Khouri discloses a system comprising a solar panel and further discloses the use of mechanical fasteners such as edge holders or adhesives or both to fasten a solar module to a support surface ([0070]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include mechanical fasteners, as disclosed by Khouri, in addition to the adhesive material of modified Shibasaki to achieve the mechanical coupling, because as evidenced by Khouri, the use of both mechanical fasteners and adhesives to fasten a solar module to a support surface amounts to the use of known components in the art for their intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when using both mechanical fasteners and adhesive material in modified Shibasaki based on the teaching of Khouri.
Response to Arguments
Applicant’s arguments with respect to claims 1-10 and 21-22 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.
It is noted that the claim amendment overcomes the 112(b) rejection set forth in
the previous office action.
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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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 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.
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.
/TAMIR AYAD/Primary Examiner, Art Unit 1726
Prosecution Insights