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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I directed to claims 42-57 in the reply filed on 30 October 2025 is acknowledged. The traversal is on the grounds that the restricted inventions are not independent inventions and that examination of both claimed invention together would not present a serous burden on the U.S. Patent and Trademark Office. This is not found persuasive as applicant’s allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office rely on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 58-82 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group of inventions, there being no allowable generic or linking claim.
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.
Claim 46 is 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 46 recites “wherein the insulating substrate contains at least one kind of resins selected from the group consisting of a polyethylene terephthalate, a polyethylene naphthalate, a polybutylene terephthalate, a polyimide, a polyamide, a polycarbonate, and a modified polyphenylene ether” where in the above recitation “at least one kind of resins” renders the scope of the claim indefinite as the use of resins plural but with “at least one” makes it not clear if multiple resins are required or only one resin is required. For this reason, the scope of claim 46 cannot be determined and is rendered indefinite.
Claim Rejections - 35 USC § 102/103
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 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.
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 42-45, 51, and 54 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miyake et al (JP 2016178154A reference made English machine translation).
Regarding claim 42 Miyake discloses a solar cell module insulation film (paragraphs [0089]-[0091], Example 7 see: polyolefin resin film 4), the solar cell module insulation film comprising:
a sealing material layer (Fig. 2 see: polyolefin resin film 5/A layer), an insulating substrate (Fig. 2 see: polyolefin resin film 6/B layer), and a polyethylene-based resin layer (Fig. 2 see: polyolefin resin film 7/C layer wherein Example 7 the C layer is 85 parts by weight of L-LDPE, 3 parts by weight of LDPE), in this order, wherein
the polyethylene-based resin layer is a polyethylene film (Example 7 the C layer is 85 parts by weight of L-LDPE, 3 parts by weight of LDPE); and
a wetting tension of a surface of the polyethylene-based resin layer that is opposite side to the insulating substrate is 36 dyne/cm or more ([0090] see the C layer side of the film is corona discharge treated to provide a surface wetting tension of 40 mN/m (dyne/cm)).
In the alternative where it’s not clear the A layer polyolefin resin film 5 meets the functional limitation of the sealing material layer, Miyake further teaches the A layer side of the polyolefin resin film 4 can be extrusion laminated with a sealing material sheet 3 in forming a laminated sheet ([0055], [0028] see Fig. 1). As such, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film of Miyake to further be extrusion laminated with a sealing material sheet at the A layer side to form an integrated encapsulating and back surface protective sheet.
Additionally, the claim 42 recitation "disposed between a solar cell and a steel sheet in a solar cell module" is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention's limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. V. Hewlett- Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Furthermore, the recitation "disposed between a solar cell and a steel sheet in a solar cell module" is directed to an intended use of the claimed solar cell module insulation film. 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.
The solar cell module insulation film of Miyake is considered fully capable of being disposed between a solar cell and a steel sheet in a solar cell module.
Regarding claim 43 Miyake discloses a solar cell module insulation film (paragraphs [0089]-[0091], Example 7 see: polyolefin resin film 4), the solar cell module insulation film comprising:
a sealing material layer (Fig. 2 see: polyolefin resin film 5/A layer), an insulating substrate (Fig. 2 see: polyolefin resin film 6/B layer), and a polyethylene-based resin layer (Fig. 2 see: polyolefin resin film 7/C layer wherein Example 7 the C layer is 85 parts by weight of L-LDPE, 3 parts by weight of LDPE), in this order, wherein
a thickness of the polyethylene-based resin layer is 10 µm or more and 300 μm or less ([0090] see: layer C is 10% of the 150 μm film thickness (15 μm)); and
a wetting tension of a surface of the polyethylene-based resin layer that is opposite side to the insulating substrate is 36 dyne/cm or more ([0090] see the C layer side of the film is corona discharge treated to provide a surface wetting tension of 40 mN/m (dyne/cm)).
In the alternative where it’s not clear the A layer polyolefin resin film 5 meets the functional limitation of the sealing material layer, Miyake further teaches the A layer side of the polyolefin resin film 4 can be extrusion laminated with a sealing material sheet 3 in forming a laminated sheet ([0055], [0028] see Fig. 1). As such, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film of Miyake to further be extrusion laminated with a sealing material sheet at the A layer side to form an integrated encapsulating and back surface protective sheet.
Additionally, the claim 43 recitation "disposed between a solar cell and a steel sheet in a solar cell module" is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention's limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. V. Hewlett- Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Furthermore, the recitation "disposed between a solar cell and a steel sheet in a solar cell module" is directed to an intended use of the claimed solar cell module insulation film. 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.
The solar cell module insulation film of Miyake is considered fully capable of being disposed between a solar cell and a steel sheet in a solar cell module.
Regarding claim 44 Miyake discloses the solar cell module insulation film according to claim 42, wherein a thickness of the insulating substrate is 25 μm or more and 350 μm or less ([0090] see: layer B is 70% of the 150 μm film thickness (105 μm)).
Regarding claim 45 Miyake discloses the solar cell module insulation film according to claim 42, and the claim 42 recitation “wherein, when a surface of the solar cell module insulation film that is the polyethylene-based resin layer side is thermally compressed to a steel sheet, an adhesive force of the polyethylene-based resin layer with respect to the steel sheet is 10 N/15 mm or more” is directed to an intended use of the claimed solar cell module insulation film. 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.
The solar cell module insulation film of Miyake is considered fully capable of providing the recited adhesive force of the polyethylene-based resin layer with respect to the steel sheet of 10 N/15 mm or more when a surface of the solar cell module insulation film that is the polyethylene-based resin layer side is thermally compressed to a steel sheet.
Regarding claim 51 Miyake discloses the solar cell module insulation film according to claim 42, wherein a thickness of the sealing material layer is 50 μm or more and 400 μm or less ([0046], [0083] see: encapsulant sheet is preferably 200 μm or more with 300 μm used in an example).
Regarding claim 54 Miyake discloses the solar cell module insulation film according to claim 42, wherein the insulating substrate contains a coloring agent ([0037], [0089] see: B layer includes titanium oxide as a whitening agent).
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.
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 46, 53, and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al (JP 2016178154A reference made English machine translation) as applied to claims 42-45, 51, and 54 above, and further in view of Kawashima (US 2008/0053512).
Regarding claim 46 Miyake discloses the solar cell module insulation film according to claim 42, but does not explicitly disclose wherein the insulating substrate contains at least one kind of resins selected from the group consisting of a polyethylene terephthalate, a polyethylene naphthalate, a polybutylene terephthalate, a polyimide, a polyamide, a polycarbonate, and a modified polyphenylene ether.
Kawashima discloses a solar cell module comprising a backsheet including an insulating substrate contains at least one kind of resins selected from the group consisting of a polyethylene terephthalate, a polyethylene naphthalate, a polybutylene terephthalate, a polyimide, a polyamide, a polycarbonate, and a modified polyphenylene ether (Kawashima, [0035], [0044]-[0046], [0048] Fig. 1 see: barrier film 3 including a substrate film 6 formed using a synthetic resin including polyethylene terephthalate, polyethylene naphthalate, polycarbonate, polyamide-based resins, polyimide-based resins, polyethylene-based resins, polypropylene-based resins and the aforementioned synthetic resin can be used alone, or two or more can be used as a mixture). Kawashima teaches these materials provide great heat resistance, strength, weather resistance, durability, and gas barrier properties against water vapor (Kawashima, [0045]).
Kawashima and Miyake are combinable as they are both concerned with the field of solar cell modules.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film backsheet of Miyake in view of Kawashima such that the insulating substrate of Miyake contains at least one kind of resins selected from the group consisting of a polyethylene terephthalate, a polyethylene naphthalate, a polybutylene terephthalate, a polyimide, a polyamide, a polycarbonate, and a modified polyphenylene ether as in Kawashima (Kawashima, [0035], [0044]-[0046], [0048] Fig. 1 see: barrier film 3 including a substrate film 6 formed using a synthetic resin including polyethylene terephthalate, polyethylene naphthalate, polycarbonate, polyamide-based resins, polyimide-based resins, polyethylene-based resins, polypropylene-based resins and the aforementioned synthetic resin can be used alone, or two or more can be used as a mixture) as Kawashima teaches these materials provide great heat resistance, strength, weather resistance, durability, and gas barrier properties against water vapor (Kawashima, [0045]).
Regarding claim 53 Miyake discloses the solar cell module insulation film according to claim 42, but does not explicitly disclose further comprising a second adhesive layer between the insulating substrate and the sealing material layer.
Kawashima discloses a solar cell module comprising a backsheet including a second adhesive layer between the insulating substrate and the sealing material layer (Kawashima, [0035], [0069], Figs. 1 and 4 see: adhesive layer 5 provided between the barrier film 3 and front face side resin film 2/filler layer 35). Kawashima teaches this improves adhesion between the films and leads to improvement of the strength, durability, toughness of the back sheet (para [0069]).
Kawashima and Miyake are combinable as they are both concerned with the field of solar cell modules.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film backsheet of Miyake in view of Kawashima to further include a second adhesive layer between the insulating substrate and the sealing material layer of Miyake as in Kawashima (Kawashima, [0035], [0069], Figs. 1 and 4 see: adhesive layer 5 provided between the barrier film 3 and front face side resin film 2/filler layer 35) as Kawashima teaches this improves adhesion between the films and leads to improvement of the strength, durability, toughness of the back sheet (para [0069]).
Regarding claim 55 modified Miyake discloses the solar cell module insulation film according to claim 53, and Kawashima further discloses wherein the second adhesive layer contains a coloring agent (Kawashima, [0074] see: adhesive layer 5 can further be blended with a pigment).
Claims 47-50 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al (JP 2016178154A reference made English machine translation) as applied to claims 42-45, 51, and 54 above, and further in view of Bonekamp et al (US 2014/0096825).
Regarding claim 47 Miyake discloses the solar cell module insulation film according to claim 42, but does not explicitly disclose wherein the sealing material layer includes a polyolefin layer containing a silane modified resin.
Bonekamp discloses a solar cell module comprising an integrated encapsulant (sealing layer) and backsheet layer where the sealing material layer includes a polyolefin layer containing a silane modified resin (Bonekamp, [0024], [0026] Fig. 1 see: backsheet top encapsulant layer 14 A includes a silane-graft-containing ethylene alpha olefin copolymer).
Bonekamp and Miyake are combinable as they are both concerned with the field of solar cell modules.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film backsheet of Miyake in view of Bonekamp such that the sealing material layer of Miyake further includes a polyolefin layer containing a silane modified resin as in Bonekamp (Bonekamp, [0024], [0026] Fig. 1 see: backsheet top encapsulant layer 14 A includes a silane-graft-containing ethylene alpha olefin copolymer) as such a modification would have amounted to the use of a known sealing material additive for its intended use in a solar cell module to accomplish an entirely expected result of improving the sealing material layer adhesion and durability.
Regarding claim 48 modified Miyake discloses the solar cell module insulation film according to claim 47, wherein the polyolefin layer is a polyethylene layer (Bonekamp, [0024], [0026], [0128], [0137] Fig. 1 see: backsheet top encapsulant layer A is a multilayer with a polyethylene-based top layer) and the sealing material layer includes a polypropylene layer between the polyolefin layer and the insulating substrate (Bonekamp, [0122]-[0129], [0137] Fig. 1 see: further sub-layers of Encapsulation Layer A include ethylene copolymers with .alpha.-olefins including polypropylene copolymers).
Regarding claim 49 modified Miyake discloses the solar cell module insulation film according to claim 48, and Bonekamp further teaches wherein the sealing material layer includes a coextrusion film including the polyethylene layer and the polypropylene layer (Bonekamp, [0147], [0155], [0157], see: the layers of the integrated backsheet are co-extruded).
Regarding claim 50 modified Miyake discloses the solar cell module insulation film according to claim 48, and Bonekamp further teaches wherein the polypropylene layer contains an adhesion improving agent (Bonekamp, [0128] see: when the top encapsulant layer A is provided as a multilayer film, varying levels of silane or adhesion promoters can be dispersed through the sublayers).
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al (JP 2016178154A reference made English machine translation) as applied to claims 42-45, 51, and 54 above, and further in view of Cho et al (KR 101480032B1, reference made to attached English machine translation).
Regarding claim 52 Miyake discloses the solar cell module insulation film according to claim 42, but does not explicitly disclose further comprising a first adhesive layer between the insulating substrate and the polyethylene-based resin layer.
Cho teaches backsheet multilayer insulating films can further comprise a first adhesive layer between the insulating substrate and the polyethylene-based resin layer (Cho, Fig. 2 see: second adhesive layer 30 between first resin film layer 40 and Second resin film layer 70 using polyethylene (PE) resin).
Cho and Miyake are combinable as they are both concerned with the field of solar cell modules.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film backsheet of Miyake in view of Cho to further include a first adhesive layer between the insulating substrate and the polyethylene-based resin layer of Miyake as in Cho (Cho, Fig. 2 see: second adhesive layer 30 between first resin film layer 40 and Second resin film layer 70 using polyethylene (PE) resin) for the express purpose of improving adhesion between the insulating substrate and polyethylene-based resin layer.
Claims 56-57 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al (JP 2016178154A reference made English machine translation) as applied to claims 42-45, 51, and 54 above, and further in view of Fujita et al (JP2015192101A, reference made to attached English machine translation).
Regarding claim 56 Miyake discloses an insulation film comprising the solar cell module insulation film according to claim 42; but does not explicitly disclose the film with a steel sheet where a steel sheet is disposed on a surface of the solar cell module insulation film that is a polyethylene-based resin layer side.
Fujita discloses a solar cell module having an insulating film with a steel sheet disposed at its rear side (Fujita, page 5 of translation, see section <other layers> and page 6 of translation, see: an insulating layer is provided between the steel plate and the photoelectric conversion element, and Fig. 3 see: steel plate 31 provided at the rear of polycarbonate resin layer 32a, the fluorine resin layer 32b). Fujita teaches such steel sheets make it easier to integrate the solar cell module into outer walls of buildings and casings of portable devices (Page 1, see background section).
Fujita and Miyake are combinable as they are both concerned with the field of solar cell modules.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the insulation film backsheet of Miyake in view of Fujita to further include a steel sheet as taught by Fujita (Fig. 3 see: steel plate 31) disposed at the rear side of the insulation film (a surface of the solar cell module insulation film that is a polyethylene-based resin layer side) for the purpose of making it easier to integrate the solar cell module of Miyake into outer walls of buildings and casings of portable devices as taught by Miyake (Page 1, see background section).
Regarding claim 57 Miyake discloses a solar cell module comprising a transparent substrate (Surface protection sheet 11, Fig. 1), a sealing material sheet (Light-receiving surface side sealing material sheet 12, Fig. 1), a solar cell (solar cell element 13, Fig. 1), the solar cell module insulation film according to claim 42 (Figs. 1-2 see: laminated sheet 1 including sealing material sheet 2 and polyolefin resin film 4 within back surface protection sheet 3), in this order but does not further explicitly disclose a steel sheet.
Fujita discloses a solar cell module having an insulating film with a steel sheet disposed at its rear side (Fujita, page 5 of translation, see section <other layers> and page 6 of translation, see: an insulating layer is provided between the steel plate and the photoelectric conversion element, and Fig. 3 see: steel plate 31 provided at the rear of polycarbonate resin layer 32a, the fluorine resin layer 32b). Fujita teaches such steel sheets make it easier to integrate the solar cell module into outer walls of buildings and casings of portable devices (Page 1, see background section).
Fujita and Miyake are combinable as they are both concerned with the field of solar cell modules.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the solar cell module of Miyake in view of Fujita such that it further comprises a steel sheet at its back surface as in Fujita (Fig. 3 see: steel plate 31 provided at the rear of polycarbonate resin layer 32a, the fluorine resin layer 32b) as Fujita teaches such steel sheets make it easier to integrate the solar cell module into outer walls of buildings and casings of portable devices (Page 1, see background section).
Conclusion
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ANDREW J. GOLDEN
Primary Examiner
Art Unit 1726
/ANDREW J GOLDEN/Primary Examiner, Art Unit 1726