DETAILED ACTION
(1)
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 . Applicant’s preliminary amendment, filed May 1, 2024, is entered. Applicant amended claims 1-12 and added claims 13-15. Claims 1-15 are pending before the Office for review.
(2)
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 14 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.
Claim 14 requires damaging the cover layer by inserting a toll between the cover layer and the at least one silicon base body. This claim limitation is new matter, as there is no mention of a “toll” in the priority documents and the originally-filed disclosure.
Therefore, claim 14 is rejected for reciting new matter.
(3)
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 1-15 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 requires “mechanically removing the metallic conductor tracks and collecting a machined material.” The awkward phrasing of this claim limitation is unclear as to whether the machined material is the metallic conductor tracks or some other byproduct of the mechanically removing process. Examiner suggests Applicant amend the claim language to specify “mechanically removing the metallic conductor tracks to obtain a machined material and collecting the machined material.” This limitation makes clear the origins of the machined material and clarifies the claimed invention.
Claim 14 requires using a “toll” to damage the cover layer. It’s not clear what this feature of the claimed invention requires. Examiner is not aware of a definition of “toll” that is appropriate for this context and the specification lacks any description of this feature of the claimed invention. Examiner will interpret “toll” to mean “tool” to examine the claimed invention.
Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art. Claims 2-15 are also rejected due to their dependency on claim 1.
(4)
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.
Claims 1, 5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (KR 101486803 B1). The text citations to Lee refer to the included English-language machine translation.
With respect to claim 1, Lee teaches a method for disassembling (processing) a solar cell module comprising at least one silicon base body (Page 4, Fourth paragraph), which includes a charge-doped zone, a hole-doped zone and an upper side, metallic conductor tracks in the form of conductive ribbon (150) on the upper side of the at least one silicon base body, a glass cover layer (130) that is transparent to visible light and at least one adhesive layer (120) between the cover layer and the metallic conductor tracks. Figure 1 and Page 3, First and fourth paragraphs, Page 4, Fourth paragraph and Page 5, Fifth paragraph.
Lee teaches the method comprises heating the at least one adhesive layer (Page 3, Second paragraph), removing the cover layer from the at least one silicon base body (Page 5, First paragraph) and mechanically removing the metallic conductor tracks and collecting a machined material (Page 5, Ninth and tenth paragraphs).
Examiner notes the claimed invention does not specify which machined material is collected. Examiner further notes Lee implicitly teaches the metal coating layer is collected in addition to the base material because, at a minimum, the metal coating layer is collected for waste disposal even if it is not further processed.
With respect to claim 5, Lee teaches the at least one adhesive layer is also at least partially removed when the cover layer is removed. Page 5, First paragraph.
With respect to claim 8, Lee teaches a tool capable of hitting the metal coating layer is used to affect the separation, which is within the scope of removing the conductor tracks by scraping. Page 5, Ninth and tenth paragraphs.
(5)
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 101486803 B1) in view of Ercole et al. (EP 2 998 038 A1).
With respect to claim 2, Lee teaches the adhesive layer is heated to a temperature of 400 °C (Page 3, Second paragraph), which is within the claimed range, but is silent as to whether the heating is performed by infrared radiation.
However, Ercole, which deals with methods of detaching glass substrates from a photovoltaic panel, teaches heaters that emit infrared radiation are effective for heating a photovoltaic panel in a glass removal method. Paragraph 52.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of Lee with Ercole is the use of a known technique to improve a similar method in the same way. Both Lee and Ercole teach methods for removing a glass substrate from a photovoltaic panel, wherein heating is used to affect the removal. Ercole teaches heaters that emit infrared radiation are effective for this purpose. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use infrared radiation in Lee’s method because Ercole teaches this to be an effective heat source for cover glass removal methods, meaning the modification has a reasonable expectation of success.
(6)
Claims 3, 4 and 9-11 are is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 101486803 B1) in view of Katsumi (JP 2011-1730990 A), which is cited in Applicant’s information disclosure statement. The citations to Katsumi refer to the included English-language machine translation.
With respect to claims 3 and 4, Lee teaches the cover layer is removed after heating, but is silent as to whether it is performed by applying forces acting in an opposite direction from the cover layer and the at least one silicon base body or whether the cover layer is damaged prior to its removal.
However, Katsumi, which deals with solar cell recycling methods, teaches in a glass removal method, the glass is first damaged by a roll crusher followed by removal of the glass with a blade that is positioned between the glass and the back substrate, meaning the blade applies forces acting in an opposite direction from the cover layer and the at least one silicon base body. Page 4, Crushing step and Page 6, Separation step.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of Lee with Katsumi is the use of a known technique to improve a similar method in the same way. Lee and Katsumi both teach solar panel recycling methods comprising glass removal. Katsumi teaches the glass is damaged prior to removal and a blade applying force acting in an opposite direction from the cover layer and the at least one silicon base body is used to facilitate cover glass removal. It would have been obvious to one ordinarily skilled in the art a ta time before the effective filing date of the claimed invention to utilize this approach in Lee’s method because Katsumi teaches it to be effective for affecting removal, meaning the modification has a reasonable expectation of success.
With respect to claim 9, Lee implicitly teaches, as explained above, the machined metal coating layer is collected, but is silent as to whether this is done by being sucked up.
However, Katsumi further teaches vacuum is an effective technique for holding and/or collecting an item in a photovoltaic panel recycling method. Page 6, Separation step.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of Lee and Katsumi is the use of a known technique to improve a similar method in the same way. Lee and Katsumi are both directed toward photovoltaic panel recycling methods. Lee teaches the metal coating layer is collected. Katsumi teaches vacuum is used to secure material in the recycling method. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to utilize vacuum to suck up the metal coating layer that is to be collected because Katsumi teaches this is an effective technique for securing material in the method, meaning the modification has a reasonable expectation of success.
With respect to claims 10 and 11, Examiner notes the statement “for carrying out a method according to claim 1” is a statement of intended use that does not further limit the claimed invention. The cited statement recites a function performed by the device. Any device meeting the requirements of the claimed invention is capable of performing the recited intended use absent evidence to the contrary.
Lee and Katsumi, as combined above, teach a device for performing the method (Lee, Figure 4) comprising at least one heating device (Lee, Page 4, Second paragraph) for heating the at least one adhesive layer, at least one traction device in the form of vacuum grippers (Katsumi, Page 6, Separation step) for exerting a tensile force, a mechanical removal device in the form of a tool (Lee, Page 5, Ninth and tenth paragraphs) and a collection device, as noted by the recovery of the machined material. Lee, Page 5, Ninth and tenth paragraphs.
(7)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 101486803 B1).
With respect to claim 6, Lee teaches the adhesive layer is removed along with the cover glass, but is silent as to whether the adhesive layer is removed after the cover glass has been removed.
However, as per the MPEP, the selection of any order of performing process steps is obvious in the absence of new or unexpected results. MPEP 2144.04(IV)(C) (internal citation omitted).
In this case, it’s obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention a removed cover glass and adhesive layer are affected independent of the specific order of the removal.
(8)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 101486803 B1), as applied to claim 5 above, and further in view of Katsumi (JP 2011-1730990 A).
With respect to claim 7, modified Lee teaches the adhesive layer is removed, but is silent as to whether it is performed via a mechanical tool.
However, Katsumi teaches a blade (mechanical tool) is used to affect removal of an adhesive layer. Page 6, Separation step.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date the combination of modified Lee with Katsumi is the use of a known technique to improve a similar method in the same way. Both modified Lee and Katsumi are directed toward photovoltaic panel recycling methods involving adhesive removal. Katsumi teaches a blade is used to affect adhesive removal. It would’ve been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use a similar technique in Lee’s method because Katsumi teaches it to be effective for adhesive removal, meaning the modification has a reasonable expectation of success.
(9)
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 101486803 B1) in view of Katsumi (JP 2011-1730990 A), as applied to claims 3, 4 and 9-11 above, and further in view of Sakai et al. (U.S. Publication No. 2021/0162729).
With respect to claims 12 and 13, modified Lee teaches the device comprises a mechanical removal device having a mechanical tool that applies force to the metal coating layer to affect its removal but is silent as to whether it is controlled via an electronic control unit.
However, Sakai, which deals with solar cell recycling devices, teaches a recycling device comprises a control unit to control the force applied by a separator to a separation step. Paragraph 40.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of modified Lee with Sakai is the use of a known technique to improve a similar device in the same way. Modified Lee and Sakai teach solar module recycling device having a tool that applies force to separate two items. Sakai teaches the device relies on an electronic control unit to control the force applied by the tool in the separation step. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use the same electronic control unit in modified Lee’s device because Sakai teaches it is effective at controlling the force applied by the tool, meaning the modification has a reasonable expectation of success.
(10)
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Lee teaches a temperature range of 400 to 650 °C (Page 3, Second paragraph), and there is no indication that the method would be compatible with lower temperature ranges, such as the range of 200 to 280 °C required by claim 15.
(11)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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