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 .
DETAILED CORRESPONDENCE
This communication is a first Office Action on the Merits. Claims 1-20, as originally filed 20 MAR. 2026, are pending and have been considered as follows:
Election/Restrictions
Applicant’s election without traverse of “Group I, which corresponds to claims 1-18, without traverse.” in the reply filed on 20 MAR. 26 is acknowledged.
Claim 19-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 MAR. 26.
Claim Rejections - 35 USC § 112
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 2 and 11 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.
The phrase “wherein the solar panel replaces a filler panel” suggests the panel of the independent claim is not present at the end of the dependent claim.
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.
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 2-5 and 11-14 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 pre-AIA the applicant regards as the invention.
Cl. 2 ln. 2 and Cl. 11 ln. 2: after “wherein the solar panel” the phrase “replaces a filler panel” is vague, indefinite, and confusing as being unclear. Initially, it is unclear how this claim can depend from Cl. 1 or Cl. 10 which each explicitly require “filler panels attached to the roofing sub-structure” whereby this phrase “replaces” renders unclear if the filler panels are attached or not. Claims 1 and 10 explicitly require the plurality to be attached. Also, it is unclear how “replaces” is a function of the solar panel, rending unclear of this limitation a method step carried out by the solar panel or another later added entity.
Claims 3-5 and 12-14 not particularly referenced in this section are rejected as being dependent upon an indefinite claim.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 8, 10-13 and 17 rejected under 35 U.S.C. 103 as being unpatentable over Ruffine et al. US 20230253914 A1 (Ruffine) in view of Dalacu US 6201179 B1
As per claim 1 the primary reference of Ruffine teaches a roofing system (“SOLAR CELL ROOF” title) for renewable energy applications, comprising:
a roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11);
a plurality of openings (channel created by batten 60, channels 89, 90, and channel defined by the edge flashing 88, FIGs. 2E-2F, 2H, 2I, 2J, 2K, 2L) formed in the roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11);
a plurality of filler panels (filler panels 20, first filler panel 20A, second filler panel 20, FIG. 1, 4, 7A-8A, 9A-9C) attached (see filler panels 20 “attached” FIG. 1) to the roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11) via the plurality of openings (channel created by batten 60, channels 89, 90, and channel defined by the edge flashing 88, FIGs. 2E-2F, 2H, 2I, 2J, 2K, 2L),
the plurality of filler panels (filler panels 20, first filler panel 20A, second filler panel 20, FIG. 1, 4, 7A-8A, 9A-9C) providing standard places for the addition of solar panels to the roofing system, but fails to explicitly disclose:
a channel formed in the roofing sub-structure, the channel configured to receive wiring; and
Dalacu teaches , specifically:
a channel (space defined by leftmost rib 12, unidentified FIG. 3; compare to ribs 13, 14, 15, 16 and 17) formed in the roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11), the channel (space defined by leftmost rib 12, unidentified FIG. 3; compare to ribs 13, 14, 15, 16 and 17) configured to receive wiring (J-boxes 60, 61, 62, FIG. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine by including the corrugated member and J-boxes as taught by Dalacu in order to provide electrical connection for the modules.
As per claim 2 Ruffine in view of Dalacu teaches the limitations according to claim 1, and Ruffine further discloses a solar panel (solar panels 10 FIG. 1), wherein the solar panel replaces a filler panel of the plurality of filler panels (filler panels 20, first filler panel 20A, second filler panel 20, FIG. 1, 4, 7A-8A, 9A-9C).
As per claim 3 Ruffine in view of Dalacu teaches the limitations according to claim 2, and Dalacu further discloses the solar panel is coupled with the wiring (J-boxes 60, 61, 62, FIG. 3) disposed in the channel (see FIG. 2C). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the corrugated member and J-boxes housed therein to route generated electricity from the modules.
As per claim 4 Ruffine in view of Dalacu teaches the limitations according to claim 2, and Dalacu further discloses wherein the solar panel is coupled with a terminal (terminal 41, 42, FIG. 2C) disposed in an opening (see opening between 62 and 1’, FIG. 2C) corresponding to a location of the solar panel. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the opening for connecting the solar cell to the terminal.
As per claim 8 Ruffine in view of Dalacu teaches the limitations according to claim 1, and Dalacu further discloses a plurality of access channels (see holes in adhesive proximate J-box 62, FIG. 2C), the plurality of access channels fluidly coupling the plurality of openings to the channel. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the holes in adhesive with holes as taught by Dalacu in order to seal the connection between the modules and the J-boxes.
As per claim 10 Ruffine teaches a structure, comprising:
a plurality of walls (see walls FIG. 1); and
a roofing system (see “SOLAR CELL ROOF”, title) for renewable energy applications,
the roofing system forming an upper covering (see elements “forming an upper covering”, FIG. 1) for the plurality of walls, the roofing system comprising: a roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11);
a plurality of openings (channel created by batten 60, channels 89, 90, and channel defined by the edge flashing 88, FIGs. 2E-2F, 2H, 2I, 2J, 2K, 2L) formed in the roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11);
a plurality of filler panels (filler panels 20, first filler panel 20A, second filler panel 20, FIG. 1, 4, 7A-8A, 9A-9C) attached (see filler panels 20 “attached” FIG. 1) to the roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11) via the plurality of openings (channel created by batten 60, channels 89, 90, and channel defined by the edge flashing 88, FIGs. 2E-2F, 2H, 2I, 2J, 2K, 2L),
the plurality of filler panels (filler panels 20, first filler panel 20A, second filler panel 20, FIG. 1, 4, 7A-8A, 9A-9C) providing standard places for the addition of solar panels to the roofing system but fails to explicitly disclose:
a channel formed in the roofing sub-structure, the channel configured to receive wiring; and
Dalacu teaches , specifically:
a channel (space defined by leftmost rib 12, unidentified FIG. 3; compare to ribs 13, 14, 15, 16 and 17)formed in the roofing sub-structure (roof 100, roof frame 90 FIGs. 1, 2A-2C, 2E-2F, 2H-2I, 6A-10A and FIG. 11), the channel (space defined by leftmost rib 12, unidentified FIG. 3; compare to ribs 13, 14, 15, 16 and 17)configured to receive wiring (J-boxes 60, 61, 62, FIG. 3).; and
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine by including the corrugated member and J-boxes as taught by Dalacu in order to provide electrical connection for the modules.
As per claim 11 Ruffine in view of Dalacu teaches the limitations according to claim 10, and Ruffine further discloses a solar panel (solar panels 10 FIG. 1), wherein the solar panel replaces a filler panel of the plurality of filler panels (filler panels 20, first filler panel 20A, second filler panel 20, FIG. 1, 4, 7A-8A, 9A-9C).
As per claim 12 Ruffine in view of Dalacu teaches the limitations according to claim 11, and Dalacu further discloses the solar panel is coupled with the wiring (J-boxes 60, 61, 62, FIG. 3) disposed in the channel (see FIG. 2C). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the corrugated member and J-boxes housed therein to route generated electricity from the modules.
As per claim 13 Ruffine in view of Dalacu teaches the limitations according to claim 11, and Dalacu further discloses the solar panel is coupled with a terminal (terminal 41, 42, FIG. 2C) disposed in an opening (see opening between 62 and 1’, FIG. 2C) corresponding to a location of the solar panel. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the opening for connecting the solar cell to the terminal.
As per claim 17 Ruffine in view of Dalacu teaches the limitations according to claim 10, and Dalacu further discloses a plurality of access channels (see holes in adhesive proximate J-box 62, FIG. 2C), the plurality of access channels fluidly coupling the plurality of openings to the channel. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the holes in adhesive with holes as taught by Dalacu in order to seal the connection between the modules and the J-boxes.
Claim 5-6 and 14-15 rejected under 35 U.S.C. 103 as being unpatentable over Ruffine in view of Dalacu as applied to claim 1 and 2 or 10 and 11, respectively, and further in view of Brady et al. US 9923508 B2 (Brady).
As per claim 5 and 14 Ruffine in view of Dalacu teaches the limitations according to claim 2 and 11, respectively, but the combination fails to explicitly disclose:
the solar panel is selected from a group comprising thin-film solar panels, crystalline silicon solar panels, or solar tiles.
Brady teaches such obvious energy collecting compositions, specifically:
the solar panel is selected from a group comprising thin-film solar panels, crystalline silicon solar panels, or solar tiles (“monocrystalline silicon cells may be preferred over thin film cells, due to the currently greater efficiency of monocrystalline silicon in converting light into electrical energy” 9:17)
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the monocrystalline silicon cells as taught by Brady in order to provide a panel having greater efficiency.
As per claim 6 and 15 Ruffine in view of Dalacu teaches the limitations according to claims 1 and 10, respectively, and Ruffine further discloses a polymeric back sheet can be included with the PV members (see [0028]) but the combination but fails to explicitly disclose:
the roofing sub-structure further comprises: physical locations within the roofing sub-structure for placement of inverters.
Brady teaches a low profile solution for placement of an inverter, specifically:
the roofing sub-structure further comprises: physical locations (notch 15, FIG. 2) within the roofing sub-structure for placement of inverters (“a micro-inverter, such as the MIG300 on-grid micro-inverter provided by Darfon, may be placed and secured within the notch 15” 7:30).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the notch as taught by Brady in order to mount an inverter which would enable the harvesting of more electricity.
Claim 7 and 16 rejected under 35 U.S.C. 103 as being unpatentable over Ruffine in view of Dalacu as applied to claims 1 and 10 above, and further in view of Kennedy US 11991961 B2.
As per claims 7 and 16, Ruffine in view of Dalacu teaches the limitations according to claims 1 and 10, respectively, but the combination fails to explicitly disclose:
an end point terminal configured to connect the wiring to an electrical system; and
an end point terminal configured to connect wiring to an electrical system of the structure.
Kennedy teaches solar power generation and agricultural material dispersal system which manages a plurality of power generation devices which are , specifically:
an end point terminal (end systems 30, FIG. 2) configured to connect the wiring to an electrical system (“exemplary system suitable for use as an end system of a row of solar power generation” 2:5); and
an end point terminal (end systems 30, FIG. 2) configured to connect wiring to an electrical system of the structure (“exemplary system suitable for use as an end system of a row of solar power generation” 2:5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the systems as taught by Kennedy in order to connect and organize the wiring from multiple modules.
Claim 9 and 18 rejected under 35 U.S.C. 103 as being unpatentable over Ruffine in view of Dalacu as applied to claims 1 and 10 above, and further in view of Yang et al. US 10560049 B2 (Yang).
As per claim 9 and 18 Ruffine in view of Dalacu teaches the limitations according to claims 1 and 10, respectively, but fails to explicitly disclose:
a plurality of gaskets positioned between the plurality of openings and the plurality of filler panels.
Yang teaches a gasket capable of being placed where required (1330, FIG. 13C-13D).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Ruffine in view of Dalacu by including the gaskets as taught by Yang wherever an aperture is needed in order to seal against water as is old and well known in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ishikawa et al. US 5524401 A (FIG. 1 below) teaches a roof panel (1) with a predetermined number of solar battery cells (10)
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KELLER et al. US 20230198453 A1 (FIG. 1, 2A-2B) teaches “energy producing (photovoltaic or other) modules 112 and/or non-energy-producing, decorative or “filler” modules or panels (e.g. decorative modules which are transparent or translucent, with or without decorative designs). As depicted in FIG. 2, array 110 comprises PV modules 112 (e.g. laminated crystalline silicon solar cells, photovoltaic thin films or any other energy producing material) and filler panels 114”
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Fischer US 11067312 B2 (FIG. 1 below) discusses the benefits of a modular design, specifically: “With a modular design, a single panel can be used, or two or more, easily connected together to provide sufficient solar energy needs for the structure on which they are placed.”
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH J SADLON whose telephone number is (571)270-5730. The examiner can normally be reached on M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN D MATTEI can be reached on (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JJS/
/BRIAN D MATTEI/Supervisory Patent Examiner, Art Unit 3635
Prosecution Insights