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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 10th, 2026 has been entered.
Response to Amendment
The amendment filed June 10th, 2026 does not place the application in condition for allowance.
The 112(b) rejections of claims 1 and 5 are maintained.
The 112(b) rejection of claim 15 is withdrawn due to Applicant’s amendment.
The rejections based over Ceria are maintained.
New rejections follow.
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, and 3-9 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.
Regarding Claim 1, Applicant recites, “at least one photovoltaic panel” (two recitations), and “of the at least one photovoltaic panels” (two recitations). Its unclear from this phrasing if there is only one, or more than one, as Applicant is using the word “panel” in both plural and singular form. Appropriate action is required.
Regarding Claim 5, Applicant recites, “a pair of plates for holding end edges of the photovoltaic panels” (claim 1), and “the plate between adjacent photovoltaic panels”. Its unclear if the plate recited in claim 5 corresponds to one of the plates in the pair of plates or if it is a newly introduced distinct plate. Appropriate action is required.
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, 3-10, and 12-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ceria (US 7,469,508 B2).
In view of Claim 1, Ceria discloses an insulated roof panel (Fig. 3) comprising:
an inner skin, (Fig. 3, #9 – bottom surface), an outer skin (Fig. 3, #7 – top surfaces including 10A-C), and an insulated material between the inner and outer skins (Fig. 3, #8) forming a panel (Fig. 3, #5 & Column 3, Lines 14-24);
the outer skin comprising raised sides forming a deck therebetween (Fig. 3, top surfaces of 10A’, 10B’, 10C);
at least one photovoltaic panel with a longitudinal axis (See Annotated Ceria Fig. 1, below) integrally adhered to the deck on the raised sides of the outer skin (Fig. 3, #14 & Column 4, Lines 14-24);
a pair of plates for holding transverse ends edge, transverse to the longitudinal axis (See Annotated Ceria Fig. 1, below) of the at least one photovoltaic panels (Figs. 3-4, #16) a clamp on each plate covering the respective transverse end edge (Fig. 4, #14A & G, these elements are present on either side of the photovoltaic panel – Column 4, Lines 33-43); and
at least one connector connecting with the photovoltaic panels for transferring electricity from the panel (Figs. 4 & 6, #14B – Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
Annotated Ceria Fig. 1
PNG
media_image1.png
507
740
media_image1.png
Greyscale
In view of Claim 3, Ceria is relied upon for the reasons given above in addressing Claim 2. Ceria teaches at least one photovoltaic panel has a thickness so that the photovoltaic panel exposed surface is below a terminal surface of the raised sides(Fig. 4, #14 is adhered to the deck #20 - Column 7, Lines 25-38 or Fig. 6, the plateau/notch that the PV panel rests within)
In view of Claim 4, Ceria is relied upon for the reasons given above in addressing Claim 1. Ceria teaches the plurality of photovoltaic panels are arranged in a series or parallel string connected to one another (Column 1, Lines 28-61).
In view of Claim 5, as best understood by the Examiner, Ceria is relied upon for the reasons given above in addressing Claim 1. Ceria teaches the plate between adjacent photovoltaic panels includes a clamp on each side for covering the end edges of adjacent photovoltaic panels (Fig. 4, G).
In view of Claim 6, Ceria is relied upon for the reasons given above in addressing Claim 1. Ceria teaches a junction box houses at least one connector (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
In view of Claim 7, Ceria is relied upon for the reasons given above in addressing Claim 5. Ceria teaches a junction box houses connectors from adjacent photovoltaic panels (Column 1, Lines 44-48).
In view of Claim 8, Ceria is relied upon for the reasons given above in addressing Claim 3. Ceria teaches a junction box houses at least one connector (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42), and the junction box exposed surfaces is positioned below the terminal surface of the raised sides (Figs, 4 & 6, bottom surface of junction box below raised sides).
In view of Claim 9, Ceria is relied upon for the reasons given above in addressing Claim 2. Ceria teaches the raised sides include a standing seam (Fig. 6, 10B, where the top surface and side curved surfaces meet curved c-shaped structure is considered a “seam”).
In view of Claim 10, Ceria discloses an insulated panel roof (Fig. 1) comprising a plurality of insulated roof panels (Fig. 3) each panel having:
an inner skin, (Fig. 3, #9 – bottom surface), an outer skin (Fig. 3, #7 – top surfaces including 10A-C), and an insulated material between the inner and outer skins (Fig. 2, #8) forming a panel (Fig. 2, #4 & Column 3, Lines 14-24);
the outer skin comprising raised sides forming a deck therebetween (Fig. 3, top surfaces of 10A’, 10B’, 10C);
a plurality of photovoltaic panels, with a longitudinal axis (See Annotated Ceria Fig. 1, below), integrally adhered to the deck of each of the insulated panels (Fig. 3, #14 & Column 4, Lines 14-24);
a plurality of plates for holding transverse ends edge, transverse to the longitudinal axis (See Annotated Ceria Fig. 1, below) of the at least one photovoltaic panel (Figs. 3-4, #16) at least one clamp on each plate covering the respective transverse end edge (Fig. 4, #14A & G, these elements are present on either side of the photovoltaic panel – Column 4, Lines 33-43);
at least one connector connecting with the at least one photovoltaic panels for transferring electricity from the at least one photovoltaic panel (Figs. 4 & 6, #14B – Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42);
the plurality of photovoltaic panels are arranged in a series or parallel string connected to one another (Column 1, Lines 28-61).
Annotated Ceria Fig. 1
PNG
media_image1.png
507
740
media_image1.png
Greyscale
In view of Claim 12, Ceria is relied upon for the reasons given above in addressing Claim 10. Ceria teaches the plurality of photovoltaic panels having a thickness (Fig. 3, #14 thickness in the height direction) so that the panel bottom surface is exposed (Fig. 3, #14 bottom surface), and this bottom surface is below a terminal surface of the raised sides (Fig. 3, #14 is below the very top surface of 10A’-10C’).
In view of Claim 13, Ceria is relied upon for the reasons given above in addressing Claim 10. Ceria teaches the plate between adjacent photovoltaic panels includes a clamp on each side for covering the end edges of adjacent photovoltaic panels (Fig. 4, G).
In view of Claim 14, Ceria is relied upon for the reasons given above in addressing Claim 10. Ceria teaches a plurality of junction box houses at least one connector (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
In view of Claim 15, as best understood by the Examiner, Ceria is relied upon for the reasons given above in addressing Claim 12. Ceria teaches a plurality of junction boxes houses at least one connector, thus a plurality of connectors (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42), and the junction box exposed surfaces is positioned below the terminal surface of the raised sides (Figs, 4 & 6, bottom surface of junction box below raised sides).
In view of Claim 16, Ceria is relied upon for the reasons given above in addressing Claim 11. Ceria teaches the raised sides include a standing seam (Fig. 6, 10B, where the top surface and side curved surfaces meet curved c-shaped structure is considered a “seam”).
In view of Claim 17, Ceria discloses a method of manufacturing an insulated roof panel integrated with photovoltaic panels (Fig. 3) comprising the steps of:
forming an insulated roof panel with an inner skin, (Fig. 3, #9 – bottom surface), an outer skin (Fig. 3, #7 – top surfaces including 10A-C), and an insulated material between the inner and outer skins (Fig. 3, #8) forming a panel (Fig. 3, #5 & Column 3, Lines 14-24);
the outer skin comprising raised sides forming a deck therebetween (Fig. 3, top surfaces of 10A’, 10B’, 10C);
integrally adhering at least one photovoltaic panel with a longitudinal axis (See Annotated Ceria, Fig. 1, below) to the deck of the outer skin of the insulated panel (Fig. 3, #14 & Column 4, Lines 14-24);
positioning a pair of plates for holding transverse ends edge, transverse to the longitudinal axis (See Annotated Ceria Fig. 1, below) of the at least one photovoltaic panels (Figs. 3-4, #16) covering the transverse end edges of the photovoltaic panels with a clamp on each plate (Fig. 4, #14A & G, these elements are present on either side of the photovoltaic panel – Column 4, Lines 33-43); and
connecting at least one connector with the photovoltaic panels for transferring electricity from the at least one photovoltaic panel (Figs. 4 & 6, #14B – Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
Annotated Ceria Fig. 1
PNG
media_image1.png
507
740
media_image1.png
Greyscale
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.
Claims 1, 3-10, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ceria (US 7,469,508 B2) in view of Carolan et al. (US 2012/0186633 A1).
In view of Claim 1, Ceria discloses an insulated roof panel (Fig. 3) comprising:
an inner skin, (Fig. 3, #9 – bottom surface), an outer skin (Fig. 3, #7 – top surfaces including 10A-C), and an insulated material between the inner and outer skins (Fig. 3, #8) forming a panel (Fig. 3, #5 & Column 3, Lines 14-24);
the outer skin comprising raised sides forming a deck therebetween (Fig. 3, top surfaces of 10A’, 10B’, 10C);
at least one photovoltaic panel with a longitudinal axis(See Annotated Ceria et al. Fig. 1, below) integrally adhered to the deck on the raised sides of the outer skin (Fig. 3, #14 & Column 4, Lines 14-24);
a pair of plates for holding transverse ends edge transverse to the longitudinal axis (See Annotated Ceria et al. Fig. 1, below) of the at least one photovoltaic panels (Figs. 3-4, #16) a clamp on each plate covering the respective transverse end edge (Fig. 4, #14A & G, these elements are present on either side of the photovoltaic panel – Column 4, Lines 33-43); and
at least one connector connecting with the photovoltaic panels for transferring electricity from the panel (Figs. 4 & 6, #14B – Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
Carolan et al. discloses a photovoltaic panel that is integrally adhered to the deck of an insulated roof panel (Fig. 10, #20A & Paragraph 0072) and that this configuration makes it so a separate carrier for photovoltaic panels are not required (Paragraph 0070). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate Carolan et al. photovoltaic panel that is integrally adhered to the deck of an insulated roof panel in Ceria’s configuration for the advantage of not requiring a separate carrier for the photovoltaic panels.
Annotated Ceria Fig. 1
PNG
media_image1.png
507
740
media_image1.png
Greyscale
In view of Claim 3, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 2. Carolan teaches at least one photovoltaic panel has a thickness so that the photovoltaic panel exposed surface is below a terminal surface of the raised sides (Fig. 11).
In view of Claim 4, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 1. Ceria teaches the plurality of photovoltaic panels are arranged in a series or parallel string connected to one another (Column 1, Lines 28-61).
In view of Claim 5, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 1. Ceria teaches the plate between adjacent photovoltaic panels includes a clamp on each side for covering the end edges of adjacent photovoltaic panels (Fig. 4, G).
In view of Claim 6, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 1. Ceria teaches a junction box houses at least one connector (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
In view of Claim 7, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 5. Ceria teaches a junction box houses connectors from adjacent photovoltaic panels (Column 1, Lines 44-48).
In view of Claim 8, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 3. Ceria teaches a junction box houses at least one connector (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42), and the junction box exposed surfaces is positioned below the terminal surface of the raised sides (Figs, 4 & 6, bottom surface of junction box below raised sides).
In view of Claim 9, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 2. Ceria teaches the raised sides include a standing seam (Fig. 6, 10B, where the top surface and side curved surfaces meet curved c-shaped structure is considered a “seam”).
In view of Claim 10, Ceria discloses an insulated panel roof (Fig. 1) comprising a plurality of insulated roof panels (Fig. 3) each panel having:
an inner skin, (Fig. 3, #9 – bottom surface), an outer skin (Fig. 3, #7 – top surfaces including 10A-C), and an insulated material between the inner and outer skins (Fig. 2, #8) forming a panel (Fig. 2, #4 & Column 3, Lines 14-24);
the outer skin comprising raised sides forming a deck therebetween (Fig. 3, top surfaces of 10A’, 10B’, 10C);
a plurality of photovoltaic panels with a longitudinal axis (See Annotated Ceria et al. Fig. 1, below) integrally adhered to the deck of each of the insulated panels (Fig. 3, #14 & Column 4, Lines 14-24);
a plurality of plates for holding transverse ends edge transverse to the longitudinal axis (See Annotated Ceria et al. Fig. 1, below) of the at least one photovoltaic panel (Figs. 3-4, #16) at least one clamp on each plate covering the respective transverse end edge (Fig. 4, #14A & G, these elements are present on either side of the photovoltaic panel – Column 4, Lines 33-43);
at least one connector connecting with the at least one photovoltaic panels for transferring electricity from the at least one photovoltaic panel (Figs. 4 & 6, #14B – Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42);
the plurality of photovoltaic panels are arranged in a series or parallel string connected to one another (Column 1, Lines 28-61).
Carolan et al. discloses a photovoltaic panel that is integrally adhered to the deck of an insulated roof panel (Fig. 10, #20A & Paragraph 0072) and that this configuration makes it so a separate carrier for photovoltaic panels are not required (Paragraph 0070). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate Carolan et al. photovoltaic panel that is integrally adhered to the deck of an insulated roof panel in Ceria’s configuration for the advantage of not requiring a separate carrier for the photovoltaic panels.
Annotated Ceria Fig. 1
PNG
media_image1.png
507
740
media_image1.png
Greyscale
In view of Claim 12, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 10. Carolan teaches at least one photovoltaic panel has a thickness so that the photovoltaic panel exposed surface is below a terminal surface of the raised sides (Fig. 11).
In view of Claim 13, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 10. Ceria teaches the plate between adjacent photovoltaic panels includes a clamp on each side for covering the end edges of adjacent photovoltaic panels (Fig. 4, G).
In view of Claim 14, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 10. Ceria teaches a plurality of junction box houses at least one connector (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
In view of Claim 15, as best understood by the Examiner, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 12. Ceria teaches a plurality of junction boxes houses at least one connector, thus a plurality of connectors (Figs. 4 & 6, there are wired connections coming from the PV panel Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42), and the junction box exposed surfaces is positioned below the terminal surface of the raised sides (Figs, 4 & 6, bottom surface of junction box below raised sides).
In view of Claim 16, Ceria and Carolan et al. are relied upon for the reasons given above in addressing Claim 11. Ceria teaches the raised sides include a standing seam (Fig. 6, 10B, where the top surface and side curved surfaces meet curved c-shaped structure is considered a “seam”).
In view of Claim 17, Ceria discloses a method of manufacturing an insulated roof panel integrated with photovoltaic panels (Fig. 3) comprising the steps of:
forming an insulated roof panel with an inner skin, (Fig. 3, #9 – bottom surface), an outer skin (Fig. 3, #7 – top surfaces including 10A-C), and an insulated material between the inner and outer skins (Fig. 3, #8) forming a panel (Fig. 3, #5 & Column 3, Lines 14-24);
the outer skin comprising raised sides forming a deck therebetween (Fig. 3, top surfaces of 10A’, 10B’, 10C);
integrally adhering at least one photovoltaic panel with a longitudinal axis (See Annotated Ceria et al. Fig. 1, below) to the deck of the outer skin of the insulated panel (Fig. 3, #14 & Column 4, Lines 14-24);
positioning a pair of plates for holding transverse ends edge transverse to the longitudinal axis (See Annotated Ceria et al. Fig. 1, below) of the at least one photovoltaic panels (Figs. 3-4, #16) covering the transverse end edges of the photovoltaic panels with a clamp on each plate (Fig. 4, #14A & G, these elements are present on either side of the photovoltaic panel – Column 4, Lines 33-43); and
connecting at least one connector with the photovoltaic panels for transferring electricity from the at least one photovoltaic panel (Figs. 4 & 6, #14B – Column 4, Lines 13-24 & 44-67 through Column 5, Lines 1-42).
Carolan et al. discloses a photovoltaic panel that is integrally adhered to the deck of an insulated roof panel (Fig. 10, #20A & Paragraph 0072) and that this configuration makes it so a separate carrier for photovoltaic panels are not required (Paragraph 0070). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate Carolan et al. photovoltaic panel that is integrally adhered to the deck of an insulated roof panel in Ceria’s configuration for the advantage of not requiring a separate carrier for the photovoltaic panels.
Annotated Ceria Fig. 1
PNG
media_image1.png
507
740
media_image1.png
Greyscale
Response to Arguments
Applicant argues that Ceria et al. does not disclose that the at least one photovoltaic panel is integrally adhered or bonded to the deck as claimed. The Examiner respectfully disagrees and points out to Applicant that Ceria et al. discloses the outer skin comprises raised sides that has deck and that the pair of plates integrally forms the photovoltaic panel to the deck via clamping (See Annotated Ceria et al. Fig. 3, below). Accordingly, this argument is unpersuasive.
Annotated Ceria et al. Fig. 3
PNG
media_image2.png
456
898
media_image2.png
Greyscale
Applicant argues that Ceria et al. does not disclose at least one PV panel with a longitudinal axis and a pair of plates for holding transverse end edges transverse to the longitudinal axis. The Examiner respectfully disagrees and points out to Applicant that Ceria et al. does not disclose at least one PV panel with a longitudinal axis and a pair of plates for holding transverse end edges transverse to the longitudinal axis.
Response to Arguments
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P MALLEY JR. whose telephone number is (571)270-1638. The examiner can normally be reached Monday-Friday 8am-430pm 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 T 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.
/DANIEL P MALLEY JR./Primary Examiner, Art Unit 1726
Prosecution Insights