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 .
Summary
This is the response to the Amendment/Request for Reconsideration filed on 03/16/2026.
Claims 1-6 and 8-15 remain pending in the application.
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.
Claims 1-6 and 8-15 are 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. In claims 1 and 13, the limitation “pre-existing” is not supported by the originally filed disclosure.
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 1-6 and 8-15 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. The limitation “pre-existing” renders claims 1, 13 and their dependent claims indefinite when read in light of the specification. The originally filed disclosure does not recite any pre-existing photovoltaic modules; therefore, it is unclear as to what structures the photovoltaic modules need to have in order to be qualified as being a “pre-existing photovoltaic module”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 8-9 and 12 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Palm et al. (US 2023/085983).
Addressing claim 1, Palm discloses a structural element 1 in the form of a sandwich-like façade panel (paragraph [0160] discloses structural element 1 as a façade element and figs. 1-4 show multiple layers are stacked together with one layer being sandwiched between two adjacent layers, which qualifies the structural element of Palm as the claimed sandwich-like façade panel; alternatively, paragraph [0163] describes the first pane and/or the second pane are sandwich like), wherein the structural element 1 comprises:
a substrate (2 or 3) in the form of a monolithic glass plate (paragraph [0035] describes the first pane 2 and second pane 2 as glass element, which qualifies it as the claimed monolithic glass plate) having an upper side which forms an outer face of the structural element (figs. 1-2); and
a plurality of pre-existing (paragraph [0174] discloses the solar module 20 is pre-fabricated, which satisfies the limitation pre-existing), fully encapsulated (the solar cells 18 are fully encapsulated as disclosed in paragraphs [0172-0175] and shown in figs. 3-4), and autonomous (in figs. 6-7 Palm discloses the photovoltaic modules are operatively connected via the corresponding electrical connection, which qualifies them as the claimed autonomous modules which are operatively connected) photovoltaic modules 20 arranged in a row or in an array (figs. 6-7), wherein the photovoltaic modules are laminated onto an underside of the substrate opposite from the upper side (paragraphs [0172-0174] and figs. 3-5).
Addressing claims 2-3, Palm discloses the photovoltaic modules are laminated onto the underside of the substrate. The limitation “by temperature-controlled vacuum process” and “by an autoclave process” are drawn to the process of laminating the photovoltaic modules onto the underside of the substrate that does not structurally differentiate the claimed structural element from that of the prior art (see MPEP 2113).
Addressing claim 4, figs. 3-4 and paragraph [0071] disclose each photovoltaic module 18 comprises at least one solar cell (thin-film solar cells, [0071]) having a front side (the side facing the façade element 1) and a rear side (the side facing the layer 16) facing a base plate 16 of the photovoltaic module, wherein the front side of the solar cell is connected to an electrically conductive layer arranged on the base plate 16 of the photovoltaic module (paragraph [0073] discloses the electrode on the front side of the solar cells is connected to the electrode on the back side of the solar cells to form series connection; which implies that the front side of the solar cell is connected to the back side electrode as the claimed electrically conductive layer arranged on the base plate 16 of the photovoltaic module), wherein the base plate 16 includes at least one electrically insulating layer 16 having a first structured and electrically conductive layer (the back side electrode layer) on a side opposite from the solar cell which is electrically connected to the front side of the solar cell [0073], and wherein a second structured and electrically conductive layer (the front side electrode layer) which is electrically connected to the rear side of the at least one solar cell [0073] is arranged on an opposite side of the electrically insulating layer 16 (fig. 3 and paragraphs [0072-0073]).
Addressing claim 5, paragraph [0074] discloses the light-entry side glass that corresponds to the claimed transparent layer as a glass pane covering the at least one solar cell, via which the photovoltaic module is bonded to the underside of the substrate as shown in figs. 3-4.
Addressing claim 6, figs. 6-7 show the photovoltaic modules are operative connected to junction boxes to export the generated power; therefore, they are capable of being tested.
Addressing claim 8, when the second pane 3 as the structural equivalence to the claimed substrate, the layer 2 is qualified as the claimed surface coating provided on the upper side of the substrate which is configured to allow at least 80% of incident sunlight striking the upper side [0032-0033] to pass through the glass plate, wherein the surface coating is configured such that a structure of the photovoltaic module arranged and/or the photovoltaic modules are not or at least entirely visible to a human observer from an outside environment when viewing the upper the upper side of the substrate from a top location (paragraph [0033] discloses the first pane 2, as the claimed surface coating, is not completely transparent but allows 85% of visible light to pass through, which renders the structure of the photovoltaic module arrangement and/or the photovoltaic modules “at least one entirely visible a human observer from an outside environment when viewing the upper the upper side of the substrate from a top location” as claimed).
When the first pane 2 as the structural equivalence to the claimed substrate, the optical interference coating 9 is the claimed surface coating provided on the upper side of the substrate which is configured to allow at least 80% of the incident sunlight striking the upper side to pass through the glass plate [0032-0033], wherein the surface coating is configured such that a structure of the photovoltaic module arranged and/or the photovoltaic modules are not or at least entirely visible to a human observer from an outside environment when viewing the upper the upper side of the substrate from a top location (paragraph [0033] discloses the first pane 2, as the claimed surface coating, is not completely transparent but allows 85% of visible light to pass through, which renders the structure of the photovoltaic module arrangement and/or the photovoltaic modules “at least one entirely visible a human observer from an outside environment when viewing the upper the upper side of the substrate from a top location” as claimed).
Addressing claim 9, fig. 3 shows a foil layer 3 with a temperature-activatable adhesive layer 13 (layer 13 is described as an intermediate layer made of PVB or EVA, [0031], which are known heat activatable adhesive material) and a surface coating 9’ (figs. 17-18) is provided on the underside of the substrate 2 which is configured to allow at least 80% of incident sunlight striking the upper side to pass through the glass plate [0033].
Addressing claim 12, paragraph [0011] discloses the substrate and the plurality of photovoltaic modules are arranged in a row or in an array and are combined into one statically self-supporting unit, which implicitly means that the disclosed statically self-supporting unit is structurally configured to be held on one side thereof or at maximum two sides thereof when installed.
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palm et al. (US 2023/0085983) in view of Bayoumi (US 10,355,154).
Addressing claim 10, Palm discloses the structural element, which includes the substrate, is configured as building integrated solar modules [0020] for covering building wall [0027]. However, Palm is silent regarding the surface area of the structure element in the claimed range.
Bayoumi discloses building integrated photovoltaic module (Abstract) that is configured to cover the outer surface of the building with surface area of 10 m2, 100 m2 or 200 m2 (col. 8 ln 61 to col. 9 ln 9).
At the time of the effective filing date of the invention and lacking evidence showing unexpected results associated with the claimed surface are range, one of ordinary skill in the art would have found it obvious to modify the structure element of Palm by performing routine experimentation with the surface area of the structure element along with the surface area of the substrate in the range disclosed by Bayoumi in order to optimize the coverage of the structural element with respect to the outer surface of a given building. Therefore, one would have arrived at the claimed surface area when performing routine experimentation with the surface area of the structure element along with the surface area of the substrate in the range disclosed by Bayoumi in order to optimize the coverage of the structural element with respect to the outer surface of a given building.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palm et al. (US 2023/0085983) in view of Watts (US 2019/00006547).
Addressing claim 11, Palm discloses in paragraph [0036] the substrate is a curved pane of glass, which inherently has a predefined or definable bending radius.
Palm is silent regarding the substrate is a fully tempered pane of glass or a plate of semi-tempered glass.
Watts discloses building integrated photovoltaic module; wherein the substrates are made of tempered glass [0078].
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the substrate in the structural element of Palm with the known tempered glass substrate disclosed by Watts in order to strengthen and toughen the structural element via the strengthened and toughened glass substrate (Watts, [0078]).
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palm et al. (US 2023/0085983) in view of Umemoto et al. (US 2002/0153038).
Addressing claim 13, for the limitation that is recited in claim 1, please see the rejection of claim 1 above. Palm discloses the photovoltaic modules are laminated onto an underside of the monolithic glass plate opposite from the upper side; however, Palm is silent the lamination is done through autoclave process.
Umemoto discloses a lamination process for photovoltaic module; wherein, the layers are laminated together using autoclaving [0060].
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the lamination step of Palm with the known autoclaving process disclosed by Umemoto in order to laminate the photovoltaic modules and the glass plate together (Rationale B, KSR decision, MPEP 2143).
Addressing claim 15, figs. 6-7 show the photovoltaic modules are operative connected to junction boxes to export the generated power; therefore, they are capable of being tested.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palm et al. (US 2023/0085983) in view of Umemoto et al. (US 2002/0153038) as applied to claims 13 and 15 above, and further in view of Bayoumi (US 10,355,154).
Addressing claim 14, Palm and Umemoto are silent regarding the claimed surface area range.
Bayoumi discloses building integrated photovoltaic module (Abstract) that is configured to cover the outer surface of the building with surface area of 10 m2, 100 m2 or 200 m2 (col. 8 ln 61 to col. 9 ln 9).
At the time of the effective filing date of the invention and lacking evidence showing unexpected results associated with the claimed surface are range, one of ordinary skill in the art would have found it obvious to modify the structure element of Palm by performing routine experimentation with the surface area of the structure element along with the surface area of the substrate in the range disclosed by Bayoumi in order to optimize the coverage of the structural element with respect to the outer surface of a given building. Therefore, one would have arrived at the claimed surface area when performing routine experimentation with the surface area of the structure element along with the surface area of the substrate in the range disclosed by Bayoumi in order to optimize the coverage of the structural element with respect to the outer surface of a given building.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive for the following reasons:
With regard to the rejection of claims 1-6, 8-9 and 12 as being anticipated by Palm, the Applicant argued that Palm does not disclose or suggest the limitation “a plurality of pre-existing, fully encapsulated and autonomous photovoltaic modules arranged in a row or in an away, wherein the photovoltaic modules are laminated onto an underside of the substrate opposite form the upper side” because Palm discloses constructing the photovoltaic layers as an integral part of the overall laminated pane structure itself. The argument is not persuasive because Palm actually discloses in paragraph [0174] that the photovoltaic modules are pre-fabricated and are laminated onto the underside of the substrate opposite form the upper side. The photovoltaic modules disclosed by Palm include the solar cells are that fully encapsulated and are structurally capable of generating electrical power from sunlight, which also qualify them as being autonomous. For the reasons above, Examiner maintains the position that claims 1-6, 8-9 and 12 are anticipated by Palm.
With regard to the rejection of claims 13 and 15 as being unpatentable over the disclosure of Pam in view of Umemoto, the Applicant argued that because Palm does not disclose the claimed pre-existing, fully encapsulated and autonomous photovoltaic modules; therefore, the limitation of claims 13 and 15 are not obvious based on the teaching of Palm in view of Umemoto. The argument is not persuasive because paragraph [0174] of Palm clearly discloses that the photovoltaic modules are pre-fabricated before being laminated onto the underside of the substrate; therefore, the photovoltaic modules of Palm are the structural equivalence to the claimed pre-existing, fully encapsulated and autonomous photovoltaic modules and the lamination process disclosed by Palm does not involve laminating unecapsulated PV cells but the lamination of fully formed photovoltaic modules with fully encapsulated PV cells onto the underside of the substrate, exactly the same process of current application. Furthermore, the combination Palm and Umemoto does not teach away from the claimed method but they teach exactly the claimed method. For the reasons above, Examiner maintains the position that claims 13 and 15 are unpatentable over the disclosure of Palm in view of Umemoto.
The arguments regarding the rejection of the dependent claims of claims 1 and 13 are not persuasive because the arguments regarding the rejection of claims 1 and 13 are not persuasive.
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.
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/BACH T DINH/Primary Examiner, Art Unit 1726 04/14/2026
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