DETAILED ACTION
This is the first office action on the merits for 18/836,972, filed 8/8/2024, which is a national stage entry of PCT/NO2023/050034, filed 2/13/2023, which claims priority to Norwegian application NO20220196, filed 2/11/2022.
Claims 1-20 are pending, Claims 11-12 are withdrawn, and Claims 1-10 and 13-20 are considered herein.
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 .
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
U.S. Patent Application Publication 2012/0234377 A1: This reference teaches a photovoltaic array secured to a roof, wherein the array is anchored to the rafters of the roof (Fig. 1, paragraph [0044]).
U.S. Patent Application Publication 2020/0266754 A1: This reference teaches a photovoltaic array forming a roof (Fig. 1).
Election/Restrictions
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/1/2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 1 recites the limitation “fastening means.” This limitation is interpreted to include screws and their functional equivalents, consistent with paragraph [0020] of the published instant specification.
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 2-3, 8-9, 13-16, and 20 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 2 recites “a width of the solar panels is adapted to the space between the rafters.” The metes and bounds of this limitation are unclear, because the structural relationship required by “adapted to the space between the rafters” is unclear. It is unclear whether this requires that the width of the solar panels be equal to/similar to/smaller than/larger than the spacing between the rafters.
Claims 3, 13-16, and 20 is indefinite, because of their dependence on Claim 2.
Claims 8 and 20 recite “wherein the clamping profile is divided into shorter lengths so that more clamping profiles are assembled in the longitudinal direction of the roof.” This limitation is indefinite, because it is unclear what the lengths are “shorter” than, and how many clamping profiles are constituted by the “more” limitation.
Claims 8 and 20 further recite “the clamping profile.” This limitation is indefinite, because Claims 8 and 20 recite a plurality of clamping profiles. Therefore, it is unclear to which of the plurality of clamping profiles are referred by “the clamping profile” in Claims 8 and 20.
Claim 9 is indefinite, because of its dependence on Claim 8.
Claim 9 recites “a length of the clamping profile is adapted to a length of the solar panels.” The metes and bounds of this limitation are unclear, because the structural relationship required by “adapted to a length of the solar panels” is unclear. It is unclear whether this requires that the length of the clamping profiles be equal to/similar to/smaller than/larger than the length of the solar panels.
The limitation “a length of the clamping profile” in Claim 9 is further indefinite, because Claim 8 recites a plurality of clamping profiles. Therefore, it is unclear to which of the plurality of clamping profiles are referred by “the clamping profile” in Claim 9.
Claim 9 further recites “the clamping profile is formed with male/female connections for ensuring correct alignment.” This limitation is indefinite, because the metes and bounds of “male/female connections” are unclear. It is unclear whether the clamping profile must have male, female, or both types of connections to meet the limitations of Claim 9. It is also unclear what “ensuring correct alignment” requires; i.e. what structures must be aligned to achieve the “correct alignment.”
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 1-6 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mimura, et al. (U.S. Patent 6,182,403 B1).
In reference to Claim 1, Mimura teaches a solar cell system on roof (Figs. 8-9, column 12, line 49, through column 13, line 12).
The solar cell system comprises a plurality of solar panels 103 assembled in a longitudinal direction of the roof and in a width direction of the roof.
The inset below teaches that the solar panels 103 are adjoining each other, without overlap, in the longitudinal direction of the roof, and where the solar panels are spaced apart in the width direction of the roof.
Figs. 8-9 teach that a clamping profile 104/107 is arranged in the longitudinal direction of the roof for clamping the solar panels down against the roof and for covering a gap between the solar panels in the width direction.
Mimura teaches that the clamping profile 104/107 is fastened directly to the roof via fastening means (i.e. via screws 111 that attach the portion 104 to the sheathing roof board and via drill screws to the underlying rafter, column 13, lines 3-7).
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In reference to Claim 2, it is noted that Claim 2 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the claim limitations.
Fig. 8 teaches that the roof comprises a plurality of rafters 110 placed with a space between them.
Fig. 8 further teaches that a width of the solar panels 103 is adapted to (i.e. similar to) the space between the rafters.
In reference to Claim 3, Mimura teaches that the clamping profile 104/107 is fastened directly to the rafters of the roof (via drill screws, column 13, lines 3-7).
In reference to Claims 4, 13, and 14, Mimura teaches that a lower solar panel in the longitudinal direction of the roof is fastened to the roof via an anchor (i.e. via screws 111 and the drill screws that secure the clamping profile to the rafters, Fig. 9, column 13, lines 3-7).
Mimura teaches that a remainder of the solar panels 103 in the longitudinal direction of the roof are resting against the lower solar panel without being directly fastened to the roof, because he teaches that none of the solar panels 103 are directly attached to the roof.
In reference to Claim 5, Mimura teaches that the anchor (i.e. the screws 111 and drill screws that attach the clamping profile 104/107 to the roof) is fastened to a lower end of the clamping profile 104/107.
In reference to Claim 6, Mimura teaches that the clamping profile 104/107 is fastened via a plurality of spaced-apart screws in the longitudinal direction of the roof and directly to rafters 110 of the roof (Fig. 9, column 13, lines 3-7).
Claims 1, 4-5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schwarze (U.S. Patent 2008/0066801 A1).
In reference to Claim 1, Schwarze teaches solar cell system on roof (Fig. 1, with details given in Figs. 2-5, paragraphs [0033]-[0049]).
Fig. 1 teaches that the solar cell system comprises a plurality of solar panels 14 assembled in a longitudinal direction of the roof and in a width direction of the roof, where the solar panels are adjoining each other, without overlap, in the longitudinal direction of the roof, and where the solar panels are spaced apart in the width direction of the roof (as shown in the inset below).
Figs. 1-2 and 4-5 teach that a clamping profile 20 is arranged in the longitudinal direction of the roof for clamping the solar panels down against the roof and for covering a gap between the solar panels in the width direction (paragraphs [0047]-[0048]).
Schwarze teaches that a tensioning wire 26 passes through the bore 68 in the clamping profile 20, and that the tensioning wire 26 is then attached directly to the roof (paragraphs [0034], [0048]).
Therefore, Schwarze teaches that the clamping profile 20 is fastened directly to the roof via fastening means (i.e. via tensioning cable 26 and the means that attaches the tensioning cable 26 to the roof). These fastening means are a functional equivalent to the fastening means in the instant specification, because they function to attach the solar cell array of Schwarze to the underlying roof structure at discrete points.
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In reference to Claim 4, Schwarze teaches that a lower solar panel in the longitudinal direction of the roof is fastened to the roof via an anchor (i.e. via tensioning cable and its associated connection to the roof, Fig. 1).
Fig. 1 teaches that a remainder of the solar panels in the longitudinal direction of the roof are resting against the lower solar panel without being directly fastened to the roof.
In reference to Claim 5, Schwarze teaches that a tensioning wire 26 passes through the bore 68 in the clamping profile 20, and that the tensioning wire 26 is then attached directly to the roof (paragraphs [0034], [0048]).
Therefore, Schwarze teaches that the anchor 26 is fastened to a lower end of the clamping profile 20 (via bore 68).
In reference to Claim 7, Schwarze teaches that the solar cell system comprises a power pack (i.e. the tensioning cable system) which pre-tensions the solar panels in the longitudinal direction of the roof from a top of the roof and in a direction towards a lower solar panel in the longitudinal direction of the roof (i.e. by holding the modules to the roof under tension, paragraph [0034]).
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 8-9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mimura, et al. (U.S. Patent 6,182,403 B1).
In reference to Claims 8 and 20, it is noted that Claim 8 is indefinite, as described above. Therefore, the following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Mimura teaches that the clamping profile 104/107 is formed with male/female connections for ensuring correct alignment. Specifically, Fig. 9 teaches that the clamping profile item 104 has “male,” i.e. protruding, portions that mate into “female,” i.e. recessed, portions in item 107 to achieve correct alignment of items 104 and 107 with each other.
Mimura does not teach that the clamping profile 104/107 is divided into shorter lengths so that more clamping profiles are assembled in the longitudinal direction of the roof in the embodiment of Figs. 8-9.
However, in separate embodiments, he teaches that the clamping profile components 104 may be suitably formed to be shorter than an edge of an individual panel, with multiple clamping profile components arranged along the edge of a single solar module (Fig. 1).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the device of Figs. 8-9 of Mimura so that the clamping profile component 104 is separated into multiple, shorter clamping profile components, because Mimura teaches that this is a suitable form for the clamping profile components 104 of the device of his invention (Figs. 1).
This modification teaches the limitations of Claims 8 and 20, wherein the clamping profile 104/107 is divided into shorter lengths so that more clamping profiles are assembled in the longitudinal direction of the roof.
The change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
This modification teaches the limitations of Claim 9, wherein a length of the clamping profile is adapted to a length of the solar panels (i.e. is shorter than a length of the solar panels).
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mimura, et al. (U.S. Patent 6,182,403 B1), in view of Schwarze (U.S. Patent 2008/0066801 A1).
In reference to Claims 15-19, Mimura does not teach that the solar cell system of his invention comprises a power pack which pre-tensions the solar panels in the longitudinal direction of the roof from a top of the roof and in a direction towards a lower solar panel in the longitudinal direction of the roof.
To solve the same problem of providing a roof-mounted solar panel array, Schwarze teaches a solar cell system (Fig. 1, with details given in Figs. 2-5, paragraphs [0033]-[0049]) comprising a power pack (i.e. a tensioning cable system, paragraph [0034]) which pre-tensions the solar panels in the longitudinal direction of the roof from a top of the roof and in a direction towards a lower solar panel in the longitudinal direction of the roof (i.e. by holding the modules to the roof under tension, Fig. 1, paragraph [0034]).
Schwarze teaches that the tensioning cable system of his invention provides the benefit of securing the array to the roof with improved durability (paragraph [0012]), improved wind stability (paragraph [0013]), and improved aerodynamics (paragraph [0017]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the array of Mimura with the cable tensioning system of Schwarze, in order to achieve the taught benefits of securing the array to the roof with improved durability (paragraph [0012]), improved wind stability (paragraph [0013]), and improved aerodynamics (paragraph [0017]).
Modifying the array of Mimura with the cable tensioning system of Schwarze teaches the limitations of Claims 15-19, wherein the solar cell system comprises a power pack which pre-tensions the solar panels in the longitudinal direction of the roof from a top of the roof and in a direction towards a lower solar panel in the longitudinal direction of the roof.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mimura, et al. (U.S. Patent 6,182,403 B1), in view of West, et al. (U.S. Patent Application Publication 2012/0301661 A1).
In reference to Claim 10, Mimura does not teach that the system of his invention comprises the seal strip of Claim 10.
To solve the same problem of providing a roof-mounted solar array, West teaches a system in which a roof-mounted solar array comprises a skirt surrounding all sides of the array (Figs. 13A-B, paragraph [0058]). West teaches that the array skirts of his invention provide the benefits of improved fire safety, improved aesthetics, and improved structural performance of the array (paragraph [0049]).
West teaches that the skirt of his invention comprises louvers 79 (paragraph [0058]).
West does not teach that the skirts of his invention are necessarily elastic.
However, he teaches that the skirts of his invention may be suitably modified to have a flexible lower surface, to provide the benefit of flowing the curve of the underlying roof (paragraph [0028]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the array of Mimura to be surrounded on all edges by the skirt of West, and to have modified the bottom surface of the skirt of West to be flexible, to achieve the taught benefits of (1) improved fire safety, improved aesthetics, and improved structural performance of the array, and (2) allowing the skirt to follow the contour of the underlying roof.
This modification teaches the limitations of Claim 10, wherein abutment of the solar panels against the roof is constituted by a seal strip in an elastic material (i.e. the skirt of West), and wherein the seal strip is designed with side channels which extend in an entire extent of the roof in the longitudinal direction (corresponding to the louvers and/or angled sides of the skirt of West, as shown in Fig. 13A), and which are arranged to divert water (i.e. structurally capable of diverting water).
It is noted that “arranged to divert water” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schwarze (U.S. Patent 2008/0066801 A1), in view of West, et al. (U.S. Patent Application Publication 2012/0301661 A1).
In reference to Claim 10, Schwarze does not teach that the system of his invention comprises the seal strip of Claim 10.
To solve the same problem of providing a roof-mounted solar array, West teaches a system in which a roof-mounted solar array comprises a skirt surrounding all sides of the array (Figs. 13A-B, paragraph [0058]). West teaches that the array skirts of his invention provide the benefits of improved fire safety, improved aesthetics, and improved structural performance of the array (paragraph [0049]).
West teaches that the skirt of his invention comprises louvers 79 (paragraph [0058]).
West does not teach that the skirts of his invention are necessarily elastic.
However, he teaches that the skirts of his invention may be suitably modified to have a flexible lower surface, to provide the benefit of flowing the curve of the underlying roof (paragraph [0028]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the array of Schwarze to be surrounded on all edges by the skirt of West, and to have modified the bottom surface of the skirt of West to be flexible, to achieve the taught benefits of (1) improved fire safety, improved aesthetics, and improved structural performance of the array, and (2) allowing the skirt to follow the contour of the underlying roof.
This modification teaches the limitations of Claim 10, wherein abutment of the solar panels against the roof is constituted by a seal strip in an elastic material (i.e. the skirt of West), and wherein the seal strip is designed with side channels which extend in an entire extent of the roof in the longitudinal direction (corresponding to the louvers and/or angled sides of the skirt of West, as shown in Fig. 13A), and which are arranged to divert water (i.e. structurally capable of diverting water).
It is noted that “arranged to divert water” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Conclusion
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/SADIE WHITE/Primary Examiner, Art Unit 1721