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 .
Election/Restrictions
Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement. In response to the argument that examination of all of the species is not believed to create an undue burden on the USPTO, Examiner indicates that searching for the various elements of the species and formulating and communicating the findings creates such undue burden.
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 14-20 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 14 recites “a” first group and “a” second group, which is confusing. Are these groups the same as the first and second groups previously recited?
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 1-4, 10-14, and 17-20 -are rejected under 35 U.S.C. 103 as being unpatentable over Liu (11,431,280) in view of Flanigan (2018/0115275).
Liu teaches a roofing system comprising a plurality of roofing panels 200 comprising:
a first group of roofing panels, wherein each roofing panel of the first group is a solar roofing panel, col. 1, lines 37-39, and includes:
a light transmissible front layer 204 having a front surface and a rear surface,
a back layer 206 having a front surface and a rear surface,
photovoltaic cells 202 disposed between the rear surface of the front layer and the front surface of the back layer, and
a color-matching surface (212 “paint layer”) disposed behind the front layer, col. 1, lines 48-59.
a second group of roofing panels, wherein each roofing panel of the second group is a non-solar roofing panel including a substrate, col. 1, lines 37-39,
wherein visual characteristics of a front face of the roofing panels of the first group and a front face of roofing panels of the second group match, col. 4, lines 21-24.
Liu does not expressly teach each roofing panel of the second group is a cuttable non-solar roofing panel, the substrate being cuttable. Flanigan teaches each roofing panel of a second group is a cuttable non-solar roofing panel, the substrate being cuttable, para. 90. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention each roofing panel of the second group to be a cuttable non-solar roofing panel to be able to trim the edge panels.
2. Liu in view of Flanigan teaches the roofing system according to claim 1, Liu further teaching the color-matching surface of each roofing panel of the first group is formed by a coating (“paint”).
3. Liu in view of Flanigan teaches the roofing system according to claim 2, Liu further teaching the coating includes a pattern associated with the shape of the photovoltaic cells and is applied over the rear surface of back layer, col. 1, lines 48-59.
4. Liu in view of Flanigan teaches the roofing system according to claim 2, Liu further teaching the coating extends across the roofing panel and is applied over the rear surface of the back layer, col. 1, lines 48-59, fig. 2.
10. Liu in view of Flanigan teaches the roofing system according to claim 1, Liu further teaching the color-matching surface of each roofing panel of the first group is formed by the back layer, col. 1, lines 48-59, fig. 2.
11. Liu in view of Flanigan teaches the roofing system according to claim 1, Liu further teaching at least one of the front layer and the back layer of each roofing panel of the first group is formed of glass (“glass”).
12-13. Liu in view of Flanigan teaches the roofing system according to claim 1, Flanigan further teaching the cuttable substrate is formed of porcelain, para. 56.
14. Liu teaches a method of installing a roofing system according to claim 1, the method comprising:
arranging the first group of roofing panels on a support structure (roof deck), wherein each roofing panel of the first group is a solar roofing panel and includes:
a front layer 204 having a front surface and a rear surface,
a back layer 206 having a front surface and a rear surface,
photovoltaic cells 202 disposed between the rear surface of the front layer and the front surface of the back layer, and
a color-matching surface (paint) disposed behind the front layer,
each roofing panel of the second group being a non-solar roofing panel including a substrate; and
arranging the second group of roofing panels on the support structure; wherein visual characteristics of a front face of the roofing panels of the first group and a front face of roofing panels of the second group match, col. 4, lines 21-24.
Liu does not teach cutting a plurality of other roofing panels to form the second group of roofing panels, wherein each roofing panel of the second group is a cuttable non-solar roofing panel and includes a cuttable substrate. Flanigan teaches cutting a plurality of other roofing panels to form the second group of roofing panels, wherein each roofing panel of the second group is a cuttable non-solar roofing panel. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention each roofing panel of the second group to be a cuttable non-solar roofing panel to be able to trim the edge panels.
17. Liu in view of Flanigan and in further view of Lewis teaches the roofing system of claim 14, Flanigan further comprises arranging a third group of roofing panels 804 on the support structure, wherein each roofing panel of the third group is a non- solar roofing panel.
18. Liu in view of Flanigan and in further view of Lewis teaches the roofing system of claim 17, Liu further comprises each roofing panel of two groups includes the same panel layers, col. 2, lines 36-40, (upper and lower layers).
19. Liu in view of Flanigan and in further view of Lewis teaches the roofing system of claim 17, Liu in view Flanigan further comprises each roofing panel of the third group (Flanigan teaches the third group) including a front layer having a front surface and a rear surface, and a visible layer including a color-matching surface disposed behind the front layer (Liu).
20. Liu in view of Flanigan teaches the roofing system of claim 14, Liu further comprises arranging the first group of roofing panels on the support structure includes arranging the first group of roofing panels in rows, fig. 1.
Claim 5 -is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Flanigan and in further view of Kennedy (8,893,711).
The coating is not expressly taught as an inorganic enamel coating. Kenedy teaches a coating 64 is an inorganic enamel coating. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the coating to be an inorganic enamel coating for strength.
Claims 15-16 -are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Flanigan and in further view of Lewis (6,354,058).
15-16. Flanigan does not expressly teach cutting the plurality of other roofing panels using a tile cutter, including scoring a surface of each of the other roofing panels to form a fracture line and breaking the other roofing panels along the fracture line. Lewis teaches cutting panels using a tile cutter, including scoring a surface of each of the panels to form a fracture line and breaking the other roofing panels along the fracture line. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cut using a tile cutter, including scoring a surface of each of the other roofing panels to form a fracture line and breaking the other roofing panels along the fracture line “For repeatable, clean cuts”, col. 3, lines 19-21.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Brian Glessner can be reached at (571)272-6754. 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 J KENNY/ Examiner, Art Unit 3633
Prosecution Insights