DETAILED ACTION
Summary
This is the first action on the merits for application 18/859,974, filed October 24, 2024.
This is a 371 national stage filing for PCT/EP2023/058031, filed March 28, 2023, also claiming priority to French document FR2203836, filed April 25, 2022.
Claims 1-11 are pending.
Election/Restrictions
Applicant's election with traverse of group I in the reply filed on May 19, 2026 is acknowledged. The traversal is on the ground(s) that JANGSEOP et al does not teach the same technical advantages, “a vertical photovoltaic system” according to the specification, a means for positioning as claimed, and features a different method of rotation that allows easy following of terrain, not tracking of the sun. This is not found persuasive for the following reasons.
Differing technical advantages are not persuasive, especially if those advantages are not indicative of the invention articulated in the claim.
The Applicant points to the specification’s description of a “vertical photovoltaic system” but it is the position of the Examiner it both does not qualify as a special technical definition and does not require interpretation of the claims as strictly that of the figures with the photovoltaic panel being only vertically positioned. While the vertical photovoltaic system would require a vertical component, which is consistent with the plain meaning and the listing in the specification, the claim interpretation does not require the photovoltaic panel to be the substantially vertical component. In JANGSEOP et al, the posts are substantially vertical compared to the horizontal installation plane, reading on the claim. Therefore, this is not persuasive. If this Applicant intends the claims to be limited to the device of the figures, the Applicant is encouraged to amend the claim to make clear what part of the system is defined as substantially vertical relative to an installation surface.
The Applicant specifically argues “if fixing an angular position affects the verticality of the installation, then such an installation is no longer considered vertical” in their remarks. This is not true. While the verticality of the panel is adjustable in JANGSEOP et al, the claim does not limit this interpretation because the claim does not require the panel to be vertical. The fixed vertical posts allow for a fixed vertical photovoltaic system and the adjustment of the angle of the photovoltaic or positioning means allowing for the variable angular position of installation, does not change the vertical installation. Moreover, the timing of installation in the device of JANGSEOP et al does not impact the structure of use.
The use of the device for solar tracking does not change the structure which is utilized at installation, which also reads on the operational structure. The use of the device of JANGSEOP et al for operation in a different capacity as that of the instant application does not change the structure reading on the instant application. Expressly, the applicant states JANGSEOP et al utilizes an axis of rotation which allows for adjustment during operation, not during installation, but it is unclear when installation ends. When installed and the angle is adjusted prior to use, this still reads on the instant claim. While the Examiner sees the Applicant intends the claim to read narrowly on a device featuring a vertical photovoltaic module capable of installation on varying terrain, the claim simply is not as narrowly written.
For at least these reasons, the arguments are not persuasive. The claims still lack a shared technical feature which is special relative to the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1-10 are objected to because of the following informalities:
Each claim should start with an “A” and “The”, as in “A fixed vertical photovoltaic system…” (claim 1) or “The system” (claim 2). Please amend all the claims with this convention in mind.
In line 7 of claim 1, please correct “base” to “structure base” for clarity.
Appropriate correction is required.
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 refers to “a means for positioning”. The structure accompanying this term is addressed in the specification on page 2 as filed or paragraphs [0018] and [0020] of the instant PG PUB. Specifically, the structure directed to the means for positioning or positioning means is “a housing forming a shoulder, the bar comprising a shape complementary with the housing” or “at least one slot configured to allow the positioning of the bar”. To be clear, the bar is interpreted to be part of the structure not the positioning means. For this reason, the positioning means is interpreted to include housing forming a shoulder to interface with the structure or at least one slot.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a means for securing the angular position of the means for positioning the structure relative to the structure base” in claim 1, “additional means for positioning the structure” in claim 7,.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
To be clear, “a means for securing” is not being interpreted under 35 USC 112(f) because no structure in the specification is specifically taught to be the means for securing.
Further, “additional means for positioning the structure” is not being interpreted under 35 USC 112(f) because no structure is present in the specification to provide the functionality within the claim.
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 6, 8 and 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.
Claim 6 (which depends from claim 2) requires “one of the elements from amongst the positioning means and the bar”, yet claim 2 requires the positioning means to include the bar. It is unclear how it can be a separate component to be chosen and part of the positioning means at the same time. Please clarify if the bar is or is not part of the positioning means and amend so it is not both.
Claim 8 is unclear in how it interfaces with the means for positioning between the structure base and structure of claim 1. These structure and structure bases are identified as other components and do not utilize the same rotational functionality of claim 1, as shown in the difference between figures 1 and 15. For this reason, claim 8 does not seem to exist in the same framework as claim 1 and is therefore unclear how both structures are present.
Claim 9 is also rejected as being dependent from rejected base claim 8.
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.
Claim(s) 1, 2, 4-6, and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JANGSEOP et al (KR 10/1192686B1, wherein citations are made to the English machine translation provided with the restriction requirement).
Regarding claim 1, JANGSEOP et al teaches a fixed vertical photovoltaic system (p 8, l 13-15 requires a system or part of the system to have a plane vertical to installation, wherein the posts of JANGSEOP et al (40) are vertically oriented and fixed in the ground (see figure 1), indicating a fixed, vertical photovoltaic system), characterized in that it comprises at least:
- a structure (20/30);
- a photovoltaic module (10) supported by the structure;
- a structure base (40) configured to be rigidly attached to an installation surface (see figure 1, blocks);
- a means for positioning the structure on the base (openings 32 and 33 and component 41 work together to position the structure 20/30 on the base 40, wherein opening 33 reads on the slot of the positioning means discussed in the specification at p 10, last two lines-p 11, first line), the positioning means being at least free to rotate (paragraph 2 of page 3) and configured to position the structure according to a variable angular position of installation (variable angle of installation is equivalent to the angle of the panel selected via the openings 44 of figure 1 when installed); and
- a means (8/43/44) for securing the angular position of the means for positioning the structure relative to the structure base (shown to secure the angle of installation in figures 1 and 2).
Regarding claim 2, JANGSEOP et al teaches a system (figures 1-3) wherein:
- the structure (20/30) comprises at least one bar (30) configured to be rigidly attached to at least one module (10); and
- the structure base (40) comprises the means (32/33/41, herein component 41) for positioning the structure (20/30).
Regarding claim 4, JANGSEOP et al teaches the positioning means (32/33/41) also comprises at least one slot (32 or 33) configured to allow the positioning of the bar (30) according to a plurality of angular positions (via engagement of slot 32 with structure base 40 with components 42/43/44/B).
Regarding claim 5, JANGSEOP et al teaches
- the structure (20/30) comprises at least one bar (20) configured to be rigidly attached to at least one module (10); and
- a positioning means (32/33/41) arranged between the structure base (40) and the structure (herein interpreted as 20).
Regarding claim 6, JANGSEOP et al teaches wherein one of the elements from amongst the positioning means (41) and the bar (20/30) comprises a hole (33 in component 30), the other element comprising a shaft (41), the hole and the shaft forming a pivot link with axis of rotation (around the shaft 41) perpendicular to an axis of the bar (axis along the thickness of the bar).
Regarding claim 8, JANGSEOP et al teaches
- the structure (20/30) comprises at least one cross-member (30); and
- the structure base (40) comprises the means (41/43/42/44/B) for positioning this cross-member (30).
Regarding claim 9, JANGSEOP et al teaches wherein one of the elements from amongst the positioning means (41/42/43/44/B) and the cross-member (30) comprises a hole (33), the other element comprising a shaft (41), the hole (33) and the shaft (41) forming a pivot link with axis of rotation (horizontal axis of component 30) perpendicular to an axis (D) of the structure base (vertical axis of base 40).
Regarding claim 10, JANGSEOP et al teaches the photovoltaic module (10) is rectangular (see figure 1), the module being secured to the structure (20/30) and oriented so that a short side of the module is arranged facing the installation surface (ground, wherein the bottom side of the module is the shortest and is shown with the rear side of the short side facing the ground).
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KATS et al (US PG PUB 2010/0101630).
Regarding claim 1, KATS et al teaches a fixed vertical photovoltaic system (p 8, l 13-15 requires a system or part of the system to have a plane vertical to installation, wherein the posts of KATS et al (130) are vertically oriented and fixed in the ground (see figure 2), indicating a fixed, vertical photovoltaic system), characterized in that it comprises at least:
- a structure (160);
- a photovoltaic module (200) supported by the structure;
- a structure base (120/130) configured to be rigidly attached to an installation surface (see figure 1, blocks);
- a means for positioning the structure on the base (161/150, wherein opening in 161 reads on the slot of the positioning means discussed in the specification at p 10, last two lines-p 11, first line), the positioning means being at least free to rotate (paragraph [0048]) and configured to position the structure according to a variable angular position of installation (variable angle of installation is equivalent to the angle of the panel selected via the openings rotating 150 when installed, including selection of 200 in figure 5 (width parallel with bar 120) to angled as in figure 2; and
- a means (180, paragraph [0051]) for securing the angular position of the means for positioning the structure relative to the structure base (paragraph [0051]).
Regarding claim 7, KATS et al teaches
- an additional means (150 top and 150 bottom) for positioning the structure (160) on the base (120); and the additional positioning means being free to rotate (via components 166/141/142) and comprising two elements (top 150/bottom 150), each element delimiting a different surface (see figure 7, flat to each other), the surfaces parallel and in contact being configured to form a pivot link (see figure 7) with axis of rotation (axis of rotation is vertically through fastener 166, figure 7) intersecting the installation surface (ground below, see figure 1 for context of figure 7).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over JANGSEOP et al, in view of DUAN et al (US PG PB 2022/0329200).
Regarding claim 3, while JANGSEOP et al teaches positioning means (32/33/41) and bar (30) wherein the shape of these components complements each other to allow for rotation, JANGSEOP et al fails to teach the positioning means comprises a housing forming a shoulder.
DUAN et al teaches a solar panel with a rotation assembly (5) and bar engagement (10/13), just as in JANGSEOP et al, in figure 4. DUAN et al further teaches the rotational components comprise a ball and socket joint in paragraph [0036] wherein the component (5) comprises a housing (5) forming the socket portion of the joint and the end of the bar (portion to the right of 9/10 within the housing 5) to form the ball or complementing shape, which allows for rotation within a solitary rotational assembly (paragraph [0036]).
At the time of filing, it would have been obvious to one of ordinary skill in the art to utilize the ball and socket attachment of DUAN et al as the positioning means of JANGSEOP et al so as to allows for rotation within a solitary rotational assembly.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KR 2011/0050799 also reads on claim 1 in an anticipatory capacity.
US PG PUB 20200153380 is directed to a traditional, vertically oriented fixed system, as in figure 1, but lacks the claimed positioning means which allow for rotation.
The Applicant is strongly encouraged to amend the claim language to include the premise the photovoltaic panel is in a fixed, vertical orientation on the structure base to advance prosecution.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at (303)297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KOURTNEY R S CARLSON/ Primary Examiner, Art Unit 1721 7/28/2026
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