DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 03/02/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-4, 6-14, 16, 17 and 23 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 05/12/2026 is considered and signed IDS form is attached.
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 10-14 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.
Claim 10 recites “a secondary layer disposed opposite to the encapsulating layer and adjacent to the heat-resistant layer, the secondary layer comprising polyethylene in an amount of 50% to 100% by weight.” Claim 1 recites “a heat resistant layer defining an exterior surface of the encapsulant film”. While there is support for a secondary layer disposed opposite to the encapsulating layer and adjacent to the heat-resistant layer, such that the secondary layer defines an exterior surface of the encapsulant film and heat resistant layer is disposed between secondary layer and encapsulant layer (see Figure 4 and page 17, lines 3-7 of present specification), there is no support for a secondary layer disposed opposite to the encapsulating layer and adjacent to the heat-resistant layer such that the heat-resistant layer defines an exterior surface of the encapsulant film. This rejection affects all the dependent claims.
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.
Claims 1, 3, 4, 8-10, 12-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Akaike et al. (EP 2613362 A1 cited in IDS), taken in view of evidence by Seth (WO 01/47697 A1).
Regarding claim 1, Akaike et al. disclose a cover film (encapsulant film) for solar cell modules (photovoltaic module) (see Abstract). The cover film comprises a weather-resistant layer (heat-resistant layer) 10A laminated to an encapsulant resin layer 10B (see page 27, Figure 1 and paragraphs 0015, 0155).
The weather-resistant layer has heat resistance (see paragraph 0018). That is, the weather-resistant layer reads on a heat resistant layer. The weather-resistant layer can comprise a polycarbonate resin (see paragraph 0018). The thickness of the weather-resistant layer is 5 to 200 microns (se paragraph 0027). Based on the Figure, the weather-resistant layer heat resistant layer) defines an exterior surface of the cover film (encapsulant film) (see page 27, Figure 1 and paragraph 0155).
The encapsulant resin layer comprises a resin composition comprising an ethylene-a-olefin random copolymer (A) and an ethylene-a-olefin block copolymer (B) (see paragraphs 0050, 0067). The encapsulant resin layer comprises 50 to 99 wt% of (A) and 1 to 50 wt% of (B) (see paragraph 0068). That is, (A) and (B) together is 100 wt% polyethylene. Further, the ethylene-a-olefin random copolymer (A) can read on the polyethylene in amount of 50 to 99 wt%.
In light of the overlap between the claimed encapsulant film and that disclosed by Akaike et al., it would have been obvious to one of ordinary skill in the art to use an encapsulant film that is both disclosed by Akaike et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 3, Akaike et al. disclose the encapsulant film comprising the encapsulating layer as set forth above. The encapsulating layer comprises the ethylene-a-olefin random copolymer (A) (i.e. polyethylene) in amount of 50 to 99 wt% as noted above.
Further, Akaike et al. disclose ethylene-a-olefin random copolymer include an ethylene-octene random copolymer such as Engage 8200 by Dow (see paragraph 0117). As evidenced by Seth, Engage 8200 is ultra low density polyethylene (see page 15, line 4).
Regarding claim 4, Akaike et al. disclose the encapsulant film comprising the weather resistant layer (heat resistant layer) and the encapsulating layer as set forth above. Further, Akaike et al. disclose the encapsulating layer has a thickness of 50 to 1000 microns (see paragraph 0078).
Regarding claim 8, Akaike et al. disclose the encapsulant film comprising the weather resistant layer (heat resistant layer) and the encapsulating layer as set forth above. Given that the encapsulant film including encapsulating layer and heat resistant layer are identical to that presently claimed, the encapsulating film necessarily inherently has presently claimed property.
Regarding claim 9, Akaike et al. disclose an adhesive layer (first tie layer) can be between the weather-resistant layer (heat resistant layer) and the encapsulating layer (see paragraphs 0088, 0090).
Regarding claims 10, 12 and 14, Akaike et al. disclose the encapsulant film comprising the weather-resistant layer (heat resistant layer) and the encapsulating layer as set forth above. Further, Akaike et al. disclose a surface protective layer containing the weather-resistant layer can be laminated to the encapsulating layer (see paragraphs 0050, 0089). The surface-protective layer is produced by laminating a polyolefin-based resin layer, a moisture-proof layer and the weather-resistant layer via an adhesive agent, wherein the weather-resistant layer is outermost layer of the cover film (see paragraphs 0032, 0090).
Accordingly, Akaike et al. disclose the cover film (encapsulant film) comprising weather resistant layer (heat resistant layer)/adhesive agent/moisture-proof layer/adhesive agent/polyolefin-based resin layer (secondary layer)/adhesive agent/encapsulating layer. The polyolefin-based resin layer reads on a secondary layer disposed opposite to the encapsulating layer and adjacent to the weather-resistant layer (heat resistant layer). The polyolefin-based resin layer can contain 100 wt% of polyolefin (see paragraph 0035). The polyolefin-based resin layer has a thickness of 40 to 200 microns (see paragraph 0036). The adhesive agent between the polyolefin-based resin layer (secondary layer) and the weather-resistant layer (heat resistant layer) reads on second tie layer.
Regarding claim 13, Akaike et al. disclose the encapsulant film comprising the weather resistant layer (heat resistant layer)/polyolefin-based resin layer (secondary layer)/encapsulating layer as set forth above.
Akaike et al. do not disclose the encapsulating layer, the heat resistant layer and the secondary layer are “co-extruded together”.
However, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Akaike et al. meets the requirements of the claimed product, Akaike et al. clearly meet the requirements of present claim.
Regarding claim 16, Akaike et al. disclose the encapsulant film comprising the weather-resistant layer (heat resistant layer) and the encapsulating layer as set forth above. Further, Akaike et al. disclose that the weather resistant layer (heat resistant layer) is cured (see paragraph 0033). Akaike et al. does not disclose the weather resistant layer (heat resistant layer) is cured by irradiation as presently claimed.
Although Akaike et al. do not disclose “irradiated with a total irradiation dose of between 10 kilograys (kGy) to 200 kGy”, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Akaike et al. meets the requirements of the claimed product, Akaike et al. clearly meet the requirements of present claim.
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Akaike et al. (EP 2613362 A1 cited in IDS), taken in view of evidence by Seth (WO 01/47697 A1) as applied to claim 1 above, further in view of Watanabe et al. (US 2010/0004383 A1).
Regarding claim 2, Akaike et al. disclose the encapsulant film comprising the weather-resistant layer (heat resistant layer) and encapsulating layer as set forth above. The encapsulating layer comprises the ethylene-a-olefin random copolymer (A) (i.e. polyethylene) in amount of 25 to 98 wt% as noted above.
Akaike et al. do not disclose ethylene-a-olefin random copolymer is modified ethylene-a-olefin random copolymer.
Watanabe et al. disclose a modified polyolefin resin that provides excellent solvent solubility and coating property as well as excellent adhesiveness to nonpolar substrates and polar substrates (see paragraph 0022). The modified polyolefin comprises polarity imparting agent such as maleic anhydride grafted to polyolefin such as ethylene-propylene random copolymer (i.e. ethylene-a-olefin random copolymer) (see paragraphs 0034, 0037, 0025). The maleic anhydride is grafted in amount of 0.1 to 20 wt% in order to provide adhesiveness to nonpolar substrates and polar substrates (see paragraphs 0038, 0039).
In light of motivation for using modified ethylene-a-olefin random polymer disclosed by Watanabe et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to modify/graft ethylene-a-olefin random copolymer of Akaike et al. with 0.1 to 20 wt% of maleic anhydride in order to provide excellent solvent solubility and coating property as well as excellent adhesiveness to nonpolar substrates and polar substrates, and thereby arrive at the claimed invention.
Regarding claim 11, Akaike et al. disclose the encapsulant film comprising the weather-resistant layer (heat resistant layer), the polyolefin-based layer (secondary layer) and encapsulating layer as set forth above.
Akaike et al. do not disclose the polyolefin of the polyolefin-based layer (secondary layer) is modified polyolefin-based resin.
Watanabe et al. disclose a modified polyolefin resin that provides excellent solvent solubility and coating property as well as excellent adhesiveness to nonpolar substrates and polar substrates (see paragraph 0022). The modified polyolefin comprises polarity imparting agent such as maleic anhydride grafted to polyolefin such as ethylene-propylene random copolymer (i.e. ethylene-a-olefin random copolymer) (see paragraphs 0034, 0037, 0025). The maleic anhydride is grafted in amount of 0.1 to 20 wt% in order to provide adhesiveness to nonpolar substrates and polar substrates (see paragraphs 0038, 0039).
In light of motivation for using modified polyolefin disclosed by Watanabe et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to modify/graft polyolefin of Akaike et al. with 0.1 to 20 wt% of maleic anhydride in order to provide excellent solvent solubility and coating property as well as excellent adhesiveness to nonpolar substrates and polar substrates, and thereby arrive at the claimed invention.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Akaike et al. (EP 2613362 A1 cited in IDS), taken in view of evidence by Seth (WO 01/47697 A1) as applied to claim 1 above, further in view of Covestro (Makrolon 2205, 2018).
Regarding claims 6 and 7, Akaike et al. disclose the encapsulant film comprising the weather-resistant layer (heat resistant layer) and the encapsulating layer as set forth above. The weather-resistant layer comprises a polycarbonate resin as noted above.
Akaike et al. do not disclose weather-resistant layer comprising a glass transition temperature and a melting temperature as presently claimed.
Covestro discloses Makrolon 2205 having injection molding melt temperature of 280-320 °C, glass transition temperature of 145 °C and vicat softening temperature of 145 °C (see page 8, General Purpose Grades and page 16, General Purpose Grades, Thermal Properties). Makrolon are polycarbonates that provide high transparency, heat resistance, toughness and dimensional stability (see page 2 and page 3, Characterization). Given that Makrolon 2205 has injection molding melt temperature of 280-320 °C and vicat softening temperature of 145 °C, the melting temperature of Makrolon 2205 is necessarily more than 85 °C.
In light of motivation for using Makrolon 2205 polycarbonate disclosed by Covestro as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use Makrolon 2205 polycarbonate as the polycarbonate resin in the weather-resistant layer (heat resistant layer) of Akaike et al. in order to provide high transparency, heat resistance, toughness and dimensional stability, and thereby arrive at the claimed invention.
Accordingly, Akaike et al. in view of Covestro disclose the weather-resistant layer (heat resistant layer) comprising polycarbonate that has glass transition temperature of more than 85 °C or more than 20 °C, and melting temperature of more than 85 °C. Given the weather-resistant layer (heat resistant layer) comprises the polycarbonate resin as a principal component, the weather-resistant layer containing polycarbonate resin having glass transition temperature of more than 85 °C or more than 20 °C, and melting temperature of more than 85 °C, necessarily has glass transition temperature of more than 85 °C or more than 20 °C, and melting temperature of more than 85 °C.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Akaike et al. (EP 2613362 A1 cited in IDS) in view of Bhattacharjee et al. (WO 2014/100265 A1).
Regarding claim 17, Akaike et al. disclose a cover film (encapsulant film) for solar cell modules (photovoltaic module) (see Abstract). The cover film comprises a weather-resistant layer (heat-resistant layer) 10A laminated to an encapsulant resin layer 10B (see page 27, Figure 1 and paragraphs 0015, 0155).
The weather-resistant layer has heat resistance (see paragraph 0018). That is, the weather-resistant layer reads on a heat resistant layer. The weather-resistant layer can comprise a polyethylene terephthalate resin (see paragraph 0018).
The encapsulant resin layer comprises a resin composition comprising an ethylene-a-olefin random copolymer (A) and an ethylene-a-olefin block copolymer (B) (see paragraphs 0050, 0067). The encapsulant resin layer comprises 50 to 99 wt% of (A) and 1 to 50 wt% of (B) (see paragraph 0068). That is, (A) and (B) together is 100 wt% polyethylene. Further, the ethylene-a-olefin random copolymer (A) can read on the polyethylene in amount of 50 to 99 wt%.
Akaike et al. disclose an adhesive layer (first tie layer) can be between the weather-resistant layer (heat resistant layer) and the encapsulating layer (see paragraphs 0088, 0090). Further, Akaike et al. disclose a surface protective layer containing the weather-resistant layer can be laminated to the encapsulating layer (see paragraphs 0050, 0089). The surface-protective layer is produced by laminating a polyolefin-based resin layer, a moisture-proof layer and the weather-resistant layer via an adhesive agent, wherein the weather-resistant layer is outermost layer of the cover film (see paragraphs 0032, 0090).
Accordingly, Akaike et al. disclose the cover film (encapsulant film) comprising weather resistant layer (heat resistant layer)/adhesive agent/moisture-proof layer/adhesive agent/polyolefin-based resin layer (secondary layer)/adhesive agent/encapsulating layer. The polyolefin-based resin layer reads on a secondary layer disposed opposite to the encapsulating layer and adjacent to the weather-resistant layer (heat resistant layer). The polyolefin-based resin layer can contain 100 wt% of polyolefin (see paragraph 0035). The adhesive agent between the polyolefin-based resin layer (secondary layer) and the weather-resistant layer (heat resistant layer) reads on second tie layer.
Akaike et al. do not disclose the weather-resistant layer (heat resistant layer) comprises polyethylene furanoate.
Bhattacharjee et al. disclose polyethylene furanoate (PEF) has improved oxygen barrier, carbon dioxide barrier and moisture barrier compared to polyethylene terephthalate (PET) (see page 1, lines 28-30).
In light of motivation for using polyethylene furanoate (PEF) disclosed by Bhattacharjee et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use polyethylene furanoate (PEF) instead of polyethylene terephthalate in the weather-resistant layer (heat resistant layer) of Akaike et al. in order to provide improved oxygen barrier, carbon dioxide barrier and moisture barrier, and thereby arrive at the claimed invention.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Akaike et al. (EP 2613362 A1 cited in IDS).
Regarding claim 23, Akaike et al. disclose a cover film (encapsulant film) for solar cell modules (photovoltaic module) (see Abstract). The cover film comprises a weather-resistant layer (heat-resistant layer) 10A laminated to an encapsulant resin layer 10B (see page 27, Figure 1 and paragraphs 0015, 0155).
The weather-resistant layer has heat resistance (see paragraph 0018). That is, the weather-resistant layer reads on a heat resistant layer. The weather-resistant layer can comprise a polycarbonate resin (see paragraph 0018).
The encapsulant resin layer comprises a resin composition comprising an ethylene-a-olefin random copolymer (A) and an ethylene-a-olefin block copolymer (B) (see paragraphs 0050, 0067). The encapsulant resin layer comprises 50 to 99 wt% of (A) and 1 to 50 wt% of (B) (see paragraph 0068). That is, (A) and (B) together is 100 wt% polyethylene. Further, the ethylene-a-olefin random copolymer (A) can read on the polyethylene in amount of 50 to 99 wt%.
Akaike et al. disclose an adhesive layer (first tie layer) can be between the weather-resistant layer (heat resistant layer) and the encapsulating layer (see paragraphs 0088, 0090). Further, Akaike et al. disclose a surface protective layer containing the weather-resistant layer can be laminated to the encapsulating layer (see paragraphs 0050, 0089). The surface-protective layer is produced by laminating a polyolefin-based resin layer, a moisture-proof layer and the weather-resistant layer via an adhesive agent, wherein the weather-resistant layer is outermost layer of the cover film (see paragraphs 0032, 0090).
Accordingly, Akaike et al. disclose the cover film (encapsulant film) comprising weather resistant layer (heat resistant layer)/adhesive agent/moisture-proof layer/adhesive agent/polyolefin-based resin layer (secondary layer)/adhesive agent/encapsulating layer. The polyolefin-based resin layer reads on a secondary layer disposed opposite to the encapsulating layer and adjacent to the weather-resistant layer (heat resistant layer). The polyolefin-based resin layer can contain 100 wt% of polyolefin (see paragraph 0035). The adhesive agent between the polyolefin-based resin layer (secondary layer) and the weather-resistant layer (heat resistant layer) reads on second tie layer.
Akaike et al. do not disclose encapsulating layer, first tie layer, heat resistant layer, second tie layer and secondary layer are coextruded with each other.
However, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Akaike et al. meets the requirements of the claimed product, Akaike et al. clearly meet the requirements of present claim.
In light of the overlap between the claimed encapsulant film and that disclosed by Akaike et al., it would have been obvious to one of ordinary skill in the art to use an encapsulant film that is both disclosed by Akaike et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Kawashima (US 2008/0053512 A1 cited in IDS) in view of Bhattacharjee et al. (WO 2014/100265 A1).
Regarding claim 17, Kawashima et al. disclose a backsheet (encapsulant film) for photovoltaic module (see Abstract). The backsheet comprises a resin film 2 (encapsulant layer), an adhesive layer 5 (first tie layer), a substrate film 6 (heat resistant layer), an adhesive layer 5 (second tie layer) and a resin film 4 (secondary layer) (see Figure 1 and paragraphs 0035, 0045).
The resin film 2 (encapsulant layer) comprises polyethylene such as low density polyethylene or ethylene vinyl acetate as a principal component (50 to 100%) (see paragraph 0036).
The substrate film 6 (heat resistant layer) comprises a polyester-based resin as a principal component (50 to 100%) (see paragraph 0045). The polyester-based resin provides heat resistance and weather resistance (see paragraph 0045).
The resin film 4 (secondary layer) comprises polyethylene as a principal component (50 to 100%) (see paragraphs 0058, 0045).
While Kawashima et al. disclose the substrate film 6 (heat resistant layer) comprising a polyester-based resin, Kawashima et al. do not disclose polyester-based resin is polyethylene furanoate.
Bhattacharjee et al. disclose polyethylene furanoate (PEF) has improved oxygen barrier, carbon dioxide barrier and moisture barrier (see page 1, lines 28-30).
In light of motivation for using polyethylene furanoate (PEF) disclosed by Bhattacharjee et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use polyethylene furanoate (PEF) as the polyester-based resin in the substrate film (heat resistant layer) of Kawashima et al. in order to provide improved oxygen barrier, carbon dioxide barrier and moisture barrier, and thereby arrive at the claimed invention.
While there is no disclosure that the backsheet is an encapsulant film as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. an encapsulant film, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art backsheet and further that the prior art structure which is a backsheet identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kawashima (US 2008/0053512 A1 cited in IDS).
Regarding claim 23, Kawashima et al. disclose a backsheet (encapsulant film) for photovoltaic module (see Abstract). The backsheet comprises a resin film 2 (encapsulant layer), an adhesive layer 5 (first tie layer), a substrate film 6 (heat resistant layer), an adhesive layer 5 (second tie layer) and a resin film 4 (secondary layer) (see Figure 1 and paragraphs 0035, 0045).
The resin film 2 (encapsulant layer) comprises polyethylene such as low density polyethylene or ethylene vinyl acetate as a principal component (50 to 100%) (see paragraph 0036).
The substrate film 6 (heat resistant layer) comprises a cyclic polyolefin-based resin having a great heat resistance as a principal component (50 to 100%) (see paragraph 0045).
The resin film 4 (secondary layer) comprises polyethylene as a principal component (50 to 100%) (see paragraphs 0058, 0045).
Kawashima et al. do not disclose encapsulating layer, first tie layer, heat resistant layer, second tie layer and secondary layer are coextruded with each other.
However, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kawashima et al. meets the requirements of the claimed product, Kawashima et al. clearly meet the requirements of present claim.
While there is no disclosure that the backsheet is an encapsulant film as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. an encapsulant film, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art backsheet and further that the prior art structure which is a backsheet identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
In light of the overlap between the claimed encapsulant film and that disclosed by Kawashima, it would have been obvious to one of ordinary skill in the art to use an encapsulant film that is both disclosed by Kawashima and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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, Callie Shosho can be reached at 571-272-1123. 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.
/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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