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 .
Status of Claims
Claims 1-6 are pending and examined below.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
In claim 1, lines 1 to 2, the text reads “comprising: a comprising an upper plate-shaped”. Please delete the beginning of the second sentence “a comprising”.
In claim 2, line 4, the text reads “transparent glass with a thickness of g=3 mm to 5 mm,”. The examiner believes this should read “transparent glass with a thickness of g, wherein g = 3 mm to 5 mm”.
In claim 2, line 5, the text reads “includes including”. Please delete the repeated word.
Also claim 2, line 5, a transition word or punctuation is needed between the thickness of the glass and to state the colored ceramic coating includes a grid. Consider re-wording “The self-cleaning photovoltaic roof tile according to claim 1, wherein the colored ceramic coating printed on the upper plate-shaped hardened glass element includes a grid of dots with diameters ranging from 0.5mm to 1.0 mm with a spacing of 0.60 mm to 0.65 mm in the "X" coordinate axis and 0.70 mm to 0.75 mm in the "Y" coordinate axis;
wherein the upper plate-shaped hardened glass element is made of transparent glass with a thickness of g, where g=3mm to 5mm.”
Appropriate correction is required.
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 1-6 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.
In claim 1, lines 7-8, it states “at least one photovoltaic cell disposed between the glass elements over their lower sides and”. It is unclear what is meant by “lower sides”. Also in lines 5-6, the claim states “with lower sides rounded”. It is unclear what sides are being referenced It is also unclear whether lower sides mean the same thing in both locations.
Claim 1 recites the limitation "the transparent glass plate" in line 9. There is insufficient antecedent basis for this limitation in the claim. Further, there is no indication whether it is the same glass element as either the upper glass element or the lower glass element. The examiner interpreted the limitation to mean the “upper … glass element”. Further, in line 15, recited is “a bottom surface of a lower transparent glass plate. It is unclear if this differs from the lower glass element recited earlier in the claim, or it is a different glass plate. In view of the specification, the examiner interpreted “lower transparent glass plate” to be the same structure as the earlier recited “lower … glass element”. Consistent language is to be used throughout the claims. See MPEP § 608.01.
Claims 2-6 are rejected as being dependent on claim 1.
Claims 2, 5 and 6, the terms “the upper glass plate” and “the lower glass plate” lack antecedent basis.
Claim 3 recites the limitation "the color space" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
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 non-obviousness.
Claims 1-3, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hadizadeh (EP 3 934 094) in view of Wang et al. (US 2020/0203543), Wu et al. (US 2019/0348555) and Almy et al (US 2018/0123504).
Regarding claim 1, Hadizadeh discloses a self-cleaning photovoltaic roof tile (see fig. 4, para [0005] and [0033]) comprising:
an upper plate-shaped hardened glass element (first substrate 2500, low iron tempered float glass) (see fig. 4, para [0041]-[0042]),
a lower plate-shaped hardened glass element (second substrate 4100) (see fig. 4, para [0007], [0019], [0038] and [0042]) laminated to each other by a laminating foil (i.e., encapsulants 2600 and/or 2900), both elements having identical rectangular shape (shown in fig. 4) and
at least one photovoltaic cell (2800) disposed between the glass elements (see para [0042]) over their lower sides (see fig. 4, i.e., over the entire surface inclusive of lower sides), and
wherein a surface of the transparent glass plate is coated with a printed coloured ceramic coat (see para [0006]-[0007], i.e., ceramic frit printing, para [0031] and [0034]),
which is further coated with a self-cleaning hydrophobic layer (2200) (see para [0033] and [0042]),
a bottom surface of a lower transparent glass plate (4100) (shown in fig. 4, para [0007], [0019], [0038] and [0042]).
Hadizadeh does not specifically disclose it is the top surface of the transparent glass plate (2500) coated with a printed colored ceramic coat. Nor does Hadizadeh disclose a bottom surface of a lower transparent glass plate is coated with a colored ceramic coat. Rather, Hadizadeh discloses at least a surface or more than one surface (see para [0029]-[0031] and [0034]).
Wu is analogous art to Hadizadeh as Wu discloses a building integrate photovoltaic device (see para [0003] and [0057]). Wu discloses a ceramic colored coat (i.e., titanium dioxide, tritanium pentoxide, niobium pentoxide, silicon dioxide, magnesium fluoride, etc.) on both the front and back glass (see para [0008]-[0011], [0018], [0020]-[0022]).
The court has held it is obvious to a person having ordinary skill in the art to modify the building integrated photovoltaic module of Hadizadeh by combining prior art elements, (i.e., selecting the front and back glass for two colored layers) according to known methods (i.e., as disclosed by Wu), wherein the result is predictable.
It would be obvious to a person having ordinary skill in the art to modify the upper transparent glass plate to have the top surface by the surface with a printed colored ceramic coat and the bottom surface of the bottom transparent glass, as the court has held it is obvious to try, i.e., the top surface and bottom surface, when choosing from a finite number of identified, predictable solutions (i.e., the top or bottom surface of the top glass and the top or bottom surface of the bottom glass), with a reasonable expectation of success.
Hadizadeh does not disclose the thickness of the printed colored ceramic layer is <45µm, nor that the self-cleaning layer hydrophobic layer has a thickness of 300 to 800 nm.
Hadizadeh does disclose transparency of the printed colored ceramic layer is a result effective variable and is achieved through a combination of controlling opacity, which directly relates to thickness, along with removal of material and color selection (see para [0030]-[0031]).
The court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Wang is analogous art to Hadizadeh as Wang is directed to solar cells and discloses an anti-reflective coat which is able to serve as a self-cleaning layer wherein the thickness of the layer is 50 to 800 nm, which overlaps the recited range.
The court has ruled that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Further, the court has held it would be obvious to a person having ordinary skill in the art to use a known technique (i.e. the thickness range of an anti-reflection layer as disclosed by Wang) to improve similar devices (i.e., the anti-reflection layer as disclosed by Hadizadeh), in the same way, wherein the result is predictable. See MPEP § 2143.
Hadizadeh does not disclose the solar cells/tile roof element is equipped with electric wires connected to an external terminal, nor wherein the glass plates are with lower sides rounded and both provided with mounting holes situated coaxially with respect to each other,
Almy is analogous art to Hadizadeh as Almy is directed to solar cells within a roofing tile (see abstract). Almy discloses wherein the solar cell/roof tile is equipped with electric wires connected to an external terminal (see fig. 3, para [0064]). Further, Almy discloses wherein the glass plates are with lower sides rounded (see fig. 4A, chamfered edges fig. 4A) and both provided with mounting holes situated coaxially with respect to each other (see fig. 4A, para [0066]).
The court has held drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). However, the picture must show all the claimed structural features and how they are put together. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928). See MPEP § 2125.
Further, the court has held it would be obvious to a person having ordinary skill in the art to combine prior art elements (i.e., the solar cell/roof tile of Hadizadeh with the electrical components, the rounded lower sides, and the mounting holes of Almy) according to known methods (as disclosed by Almy), wherein the result is predictable. See MPEP § 2143.
Regarding claim 2, modified Hadizadeh discloses a self-cleaning photovoltaic roof tile according to claim 1, wherein the colored ceramic coating printed on the upper surface of the upper glass plate made of transparent glass includes a grid of dots (i.e., removal of pixels and checker board reads on grid and dots, see para [0031]).
Hadizadeh does not disclose the exact diameter of dots or spacing, i.e., does not disclose with diameters ranging from 0.5mm to 1.0 mm with a spacing of 0.60 mm to 0.65 mm in the "X" coordinate axis and 0.70 mm to 0.75 mm in the "Y" coordinate axis. Hadizadeh does disclose removal of 50% of pixels, up to 95% of pixels, stating the removal of pixels is determined by the competing interests of aesthetic design and transparency, making the grid, dot diameter, and spacing a result effective variable.
The court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Modified Hadizadeh does not disclose the thickness of the glass is g= 3mm to 5mm. Wu discloses the colored ceramic coated glass to have a thickness of 3.2mm to 8mm (see para [0058]), which overlaps the recited range.
The court has ruled that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Further, the court has held it would be obvious to a person having ordinary skill in the art to use a known technique (i.e. the thickness range of the glass as disclosed by Wu) to improve similar devices (i.e., the front glass as disclosed by Hadizadeh), in the same way, wherein the result is predictable. See MPEP § 2143.
Regarding claim 3, modified Hadizadeh discloses a self-cleaning photovoltaic roof tile according to claim 1.
The limitation “wherein the color print of the ceramic coating is made by means of the INK-JET method with a print resolution of 1440 DPI and a wet print thickness < 45 pm, and the color of this print is determined in the color space in accordance with the "CIE LAB" method” is a product by process limitation and is given weigh to the extent that the process defines structure. It is the examiner’s position that the device of Hadizadeh is able to be made by the process recited.
The limitation that “wherein the print is made based on ink containing in its composition ceramic nanoparticles with layered graphics and electromagnetic wave translucency in the range from 480 nm to 980 nm and at the level of 62%.” is specifying limitations of an intermediate product that is not part of the claimed “self-cleaning photovoltaic roof tile”, making this a product by process limitation, specifying the intermediate product and is given weight to the extent the process defines structure. It is the examiner’s position that the device of Hadizadeh is able to be made by the process recited.
Regarding claim 5, modified Hadizadeh discloses a self-cleaning photovoltaic roof tile according to claim 1, wherein the upper glass plate is made of tempered float glass (see para [0007] and [0041]-[0042]), which reads on strengthened.
The limitation that the glass is “chemically” strengthened by “an ion exchange method in a brine bath” is a product by process limitation. It is the examiner’s position that float glass is known in the art to be tempered/strengthened by ion exchange in a bath typically composed of potassium nitrate (available in handbooks). It is the examiner’s position that the glass of Hadizadeh is able to be formed by the process recited.
Regarding claim 6, modified Hadizadeh discloses a self-cleaning photovoltaic roof tile according to claim 1, wherein the lower glass plate is made of "float" type glass (see Hadizadeh para [0007], [0019], [0038] and [0042]), and has a thickness of g1 = 4 mm - 6 mm (see Wu para [0058], i.e., 3.2mm to 8mm, see obviousness discussion of claim 2).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hadizadeh, Wu et al., Wang et al., and Almy et al. as applied to claims 1-3 and 5-6 above, and further in view of Hebrink et al. (US 2016/0149067) and Brown et al. (US 2016/0347653).
Regarding claim 4, modified Hadizadeh discloses a self-cleaning photovoltaic roof tile according to claim 1, but does not disclose wherein the self-cleaning hydrophobic layer covering the colored ceramic coating contains metallic inclusions in the form of particles with a diameter of < 100 nm.
Hebrink is analogous art to modified Hadizadeh as Hebrink is directed to solar cells/modules comprising a hydrophobic self-cleaning layer (see abstract and para [0007]-[0008], [0085]). Hebrink discloses the hydrophobic self-cleaning layer contains metallic inclusions in the form of nanometer particles (see para [0085]); wherein Brown referenced by Hebrink (see para [0085]) discloses the nanoparticles are in one embodiment, less than 75 nm (see Brown abstract and para [0022]-[0024]), which anticipates the recited range.
The court has held it would be obvious to person having ordinary skill in the art to modify the anti-reflection/anti-soiling layer of Hadizadeh by incorporating the anti-soiling coating of Hebrink as "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
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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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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721