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 .
Status of claims
The amendment to claims filed on 3/18/2026 is acknowledges. Claims 1, 3, 9, 10, 18-19 are amended. Currently, claims 1-19 are pending in the application with claims 1-9 and 19 being withdrawn from consideration (see Election/Restrictions below).
Previous 112 rejection is withdrawn in view of the above amendment.
Previous prior art rejection is withdrawn in view of the above amendment.
Claims 10-18 are rejected on a new ground of rejection. See the rejection below.
Election/Restrictions
Even though claims 1-9 and 19 are amended to depend on claim 10, the claims are independent or distinct from each other for the same reasons as in the restriction requirement 10/21/2025:
Claims 1-9 are directed to species A of a back layer comprising a core comprising gas cells defined by walls of polypropylene.
Claims 10-18 are directed to species B of a back layer comprising reinforced polypropylene.
Claim 10 is directed to a method of recycling.
It is noted that Applicant does not disclose the back layer comprises a core comprising gas cells defined by walls of the propylene anywhere in the specification, nor a back layer comprising a combination of a reinforced polypropylene and gas cells defined by walls of the propylene. As such, the species A of a back layer comprising a core comprising gas cells defined by walls of propylene is determined to be a separate species from species B of a back layer comprising reinforced polypropylene as in the original claims filed on 9/23/2024.
Since applicant has received an action on the merits for the originally presented invention, e.g. species B directed to a back layer comprising reinforced polypropylene, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1-9 and 19 are remained to be withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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) 10-11, 13-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuzuki et al. (JP 4480106, see machine translation) in view of Toyama Minoru et al. (JP 2014003055, see machine translation).
Regarding claim 10, Tsuzuki et al. discloses a photovoltaic device comprising:
a transparent front layer (see surface protection sheet 1, fig. 1 in the original document; [0007] of the translation) comprising a polycarbonate (see [0009] of the translation);
a back layer (see back surface protective sheet 5, fig. 1 in the original document; [0007] of the translation) comprising reinforced polypropylene (see [0070-0074] of the translation); and
at least one photovoltaic cell (see solar cell element 3, fig. 1 in the original document; [0007] of the translation) between the front layer (1) and the back layer (5, see fig. 1 of the original document);
wherein the transparent front layer (1) is adhered to the at least one photovoltaic cell (3) by a thermoreversibly crosslinkable olefin polymer filler (2, see fig. 1 of the original document) having adhesive property (see fig. 1 of the original document; [0004-0005], [0007], [0015] of the machine translation), or the transparent front layer (1) is (thermo)reversibly adhered to the at least one photovoltaic cell by an adhesive.
Tsuzuki et al. does not explicitly state the thermoreversibly adhesive (or filler/sealing material) is a reusable adhesive.
Toyama Minoru et al. discloses a sealing material of ethylene-based resin (or olefin resin) to be reused (or recycled) and excellent in heat resistance and sheet flatness (see abstract, [0001] [0006], [0011], [0038], [0057], [0074] of the machine translation).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photovoltaic device of Tsuzuki et al. by using the reusable (or sealing material/ encapsulating material with improving recyclability) as taught by Toyama Minoru et al.; because Tsuzuki et al. suggests using thermoreversibly adhesive of olefin material and Toyama Minoru et al. teaches an ethylene-based material (or an olefin material) being reusable (or having recyclability) would facilitates the formation of solar cell modules and recycling of solar cell elements) and offer excellent heat resistance and sheet flatness (see abstract, [0001], [0006], [0011], [0038], [0057], [0074] of the machine translation of Toyama Minoru et al.).
Regarding claim 11, modified Tsuzuki et al. discloses a photovoltaic device as in claim 10 above, wherein Tsuzuki et al. teaches an encapsulant material (4) between the front layer (1) and the back layer (5, see fig. 1 of the original document).
Regarding claim 13, modified Tsuzuki et al. discloses a photovoltaic device as in claim 10 above, wherein Tsuzuki et al. teaches the back layer (5) comprises a long glass fiber reinforced polypropylene (see [0074] of the translation).
Regarding claim 14, modified Tsuzuki et al. discloses a photovoltaic device as in claim 10 above, wherein Tsuzuki et al. teaches the transparent layer having a visible light transmittance of 90% or more, preferably 95% or more (see [0012] of the translation, and table 1 of the original document). Visible wavelengths are right within the claimed range of 350nm to 1200nm and 90% or more or 95% or more are right within the claimed range of at least an average of 70% transmission of light. In other words, Tsuzuki teaches the transparent front layer allows at least an average of 70% transmission of light in the wavelength range of 350 nm to 1200 nm as compared to a situation without the polymer front layer.
Regarding claim 15, modified Tsuzuki et al. discloses a photovoltaic device as in claim 10 above, and teaches the transparent front layer has a thickness preferably 9-150mm for the surface protection sheet (1, see [0012] of the translation) and preferably 300mm to 600mm for the filler layer (2, see [0068]). As such the thickness of the transparent front layer (1 and 2) is found to be preferably 309-750mm, which is right within the claimed range of 20 to 1000 micrometers.
Regarding claim 17, modified Tsuzuki et al. discloses a photovoltaic device (or solar cell module) as in claim 10 above, and teaches using a plurality of the photovoltaic cells (see [0078] of the translation).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over modified Tsuzuki et al. (JP 4480106, see machine translation) as applied to claim 10 above, and further in view of Toyama et al. (US 2003/0019519).
Regarding claim 12, modified Tsuzuki et al. discloses a photovoltaic device as in claim 10 above, wherein Tsuzuki et al. teaches the filler comprises the random copolymer of polypropylene (see [0018] of the translation).
Modified Tsuzuki et al. does not explicitly teach transparent front layer comprising the random copolymer of polypropylene.
Toyama et al. teaches in term of adhesion, a double layer structure is more excellent than a single layer structure ([0048]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photovoltaic device of modified Tsuzuki et al. by incorporating a random copolymer of polypropylene layer, or a filler having adhesive property, to the transparent front layer to form the transparent front layer comprising the random copolymer of polypropylene and a double layer structure of adhesion with the adhesion/filler layer (2); because Tsuzuki et al. teaches using random copolymer of polypropylene as a filler having adhesive property, and Toyama et al. teaches in term of adhesion, a double layer structure is more excellent than a single layer structure.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over modified Tsuzuki et al. (JP 4480106, see machine translation) as applied to claim 10 above, and further in view of Rummens et al. (US 2011/0041891).
Regarding claim 16, modified Tsuzuki et al. discloses a photovoltaic device as in claim 10 above.
Modified Tsuzuki et al. does not teach the back layer having a thickness in the range of 300 to 10,000 micrometers.
Rummens et al. teaches a water proofing membrane (10, fig. 1), which is a reinforced polypropylene (see [0062-0065]) having a thickness preferably between 1.2 and 3mm (see [0062]) and more specifically 1.5mm ([0107]) to provide rigidity and to reduce deformation of the PV cells (see [0062]) to meet the requirements for roofing applications like fire requirements, safety and durability (see [0023]). 1.2-3mm and 1.5mm are 1200-3000 micrometers and 1500 micrometers, which are right within the claimed range of 300 to 10,000 micrometers.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photovoltaic device of modified Tsuzuki et al. by forming the back layer having a thickness of 1.2 to 3mm or more specially 1.5mm as taught by Rummens et al., because Rummens et al. teaches such thickness would provide rigidity, reduce deformation of the PV cells as well as meeting the requirements for roofing applications like fire requirements, safety and durability.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over modified Tsuzuki et al. (JP 4480106, see machine translation) as applied to claim 10 above, and further in view of Younan et al. (US Patent 5,575,861, Cite No. 5 of US Patents in IDS 9/23/2024) or alternatively in further view of Kalkanoglu et al. (US 2009/0000222, Cite No. 3 of U.S. Patent Application Publication in IDS 9/23/2024).
Regarding claim 18, modified Tsuzuki et al. discloses a photovoltaic device as in claim 17 above, wherein Tsuzuki et al. teaches using a plurality of photovoltaic cells (see claim 17 above).
Modified Tsuzuki et al. does not show the plurality of photovoltaic cells electrically connected to each other by electrical conductors and wherein the front layer and the back layer are locally connected to each other by a local connection such that the plurality of photovoltaic cells is completely enclosed between the front layer and the back layer by the local connection, surrounding the plurality of photovoltaic cells, and each individual cell of the plurality of photovoltaic cells is separated from the remaining of the photovoltaic cells by the local connection; nor do they teach the connection is formed by mean of welding to be a local welded connection.
Younan et al. teaches a photovoltaic device including a plurality of photovoltaic cell (see photovoltaic devices 36, figs. 2 and 6) electrically connected to each other by electrical conductors (see jumpers 38, fig. 2, col. 5, line 51 through col. 6, line 5), and being arranged between the front layer (see protective layer 40, fig. 3) and the back layer (see bottom protective layer 42, fig. 3) in a manner that the front layer (40) and the back layer (42) are locally connected to each other by a local connection (see the contact or direct attachment of the front protective layer 40 and the bottom protective layer 42 in fig. 3) such that each individual cell (36) is surrounded by the connection (or the contact/attachment of 40 and 42) and separate from the remaining of the photovoltaic cells (36) by the local connection (or the contact/direct attachment of 40 and 42, see fig. 3, also see figs. 16-18), and thereby the plurality of photovoltaic cells (36) are completely enclosed between the front layer (40) and the back layer (42) by the local connection (or the contact or direct attachment of 40 and 42) that surrounding the plurality of photovoltaic cells (see figs. 2-3 and 16-18).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photovoltaic device of modified Tsuzuki et al. by arranging and connecting the plurality of photovoltaic cells as taught by Younan et al., because Younan et al. teaches such electrical connection and arrangement would allow the current and voltage of the resultant combination to be controlled in a roofing member application (see col. 5, line 51 through col. 6, line 5).
Recitation of how to form the local connection by welding or by other attachment method is directed toward the product-by process limitation. Even 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 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). MPEP 2113. Regardless, how the local connection being formed, by welding to be a welded connection or by other methods, in the end the front layer and the back layer are structurally connected together as claimed.
Alternatively, modified Tsuzuki et al. does not disclose the local connection to be a welded connection, or the local connection being formed by a welding method.
Kalkanoglu et al. discloses attaching/affixing/sealing the front layer (or the cover element) to the back layer (or the polymeric carrier) by welding (see [0111]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have formed by the local connection of modified Tsuzuki et al. by using welding method as taught by Kalkanoglu et al. such that the local connection is a welded connection, because such formation would involve nothing more than use of known method for its intended use to form a connection in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,278,300 in view of Toyama Minoru et al. (JP 2014003055, see machine translation).
Claims 1-14 of U.S. Patent No. 12,278,300 recites a photovoltaic device (or a photovoltaic module) comprising a front layer comprising a random copolymer of polypropylene, a back layer comprising reinforced polypropylene, and at least one photovoltaic cell between the front layer and the back layer, and the front layer adhered to the photovoltaic cell by an adhesive (or sealing layer, see claim 1).
Claims 1-14 of U.S. Patent No. 12,278,300 does not recite the adhesive (or sealing layer) to be reusable.
Toyama Minoru et al. discloses a sealing material of ethylene-based resin (or olefin resin) to be reused (or recycled) and excellent in heat resistance and sheet flatness (see abstract, [0001] [0006], [0011], [0038], [0057], [0074] of the machine translation).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photovoltaic device of claims 1-14 of U.S. Patent 12,278,300 by using the reusable (or sealing material/ encapsulating material with improving recyclability) as taught by Toyama Minoru et al.; because Toyama Minoru et al. teaches an ethylene-based material (or an olefin material) being reusable (or having recyclability) would facilitates the formation of solar cell modules and recycling of solar cell elements) and offer excellent heat resistance and sheet flatness (see abstract, [0001], [0006], [0011], [0038], [0057], [0074] of the machine translation of Toyama Minoru et al.).
Response to Arguments
Applicant’s arguments with respect to claim(s) 10-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues previous cited references do not teach reusable adhesive.
However, Applicant’s arguments are moot in view of the new ground rejection. See the rejection above.
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 THANH-TRUC TRINH whose telephone number is (571)272-6594. The examiner can normally be reached 9:00am - 6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T. Barton can be reached at 5712721307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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