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 .
Notice of Pre-AIA or AIA Status
No amendment is made. Currently, claims 1-12 are pending in the application.
Previous prior art is maintained since Applicant’s arguments are not persuasive to overcome the rejection. See responses to arguments below.
The rejection of claims 1-12 are maintained since Applicant’s arguments are not persuasive to overcome the rejection. See response to arguments below.
Response to Arguments
Applicant's arguments filed 3/26/2026 have been fully considered but they are not persuasive.
102 rejection:
Applicant argues MPEP 2114 and 2115 is for intended use, equates light-receiving side of Wada is the front side, and non-light receiving side of Wada discloses a steel substrate on (fig. 2, [0034]) on the rear and repairing the front side. Applicant argues that Wada does not anticipate the claimed invention, because Wada does not disclose the step a) applying an adhesive to a “rear side encapsulating element” and there is no disclosure of an externally accessible near encapsulant or backsheet to which adhesive is applied.
Applicant’s arguments are not persuasive for the following reasons:
First of all, claim 1 claims “[a] method for repairing a solar panel having a front-side encapsulant element and a rear-side encapsulating element” (emphasis added). As such, the claimed invention is a method having an intended use of (or for) repairing a solar panel having a front-side encapsulant element and a rear side element. That is, Applicant explicitly claims the rear-side encapsulating element is an intended use, and the step a) is construed as applying an adhesive paste or liquid to an encapsulating element with an intended use for the rear-side encapsulating element.
Secondly, light receiving side is not inherently a front side. Some solar cell/panel receives light such as reflected light on the rear side.
Thirdly, Wada teaches “[a]lternatively, it is also possible to use only a protective film (not shown) without using the reinforcing plate 205” in paragraph [0012]. That is, Wada teaches in an alternative embodiment, the light-receiving surface is the same as the non-light receiving surface.
103 rejection:
Applicant argues Osamura’s reside repair is an externally accessible rear encapsulant backsheet and alleges that adopting Osamura’s rear side adhesive application in Wada would require removing or reconfiguration of Wada’s rear side adhesive substrate. Applicant concludes changing Wada’s principle of operation and undermining its stated benefits, and a POSITA would lack a reasonable expectation of success in applying Osamura’s rear encapsulation repair to Wada steel-backed design without
Applicant’s argument is not persuasive for the following reasons:
First of all, the claimed invention is a method for repairing a solar panel (see the pre-amble of claim 1).
Secondly, Wada discloses a method of repairing a defect/scratch in the encapsulant element (or protective sheet and sealing material). Wada shows using the method on the light receiving surface where the defect/scratch occurs. Wada does not show using the method to repair the defect/scratch on the rear-side element.
Thirdly, Osamura shows the defect/scratch (59 in fig. 6, or 69 in fig. 7) on the rear-side element and repair the defect/scratch on the rear side element by using adhesive (3) and covering (2, that is substantially the same as Wada).
Fourthly, the modification is about using the method of Wada to repair the defect/scratch on the rear-side element as shown in figs. (6-7). The modification is not about reconfiguring the metal substrate of Wada. In addition, Applicant has not pointed out what principle of operation is being changed in the modification of using the method of Wada to fix the defect/scratch on the rear side shown in figs. 6-7.
Furthermore, Wada also teaches in the alternative embodiment without the metal substrate (see [0012] of Wada).
Accordingly, Applicant’s arguments are not persuasive to overcome the rejection. Therefore, the rejection is maintained. Below is the copy of previous rejection.
Claim Rejections - 35 USC § 102
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) 1-3, 5, and 7-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Wada (JP 2006318945, Cited in Foreign Patent Documents in IDS 12/31/2024, see the machine translation) as evidenced by Shin Etsu.
Regarding claim 1, Wada discloses a method (see figs. 1A-1C in conjunction with fig. 2) for repairing a scratch/defect (106) on an encapsulating element (103) of a solar panel (100) having a front side encapsulating element and a rear side encapsulating element (see figs. 1A-C of the original document; [0025] and [0034] of the machine translation; also see fig. 2), the method comprises the following steps:
a) applying an adhesive paste (or silicone sealant 107 such as KE45, see fig. 1B of the original document, step 1 described in [0036] of the translation) to the encapsulating element (103, see fig. 1B of the original document; [0018-0019], [0023], [0027], [0029-0030], and step 1 described in [0036] of the machine translation, it is noted that silicon seal 107 such as KE45 sold by Shin-Etsu Chemical is a paste material – see evidentiary reference to Shin-Etsu);
b) applying a covering layer (or the repair sheet 110 or fluororesin film, see fig. 1C of the original document, and step 2 described in [0036] of the translation) to the adhesive paste applied in step a) (se fig. 1C of the original document; [0018-0019], [0023], [0028], [0030] and step 2 described in [0036] of the translation); and
c) curing the adhesive paste or liquid (see step 3 described in [0036] of the translation).
Wada discloses all the steps of the claimed method; therefore, the reference is deemed to be anticipatory.
Regarding the recitation of where to use/apply the method such that the adhesive is applied to the rear-side encapsulating element is directed to the intended use of the method. Said recitation does not differentiate the claims from prior art. See MPEP § 2114 and 2115. The method of Wada is fully capable of being used on the scratch/defect/damage on the rear-side encapsulating element such that the adhesive is applied to the rear-side encapsulating element.
Regarding claim 2, Wada discloses a method as in claim 1 above, and teaches the adhesive paste is silicone (see [0018-0019], [0023], [0027], [0029-0030], and step 1 described in [0036] of the machine translation).
Regarding claim 3, Wada discloses a method as in claim 1 above, and teaches using silicone such as KE45 (see step 1 described in [0036]). KE45 is a one component RTV (room temperature vulcanizing) of the alkoxy type (see evidentiary reference to Shin Etsu), and therefore the step b) is inherently initiated by atmospheric moisture.
Regarding claim 5, Wada discloses a method as in claim 1 above, and teaches step a) and step b) are carried out directly after one another (see figs. 1A-B of the original document, and [0036] of the translation).
Regarding claim 7, Wada discloses a method as in claim 1 above, and teaches the covering layer (or the repair sheet) is a single-ply comprising a polyolefin layer or a fluoropolymer layer (see [0023], [0028], [0030] and [0036]).
Regarding claim 8, Wada discloses a method as in claim 1 above, and teaches the covering layer comprises a polyvinyl fluoride layer (or PVF, see [0028] and [0030]).
Regarding claims 9-10, Wada discloses a method as in claim 1 above, teaches the covering layer has a layer thickness of 50mm (see [0036]). 50mm is right within the claimed ranges of from 10 to 600 µm of claim 9 and from 30 to 500 µm of claim 10.
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.
Alternatively, claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wada (JP 2006318945) in view of Osamura et al. (US 2011/0100415 Cited in U.S. Patent Documents in IDS 12/31/2024).
Regarding claim 1, Wada discloses a method (see figs. 1A-1C in conjunction with fig. 2) for repairing a scratch/defect (106) on an encapsulating element (103) of a solar panel (100) having a front side encapsulating element and a rear side encapsulating element (see figs. 1A-C of the original document; [0025] and [0034] of the machine translation; also see fig. 2), the method comprises the following steps:
a) applying an adhesive paste (or silicone sealant 107 such as KE45, see fig. 1B of the original document, step 1 described in [0036] of the translation) to the encapsulating element (103, see fig. 1B of the original document; [0018-0019], [0023], [0027], [0029-0030], and step 1 described in [0036] of the machine translation, it is noted that silicon seal 107 such as KE45 sold by Shin-Etsu Chemical is a paste material – see evidentiary reference to Shin-Etsu);
b) applying a covering layer (or the repair sheet 110 or fluororesin film, see fig. 1C of the original document, and step 2 described in [0036] of the translation) to the adhesive paste applied in step a) (se fig. 1C of the original document; [0018-0019], [0023], [0028], [0030] and step 2 described in [0036] of the translation); and
c) curing the adhesive paste or liquid (see step 3 described in [0036] of the translation).
Wada discloses all the steps of the claimed method, the reference shows the scratch/damage/defect (106) is on the front-side encapsulating element (103) such that the method is being used on the front-side encapsulating element (103) in figs. 1A-C. Wada does not show using the method on the scratch/damage/defect on the rear side encapsuling element such that the adhesive is applied to the rear-side encapsulating element.
Osamura et al. shows the scratch/defect/damage (59) on the rear-side encapsulating element (56) such that the adhesive compound (3) such as silicone ([0053]) is applied the rear-side encapsulating element (56, see fig. 6).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have used the method of Wada on the scratch/damage/defect on the rear side encapsulating element such that the adhesive paste is applied to the rear-side encapsulating element as taught by Osamura et al., because such use would involve nothing more than a mere intended use of the method of Wada to repair the scratch/defect/damage on the rear-side encapsulating element.
Regarding claim 2, modified Wada discloses a method as in claim 1 above, wherein Wada teaches the adhesive paste is silicone (see [0018-0019], [0023], [0027], [0029-0030], and step 1 described in [0036] of the machine translation).
Regarding claim 3, modified Wada discloses a method as in claim 1 above, wherein Wada teaches using silicone such as KE45 (see step 1 described in [0036]). KE45 is a one component RTV (room temperature vulcanizing) of the alkoxy type (see evidentiary reference to Shin Etsu), and therefore the step b) is inherently initiated by atmospheric moisture.
Regarding claim 5, modified Wada discloses a method as in claim 1 above, wherein Wada teaches step a) and step b) are carried out directly after one another (see figs. 1A-B of the original document, and [0036] of the translation).
Regarding claim 6, modified Wada discloses a method as in claim 1 above, wherein Osamura et al. discloses applying the adhesive (3, fig. 6, or step a)) and the cover layer (2, fig. 6, or step b)) on the full area or substantially the full area of the rear-side encapsulating element (56, see fig. 6).
Regarding claim 7, modified Wada discloses a method as in claim 1 above, wherein Wada teaches the covering layer (or the repair sheet) is a single-ply comprising a polyolefin layer or a fluoropolymer layer (see [0023], [0028], [0030] and [0036]).
Regarding claim 8, modified Wada discloses a method as in claim 1 above, wherein Wada teaches the covering layer comprises a polyvinyl fluoride layer (or PVF, see [0028] and [0030]).
Regarding claims 9-10, modified Wada discloses a method as in claim 1 above, wherein Wada teaches the covering layer has a layer thickness of 50mm (see [0036]). 50mm is right within the claimed ranges of from 10 to 600 µm of claim 9 and from 30 to 500 µm of claim 10.
Regarding claim 11, modified Wada discloses a method as in claim 1 above; wherein Osamura et al. discloses the rear-side encapsulating element (56, fig. 6) comprises a rear side film laminate (or multilayer structure of synthetic resin layers are laminated, see fig. 6 and [0150]) to which the adhesive (3, fig. 6, [0051]) is applied, and the front-side encapsulating element (52) is glass (see fig. 6, [0142]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wada or modified Wada as applied to claim 2 above, in view of Meier et al. (US 2012/0227793).
Regarding claim 4, Wada or modified Wada discloses a method as in claim 2 above, wherein Wada teaches using silicone paste (see claim 2 above).
Wada or modified Wada does not explicitly teach the silicone paste or liquid is a two-component RTV silicone system of the alkoxy-curing type or two-component silicone system with a noble metal crosslinking catalyst such that step b) is initiated by mixing and reacting the second component with the first component, or by mixing and reacting the second component with the first component, respectively.
Meier et al. teaches silicone paste (or adhesive/composition) that is two-component RTV silicone system of alkoxy-curing type such that the components are combined to harden during the application (see [0073-0102]). Meier et al. teaches that the two-component silicon has an advantage of faster hardening which permits a faster and therefore more economical production method (see [0073]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the method of Wada or modified Wada by using the silicone paste of two-component RTV silicone system of alkoxy-curing type such that the components are combined to harden during the application (or the application of step b) is initiated by mixing/ combining and reacting the components), because Wada explicitly teaches using silicone adhesive and Meier teaches two-component silicone adhesive has advantage of faster hardening which permits a faster and therefore more economical production method.
Claim(s) 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wada or modified Wada as applied to claim 1 above, in view of Flaherty et al. (US 2008/0149168, Cited in U.S. Patent Documents of IDS 12/31/2024).
Regarding claim 12, Wada or modified Wada discloses a method as claimed in claim 1 above, wherein the method is for repairing a scratch/defect/damage (106) on an encapsulating element (103) of a solar panel (100, see claim 1 above).
Wada or modified Wada does not teach the solar panel has a solar panel frame which surrounds side edges of the solar panel and engages around the front-side encapsulating element and the rear-side encapsulating element; nor do they teach the solar panel is subjected to steps a) to c) in the presence of the solar panel frame.
Flaherty et al. discloses a solar panel has a solar panel frame (see frame 180/182 shown in figs. 2-3, [0025-0029]) surrounding side edges of the solar panel and engages around the front side encapsulating element (110, figs. 2-3) and the rear side encapsulating element (160, figs. 2-3) to hold edges of the layers of the solar panel (see claim 1) and to improve moisture resistance and structural stability (see [0025]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the solar panel of Wada or modified Wada by incorporating a solar panel frame surrounding the side edges of the layers of the solar panel and to improve moisture resistance and structural stability as taught by Flaherty et al.
In addition, it would have been obvious to one skilled in the art to have used/carried out the method of Wada or modified Wada, or step a) to c), in the presence of the solar panel frame, because the method is for repairing a scratch/defect/damage and such use would involve nothing more than a mere intended use of the method of Wada or modified Wada.
Conclusion
THIS ACTION IS MADE FINAL. 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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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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