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
This action is in response to Applicant’s Request for Reconsideration dated 02/02/2026.
Claim(s) 19-38 are currently pending.
Claim(s) 1-18 have been canceled.
Claim(s) 19-38 have been added.
Response to Arguments
Applicant's arguments filed 02/25/2026 have been fully considered but they are not persuasive. While the claims remove recitations such as “roof”, mere removal of the installation environment does not render the instant claims patentably distinct because photovoltaic module systems are well known to be usable in a variety of installation environments, including roof systems. Furthermore, claiming a component (solar module) of a system already recited does not render the instant claims patentably distinct.
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 19-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12237431 B2 in view of US 2006/0032527 A1, Stevens et al.
Regarding claims 19-21 and 28
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 8 of U.S. Patent No. 12237431 B2 recite all of the structural limitations of the system recited in instant claims 19-21 and 28.
The difference between the instant claims and claims 1 and 8 of U.S. Patent No. 12237431 B2 is that claims 1 and 8 recite the solar modules as being part of a roof system installed on a roof, whereas instant claims 19-21 and 28 recite a system comprising a plurality of solar modules without specifying installation on a roof.
The removal of the installation environment does not render the instant claims patentably distinct because photovoltaic module systems are well known to be usable in a variety of installation environments, including roof systems (see paras. 0019-0020 and 0050-0052 of Stevens).
Therefore, instant claims 19-21 and 28 do not define a patentably distinct invention from claims 1 and 8 of U.S. Patent No. 12237431 B2.
Regarding claims 22-27 and 29-31
All of the limitations of instant claims 22-27 and 29-31 can be found in claims 2-7 and 9-11 of U.S. Patent No. 12237431 B2.
Claims 32-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12237431 B2.
Regarding claims 32-34
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12237431 B2 recites all of the structural limitations of the solar module required by instant claims 32-34.
The difference between the instant claims 32-34 and claim 1 of U.S. Patent No. 12237431 B2 is that claim 1 recites a roof system comprising a plurality of solar modules, whereas instant claims 32-34 recite a solar module.
However, claiming a component of the system already recited in the reference claim does not render the instant claims patentably distinct. Therefore, instant claims 32-34 do not define a patentably distinct invention from claim 1 of U.S. Patent No. 12237431 B2.
Regarding claims 35-38
All of the limitations of instant claims 35-38 can be found in claims 2-4 and 6 of U.S. Patent No. 12237431 B2.
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 MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721