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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the solar modules in the first row are arranged in portrait orientation along the pair of mounting rails, and wherein the solar modules in the second row are in landscape orientation” as recited in claims 14 and 19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 15 is 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.
Claim 15 recites “the first solar module in the first row and the first solar module in the first row connected by the splice.” It is unclear as to how the first solar module in the first row can be connected to itself. For purposes of examination, claim 15 is interpreted as reciting that the first solar module in the first row and the first solar module in the second row connected by the splice.”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-12, 15-17, and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Publication No. 2015/0288320 to Stearns et al. ("Stearns").
Regarding claim 1, Stearns discloses a mounting system for solar modules (Fig. 60), the mounting system comprising: a pair of mounting rails 601, 602 configured to support a first solar module 603 when a first mounting rail 601 of the pair is positioned under (see Fig. 59 showing part of the rail under adjacent solar panels) a first half (upper half) of the first solar module and a second mounting rail 602 of the pair is positioned under a second half (lower half) of the first solar module 603, wherein the first solar module 603 has a top edge 603a and a bottom edge 603b opposite the top edge; a third mounting rail 604 configured to support a second solar module 605 when the third mounting rail 604 is positioned under the second solar module 605, wherein the second solar module 605 has a top edge 605a and a bottom edge 605b opposite the top edge; and a splice 606 configured to connect the top edge of the first solar module to the bottom edge of the second solar module, wherein the splice 606 is positioned between the second mounting rail 602 and the third mounting rail 604.
Regarding claim 2, Stearns discloses that the third mounting rail 604 is configured to extend under a second half (upper half) of the second solar module 605 between the top edge 605a and the bottom edge 605b of the second solar module.
Regarding claim 3, Stearns discloses one or more mounts 1643 configured to attach the pair of mounting rails and the third mounting rail to a roof surface.
Regarding claim 4, Stearns discloses one or more clamps 1644, 1646 configured to attach the first solar module to the first mounting rail.
Regarding claim 5, Stearns discloses that the top edge 603a of the first solar module 603 and the top edge 605a of the second solar module 605 are parallel to the pair of mounting rails 601, 602.
Regarding claims 6 and 16, Stearns discloses a mounting system (Fig. 60) for solar modules, the mounting system comprising: a pair of mounting rails 601, 607 configured to support a plurality of solar modules 603, 605 in a first row R1, wherein a first mounting rail 601 of the pair is positioned under a first half of each of the solar modules 603, 605 in the first row, and wherein a second mounting rail 607of the pair is positioned under a second half of each of the solar modules 603, 605 in the first row; a third mounting rail 609 configured to support a second row R2 of solar modules 610, 611, wherein the third mounting rail 609 is positioned under a second half of each of the solar modules 610, 611 in the second row; and a splice 606 configured to connect a top edge of a first solar module 603 in the first row to a bottom edge of a first solar module 610 in the second row. Moreover, the method steps of claim 16 are necessarily performed in assembling the structure of claim 6.
Regarding claim 7, Stearns discloses that the first mounting rail 601 is parallel to the second mounting rail 607, and wherein the second mounting rail 607 is further parallel to the third mounting rail 609.
Regarding claim 8, Stearns discloses that the first mounting rail 601, the second mounting rail 607, and the third mounting 609 rail are parallel to a bottom edge 603c of the first row of solar modules.
Regarding claim 9, Stearns discloses that the splice 606 is further configured to connect two solar modules 603, 605 in the first row R1 to two solar modules 610, 611 in the second row R2.
Regarding claim 10, Stearns discloses that the splice 606is further configured to connect one solar module 603 in the first row to two solar modules 610, 611 in the second row.
Regarding claim 11, Stearns discloses at least one of: one or more clamps 1644, 1646 configured to attach a solar module in the first row to one or more of the first mounting rail and the second mounting rail; or one or more mounts 1643 configured to attach one or more of the first mounting rail, the second mounting rail, and the third mounting rail to a roof surface.
Regarding claims 12 and 17, Stearns discloses that the solar modules in the first row are arranged in portrait orientation along the pair of mounting rails, and wherein the solar modules in the second row are arranged in portrait orientation along the third mounting rail.
Regarding claims 15 and 20, Stearns discloses that the first solar module 603 in the first row and the first solar module 610 in the second row connected by the splice 606 are respectively at an end of the first row and the second row, and further comprising a second splice 612 configured to connect a top edge of a third solar module 613 in the first row to a bottom edge of a fourth solar module 614 in the second row, wherein the third solar module and the fourth solar module are respectively in a middle of the first row and the second row.
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.
Claim(s) 13, 14, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stearns.
Regarding claims 13, 14, 18, and 19, Stearns does not disclose that the solar modules in the first row are arranged in landscape orientation along the pair of mounting rails, and wherein the solar modules in the second row are arranged in landscape orientation along the third mounting rail or that the solar modules in the first row are arranged in portrait orientation along the pair of mounting rails, and wherein the solar modules in the second row are in landscape orientation along the third mounting rail. It would have been obvious to arrange the rows in landscape orientation or both portrait and landscape because the rearrangement of parts is generally recognized as being within the level of ordinary skill in the art and such placement would not alter the performance of the device. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Annotate Figure 60 of Stearn
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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 1, 6, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-20 of U.S. Patent No.12289079. Although the claims at issue are not identical, they are not patentably distinct from each other because each element in the instant claims are recited by and thus within the scope of the patented claims. While claims 8-20 of the patented claims do not disclose a plurality of solar modules forming first and second rows, it has been held that a mere duplication of parts, such as the duplication of the solar modules, has no patentable significance unless a new and unexpected result is produced. A duplication of parts is generally recognized as being within the level of ordinary skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633
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