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 .
Claim Objections
Claims 18-19 are objected to under 37 CFR 1.75 as being a substantial duplicate of one another. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-19 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.
Regarding Claim 1, Applicant recites, “wherein the front layer is configured to provide both high light transmission and enhanced durability”. Its unclear what limitations exactly corresponds to “high” light transmission and “enhanced” durability. Appropriate action is required.
Regarding Claim 8, Applicant recites, “the second portion of the sealing layer”. The phrase, “the second portion” lacks antecedent basis. Appropriate action is required.
Regarding Claim 12, Applicant recites, “wherein molecular weight distribution of is calculated by”. Its unclear in what context molecular weight distribution is being calculated by in light of this phrasing. Appropriate action is required.
Regarding Claim 17, Applicant recites, “a plurality of photovoltaic cells”. Its unclear if this is referencing the “a plurality of photovoltaic cells” already recited in claim 1 or if a new distinct grouping of “a plurality of photovoltaic cells” are being introduced. Appropriate action is required.
Regarding Claim 17, Applicant recites, “wherein the front layer is configured to provide both high light transmission and enhanced durability in outdoor environmental conditions”. This limitation has already been introduced in claim preceding claim 1 rendering this passage unclear. Appropriate action is required.
Regarding Claim 17, Applicant recites, “wherein the front layer is configured to provide both high light transmission and enhanced durability”. Its unclear what limitations exactly corresponds to “high” light transmission and “enhanced” durability. Appropriate action is required.
Regarding Claim 18, Applicant recites, “on a roof or on a façade”. This limitation has already been introduced in claim preceding claim 1 rendering this passage unclear. Appropriate action is required.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,278,300 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,278,300 B2 discloses all the limitations of claims 1-9 of the instant application, the remaining dependents of claims 10-19 are addressed in claims 2-14 of U.S. Patent No. 12,278,300 B2.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-8, 10-15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoya et al. (US 2016/0060443 A1).
In view of Claim 1, Hoya et al. discloses a photovoltaic module (Figure 4) comprising:
a front layer disposed on a sunlight facing side of the photovoltaic module (Figure 4, #32 – II-10 – Paragraph 0209, 0211 & 0243),
a cell assembly comprising a plurality of photovoltaic cells (Fig. 4, #5).
Hoya et al. discloses that the front layer comprises a layer II-10 that can comprises a propylene-based copolymer B10 at 100 parts by weight (Paragraph 0209 – II-10 is mapped as the polypropylene composition), wherein the polypropylene composition can comprise approximately 95% polypropylene and approximately 5.47 % ethylene when the polypropylene represents 92 mol % and when the ethylene is 8 mol % (Paragraph 0990), the calculation is shown below:
w
t
%
p
o
l
y
p
r
o
p
y
l
e
n
e
=
(
92
%
*
42.08
g
m
o
l
)
92
%
*
42.08
g
m
o
l
+
(
8
%
*
28.05
g
m
o
l
)
=
94.5
%
w
t
%
e
t
h
y
l
e
n
e
=
(
8
%
*
28.05
g
m
o
l
)
92
%
*
42.08
g
m
o
l
+
(
8
%
*
28.05
g
m
o
l
)
=
5.5
%
In then alternative, the ethylene is represented by a α-olefin having 4 to 20 carbon atoms (Paragraph 0989) and there is no restriction on its weight percentage based on the total weight of the random copolymer.
In regards to the limitations that “the front layer exhibiting an average light transmission of at least 65% in the wavelength range of 350 nm to 1200 nm as determined in accordance with ASTM D1003 13” and “wherein the front layer is configured to provide both high light transmission and enhanced durability in outdoor environmental conditions”, Hoya et al. teaches the same polypropylene composition as recited by Applicant in claim 1, and therefore it will, inherently, display the recited properties, namely allowing for “the front layer exhibiting an average light transmission of at least 65% in the wavelength range of 350 nm to 1200 nm as determined in accordance with ASTM D1003 13” and “wherein the front layer is configured to provide both high light transmission and enhanced durability in outdoor environmental conditions”. See MPEP 2112.01 I.
In view of Claim 2, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. discloses a sealing material at least partly encapsulating the plurality of photovoltaic cells (Fig. 4, #31 – Paragraph 0243-0244 – these layers comprise composition material I-10).
In view of Claim 3, Hoya et al. is relied upon for the reasons given above in addressing Claim 2. Hoya et al. discloses that the sealing material comprises a polyolefin elastomer composition comprising an ethylene-alpha-olefin copolymer (Paragraph 0211 – it is an ethylene based copolymer, wherein the other monomer is selected from propylene, butene, hexene which correspond to alpha-olefin copolymers).
In view of Claim 4, Hoya et al. is relied upon for the reasons given above in addressing Claim 3. Hoya et al. disclose that the ethylene alpha olefin copolymer (composition material I-10) comprises ethylene at up to 95 molar % of the material (Paragraph 0941 – ethylene-based copolymer…ethylene content is 60 to 95 mol %), thus when ethylene is at 95 molar %, this corresponds to a weight % of the ethylene to be at 92.7% when propylene is selected as the other monomer (Paragraph 0211 – see calculation below), thus the other alpha olefin (polypropylene) would be present in a weight percent of 7.3% (100% - 92.7%) based on the weight of the ethylene-alpha-olefin copolymer.
w
t
%
e
t
h
y
l
e
n
e
=
(
95
%
*
28.05
g
m
o
l
)
95
%
*
28.05
g
m
o
l
+
(
5
%
*
42.08
g
m
o
l
)
=
92.7
%
In view of Claim 5, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. In regards to the limitation, that, “the sealing layer has a transmission of the sealing layer for light in the wavelength range of 350 nm to 1200 nm as determined according to ASTM D1003-13 of at least 65%”, Hoya et al. teaches the same polypropylene composition as recited by Applicant in claim 1, and therefore it will, inherently, display the recited properties, namely allowing for “the sealing layer has a transmission of the sealing layer for light in the wavelength range of 350 nm to 1200 nm as determined according to ASTM D1003-13 of at least 65%”. See MPEP 2112.01 I.
In view of Claim 6, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. teaches a back layer (Fig. 4, #2 or #41), wherein the cell assembly is located between the front (Fig. 4, #32) and the back layer (Fig. 4, #2 or #41)
In view of Claim 7, Hoya et al. is relied upon for the reasons given above in addressing Claim 6. Hoya et al. teaches that the back layer (Fig. 4, #41 – Paragraph 0244 – I-10) can comprise a propylene (Paragraph 0211).
In view of Claim 8, Hoya et al. is relied upon for the reasons given above in addressing Claim 2. Hoya et al. discloses a back layer (Fig. 4, #2) wherein the sealing material (Fig. 4, #32) is arranged between and in direct contact with the front layer (Fig. 4, #31) and the plurality of photovoltaic cells (Fig. 4, #5) and a second portion of the sealing layer (Fig. 4, #42) is arranged between and in direction contact with the back layer (Fig. 4, #41) and the plurality of photovoltaic cells (Fig. 4, #5).
In view of Claim 10, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. teaches that the front layer comprises antioxidants include a phenolic and phosphite additive (Paragraph 0913-0916).
In view of Claim 11, Hoya et al. is relied upon for the reasons given above in addressing Claim 3. Hoya et al. discloses that the ethylene a olefin copolymer in the polyolefin elastomer composition is crosslinked (Paragraph 0004).
In view of Claim 12, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. In regards to the limitation that, “the random copolymer is a propylene-ethylene copolymer having a molecular weight distribution of at least 5.0 and at most 10.0, wherein molecular weight distribution of is calculated by dividing the weight average molecular weight by the number average molecular weight and wherein weight average molecular weight and number average molecular weight are measured according to ASTM D6474-12”, Hoya et al. teaches the same polypropylene composition as recited by Applicant in claim 1, and therefore it will, inherently, display the recited properties, namely allowing for “the random copolymer is a propylene-ethylene copolymer having a molecular weight distribution of at least 5.0 and at most 10.0, wherein molecular weight distribution of is calculated by dividing the weight average molecular weight by the number average molecular weight and wherein weight average molecular weight and number average molecular weight are measured according to ASTM D6474-12”. See MPEP 2112.01 I.
In view of Claim 13, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. teaches that the random copolymer is propylene-ethylene Hoya et al. teaches that the melt flow rate is in the range of 0.017 to 8.3 dg/min (Paragraph 0951-0953).
In regards to the limitations, “determined using IS01133:2011, at 2.16kg and 230°C”, Hoya et al. teaches the same polypropylene composition as recited by Applicant in claim 1, and therefore it will, inherently, display the recited properties, namely allowing for “determined using IS01133:2011, at 2.16kg and 230°C”. See MPEP 2112.01 I.
In view of Claim 14, Hoya et al. is relied upon for the reasons given above in addressing Claim 3. Hoya et al. discloses that the sealing material comprises at least linear alpha olefin having 3 to 20 carbon atoms (Paragraph 0211 – it is an ethylene based copolymer, wherein the other monomer is selected from propylene, butene, hexene which correspond to alpha-olefin copolymers).
In view of Claim 15, Hoya et al. is relied upon for the reasons given above in addressing Claim 3. Hoya et al. teaches the density of the ethylene-alpha-olefin copolymer is within the range of 0.85-0.905 g/cm3 (Paragraph 0093).
In view of Claim 17, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. discloses the front layer (Fig. 4, #32) the cell assembly comprising a plurality of photovoltaic cells (Fig. 4, #5), a sealing material at least partly encapsulating the plurality of photovoltaic cells (Fig. 4, #31 – Paragraph 0243-0244 – these layers comprise composition material I-10).
Hoya et al. disclose that the sealing material comprises a ethylene alpha olefin copolymer (composition material I-10) comprises ethylene at up to 95 molar % of the material (Paragraph 0941 – ethylene-based copolymer…ethylene content is 60 to 95 mol %), thus when ethylene is at 95 molar %, this corresponds to a weight % of the ethylene to be at 92.7% when propylene is selected as the other monomer (Paragraph 0211 – see calculation below), thus the other alpha olefin (polypropylene) would be present in a weight percent of 7.3% (100% - 92.7%) based on the weight of the ethylene-alpha-olefin copolymer.
w
t
%
e
t
h
y
l
e
n
e
=
(
95
%
*
28.05
g
m
o
l
)
95
%
*
28.05
g
m
o
l
+
(
5
%
*
42.08
g
m
o
l
)
=
92.7
%
Hoya et al. teaches a back layer on the opposite side of the cell assembly from the front layer that comprises a polypropylene (Fig. 4, #41 & Paragraph 0243-0244 & 0941).
In regards to the limitation that “wherein the front layer is configured to provide both high light transmission and enhanced durability in outdoor environmental conditions”, Hoya et al. teaches the same polypropylene composition as recited by Applicant in claim 1, and therefore it will, inherently, display the recited properties, namely allowing for “wherein the front layer is configured to provide both high light transmission and enhanced durability in outdoor environmental conditions”. See MPEP 2112.01 I.
In view of Claims 18-19, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. teaches the structure can be used on a roof (Paragraph 0067).
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.
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hoya et al. (US 2016/0060443 A1) in view of Maeyama et al. (US 2016/0002440 A1).
In view of Claim 9, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. teaches that the first polypropylene compositions further comprise a mixture of light stabilizing additives that can include light stabilizers, UV absorbers/synergists, antioxidants include a phenolic and phosphite additive (Paragraph 0913-0916).
Hoya et al. does not disclose that the hindered amines are high and low molecular weight tertiary amines.
Maeyama et al. teaches that hindered amines are selected from high and low molecular weight tertiary amines that advantageously scavenge radical species harmful to the polymer (Paragraph 0082-0084). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include these high and low molecular weight tertiary amines as the hindered amines of Hoya et al. for the advantage of scavenging radical species harmful to the polymer.
In regards to the limitation “measured by ASTM D6474-12”. It has been shown that 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 claim 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 (MPEP 2113).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hoya et al. (US 2016/0060443 A1) in view of Aarnio-Winterhof et al. (US 2019/0177520 A1).
In view of Claim 16, Hoya et al. is relied upon for the reasons given above in addressing Claim 1. Hoya et al. discloses that the sealing layer comprises at least 95wt% polyolefins (Paragraph 0941 – both components propylene and ethylene are olefins and thus meet this limitation of at least 95 wt%). Van Giesen et al. discloses that the front layer comprises at least 90 wt% of the polypropylene and at most 10 wt% ethylene (Paragraph 0018).
In regards to the limitation that “the front layer comprises at least 95wt% of the first polypropylene composition”, the Examiner directs Applicant to MPEP 2144.05 I. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Accordingly, it would have been obvious to one of ordinary skill in the art to have selected the overlapping ranged disclosed by Van Giesen et al. because selection of the overlapping portion or ranges has been held to be a prima facie case of obviousness.
Modified Hoya et al. does not disclose that the back layer comprises at least 95% polyolefin.
Aarnio-Winterhof et al. teaches a back layer comprises at least 95% polyolefin (Paragraph 0020) that is used as a back layer in a photovoltaic module (Paragraph 0041-0043). Aarnio-Winterhof et al. teaches that using these a heterophasic copolymer leads to the following desirable properties: advantageous water intake property, high thermal and mechanical stability (expressed e.g. HDT) both during lamination, if needed when producing the article, and at end use application, and/or, also preferably, a very advantageous shrinkage behavior and dimensional stability as indicated by CLTE measurements (Paragraph 0053). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate a back layer comprises at least 95% polyolefin in Hoya et al. for the advantage of at least one of the following desirable properties: advantageous water intake property, high thermal and mechanical stability (expressed e.g. HDT) both during lamination, if needed when producing the article, and at end use application, and/or, also preferably, a very advantageous shrinkage behavior and dimensional stability as indicated by CLTE measurements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P MALLEY JR. whose telephone number is (571)270-1638. The examiner can normally be reached Monday-Friday 8am-430pm EST.
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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 571-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P MALLEY JR./Primary Examiner, Art Unit 1726