DETAILED ACTION
(1)
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 . This is the first office action on the merits. Claims 1-8 are pending before the Office for review.
(2)
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 1-7 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.
Claim 1 is directed toward a laminated body. Claim 1 also requires that the laminated bottom include a back sheet “constituting a bottom section of a solar power generation device….” This aspect of the claimed invention is unclear. Specifically, it’s unclear whether the laminated body should be interpreted to include a solar power generation device and, if so, should the preamble be changed to a solar power generation device.
This ambiguity is reflected in the contrast between claims 7 and 8. Claim 7 is also directed toward the laminated body, but defines features of the solar power generation device. If claims 1 and 7 are directed to a laminated body, it’s unclear why the features of claim 7 are directed toward the power generation device. Is a complete power generation device a requirement of the laminated body of claims 1 and/or 7? In contrast, claim 8 is directed toward a power generation system including the laminated body, which is similarly defined as in claim 1. Claim 8 is clear in its scope.
Claim 3 is unclear as to the ratio requirement. The ratio is defined in a parenthetical is Eb/Ea, but is described as Ea/Eb in the text of the claim. Applicant is encouraged to amend claim 3 so that the description is consistent with the formula in the parenthetical to avoid ambiguity.
Claim 5 is unclear what the limitations of the peel strength being determined “via the elastic body” requires
Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art. Claims 2-7 are also rejected due to their dependency on claim 1.
(3)
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.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi, (JP 2012-033681-A), which is cited in Applicant’s information disclosure statement. The text citations to Kobayashi refer to the included English language machine translation. The figure citations to Kobayashi refer to the Japanese language document included with Applicant’s information disclosure statement.
With respect to claim 1, Examiner notes the statement “constituting a bottom section of a solar power generation device” is a statement of intended use that does not further limit the claimed invention. The cited statement recites a function performed by the back sheet of the laminated body. Any back sheet meeting the requirements of the claimed invention is capable of the same use absent evidence to the contrary.
Kobayashi teaches a laminated body comprising an installation surface in the form of a sheet-like body (11) on which a solar module is to be installed, an elastic body (14) and a solar cell module (13) comprising a protective layer, which is a back sheet within the scope of the claimed invention. Figure 1 and Page 2, Description of Embodiments.
With respect to claim 7, Examiner notes the body of the claim is directed toward the features of the solar power generation device that the back sheet is capable of having thereon. These are intended use limitations because the claimed invention is directed toward the features of the laminated body. The features of a solar power generation device that could be constituted on the back sheet of the laminated body are not a feature of the laminated body itself. Applicant is encouraged to use different claim language directed toward the solar power generation system itself comprising the laminated body to define this feature of the claimed invention.
In this case, Kobayashi teaches a structure meeting the laminated body requirements of the claimed invention. Figure 1 and Page 2, Description of Embodiments.
With respect to claim 8, Kobayashi teaches a solar power generation system comprising an installation surface in the form of a sheet-like body (11), an elastic body (14), the elastic body being fixed in a state placed on the installation surface via an adhesive, wherein a back sheet (protective layer covering the back of the solar cell) constituting a bottom section of the solar power generation device (13) is fixed in a state placed on an upper surface of the elastic body. Figure 1 and Page 2, Description of Embodiments.
(4)
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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi, (JP 2012-033681-A) in view of Wu et al. (U.S. Publication No. 2016/0134231).
With respect to claim 2, Kobayashi teaches the laminated body comprising the elastic body that supports the solar power generation device thereon but is silent as to the Young’s modulus (longitudinal elastic modulus) of the elastic body.
However, Wu, which deals with solar cell support materials, teaches a Young’s modulus of between 1.5 to 30 MPa is an effective range for photovoltaic support materials. Paragraph 110. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of Kobayashi with Wu is the use of a known technique to improve a similar material in the same way. Both Kobayashi and Wu teach solar power generation device support materials. Wu teaches a Young’s modulus of 1.5 to 30 MPa is an effective amount for a support material of a solar power generation device. Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to form Kobayashi’s elastic body to have a Young’s modulus within this range because Wu teaches it to be effective for solar power generation devices, meaning the modification has a reasonable expectation of success.
With respect to claim 4, modified Kobayashi teaches an effective longitudinal elastic modulus for the elastic body is between 1.5 to 30 MPa. Wu, Paragraph 110. Regarding the transverse elastic modulus, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to form the elastic body with a transverse elastic modulus in the same range because modified Kobayashi teaches this to be an effective amount for a solar power generation device, meaning the modification has a reasonable expectation of success.
(5)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi, (JP 2012-033681-A) in view of Wu et al. (U.S. Publication No. 2016/0134231), as applied to claims 2 and 4 above, and further in view of Chen (CN 114516969 A). The citations to Chen refer to the included English language machine translation.
With respect to claim 3, modified Kobayashi teaches the elastic body has a transverse elastic modulus of between 1.5 to 30 MPa (Wu, Paragraph 110) but is silent as to the transverse elastic modulus of the back sheet and thus the ratio of the two.
However, Chen, which deals with solar cell packaging materials, teaches a transverse elastic modulus of not less than 4,000 MPa is an effective value for the back sheet of a solar cell. Abstract and Page 8, BOPET Layer. Chen teaches this obtains a film with good mechanical properties. Page 8, BOPET Layer.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to form modified Kobayashi’s back sheet with a transverse elastic modulus of not less than 4,000 MPa because Chen teaches this obtains a film with good mechanical properties.
Furthermore, when the film is formed with a transverse elastic modulus of not less than 4,000 MPa the ratio of the two is 0.0075, which is within the scope of the claimed invention. As per the MPEP, "where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists." MPEP 2144.05(I) (internal citation omitted).
(6)
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi, (JP 2012-033681-A) in view of Kitamura et al. (JP H08-142290 A). The citations to Kitamura refer to the included English language machine translation.
With respect to claim 5, Kobayashi teaches the installation surface is a tent (Background-Art) but is silent as to whether the tent is constituted by a fiber-containing sheet having a sheet panel strength of 0.1 N/cm or greater.
However, Kitamura, which deals with materials for tents (Description of Related Arts), teaches a fiber-containing sheet for forming tents having a shear peal strength of 1.5 kg/cm or more, which is equivalent to approximately 14.7 N/cm. Page 3, Third paragraph. Kitamura teaches a sheet having this peal strength is associated with less deterioration by processing. Page 5, Paragraph [0015].
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to form the back sheet and the installation surface with a fiber-containing sheet having the requisite peal strength because Kitamura teaches doing so is associated with less deterioration during processing.
(7)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi, (JP 2012-033681-A) in view of Saito et al. (WO 2018-025589-A1). The citations to Saito refer to the included English language machine translation.
With respect to claim 6, Kobayashi teaches the installation surface is constituted by a fiber-containing sheet, the elastic body and the back sheet, but is silent as to their respective linear expansion coefficients relative to one another.
However, Saito, which deals with solar power generation modules, teaches the linear expansion coefficient of stacked is changed to adjust the amount of expansion. Page 3, Description of Embodiment of the Present Invention. Specifically, the expansion amounts are adjusted to match each other based on the respective operating temperatures of each component. Page 3, Description of Embodiment of the Present Invention.
Saito establishes the linear expansion coefficient is a result effective variable because Saito teaches the linear expansion coefficient of a material is adjusted to influence how much it expands when heated. MPEP 2144.05(II)(B). As per the MPEP, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A). In this case, it’s obvious to one ordinarily skilled in the art at the time of invention to adjust the linear expansion coefficient of each of the installation surface, elastic body and back sheet so that the materials expand an appropriate amount relative to one another when exposed to their respective operating temperatures.
(8)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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