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 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 1-8 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 a light transmittance and a reflectance for the laminated film minus the protective coat. When reviewing in light of the specification, the film was laminated to a solar cell at the time of the measurements (see pages 52 to 53, para [0150]-[0153] of applicant’s specification, i.e., [u]sing a glass monocrystalline silicon cell, the decorative laminated film produced by the above manufacturing method was manually applied). It appears the test method, and therefore the results, depends on lamination to a solar cell. For example, reflectance measured as described will depend on the difference in the refractive index of the film and the surface of the solar cell. As the solar cell is merely theoretical when claiming the protective film only, and therefore, the claim is indefinite. Claims 2-8 are rejected as dependent on claim 1.
Regarding claim 2, applicant recites a property, Fg, of a hypothetical solar module that is not part of the claimed device, i.e., a decorative laminated film. Therefore, the claim is indefinite and is not able to be examined, as Fg is unknowable.
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.
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.
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 non-obviousness.
Claims 1and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (US 2021/0043787).
Regarding claim 1, Kudo discloses a decorative laminated film (shown in figs. 4B-4D) for a solar cell module (11a, 11b, SC) comprising:
a protective film (A); (arbitrary film-like substrate f1)
a hard coat layer (B); (16)
a decorative layer (C); (14) (alternatively printed layer 24, para [0014], [0052])
a support layer (G); (face plate 12) (alternatively decorative layer 14)
and an adhesive layer (F), (11A) (alternatively adhesion layer between layer 14 and 12, see para [0048])
wherein a decorative laminated film (L) in a state where the protective film (A) (fl) is peeled off from the decorative laminated film for the solar cell module, has a total light transmittance Tt of 50% or more and 90% or less for wavelengths of 380 nm to 810 nm (see figs. 9A-9B) (see para [0046]-[0048], [0052] and [0056]).
Kudo does not disclose a reflectance R of 5% or more and 40% or less for wavelengths of 380 nm to 1300 nm, nor wherein a refractive index Fa of the adhesive layer is 1.3 or more and 1.8 or less.
The control of materials to result in a specific reflectance value and refractive index value, which are related, is well-known in the industry. See MPEP 2144.03. Therefore, methods known to optimize said numbers is well-known.
The court has held it would be obvious to a person having ordinary skill in the art to optimize the recited variable as differences in a variable will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such variable is critical. "[W]here 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." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP 2144.05.
Regarding claim 4, Kudo discloses a decorative laminated film for solar cell module according to claim 1, but does not disclose wherein the decorative laminated film (L) in the state where the protective film (A) is peeled off from the decorative laminated film for solar cell module, has an adhesive strength with the solar cell module of 1 N/25mm or more and 50 N/25mm or less. The adhesive strength determines how well the film functions and is therefore a result effective variable.
The court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Regarding claim 5, Kudo discloses a decorative laminated film for a solar cell module according to claim 1, wherein the hard coat layer is a layer formed by a thermosetting coating composition or an active energy ray-curable coating composition (see para [0014]).
Regarding claim 6, Kudo discloses a decorative laminated film for solar cell module according to claim 1, but does not disclose wherein the surface roughness Ra(C) of the decorative laminated film (L) from which the protective film is peeled off at a speed of 5.0 mm/s and the surface roughness Ra(P) of the peel side of the protective film satisfy the following formula (1):50.0< (Ra(C)/Ra(P)) x100 < 210.0 (1).
The court has held it would be obvious to a person having ordinary skill in the art to optimize the recited variable as differences in a variable will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such variable is critical. "[W]here 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." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP 2144.05.
Regarding claim 7, Kudo discloses a decorative laminated film for solar cell module according to claim 1, but does not disclose herein surface free energy yac of the decorative laminated film (L) in the state where the protective film is peeled off, and surface free energy yap of the peel side of the protective film satisfy the following formula (2):50.0 (yac/yap) x 100 110.0 (2).
The court has held it would be obvious to a person having ordinary skill in the art to optimize the recited variable as differences in a variable will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such variable is critical. "[W]here 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." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP 2144.05.
Regarding claim 8, Kudo discloses a decorative laminated film for solar cell module according to claim 1, but does not disclose wherein Martens hardness HM(L) of the decorative laminated film (L) in the state where the protective film is peeled off, satisfies the following formula (3):
2.0 N/mm2< HM(L) 50.0 N/mm2 (3).
Kudo does disclose the same composition of the hard coat layer, i.e., a urethane acrylate (see para [0061]), wherein a urethane is a polyol reacted with a isocyanurate compound (see applicant’s specification, pp 15-16, para [0052]-[0053]).
The court has held where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. as applied to claim 1 above, and further in view of Kim (US 2022/0184939)
Regarding claim 3, Kudo discloses a decorative laminated film for solar cell module according to claim 1 but does not disclose wherein the decorative laminated film can be peeled off after being adhered to the solar cell module.
There are multiple ways known in the solar cell art to disassemble (peel off) a solar cell module. Kim is analogous art to Kudo as Kim is directed to solar cell modules (see abstract). Kim discloses a method to age the adhesive, and remove (peel off) the top layer/film (see para [0031]-[0035]).
The court has held it would be obvious to a person having ordinary skill in the art to use a known technique (i.e. the peel method of Kim) to improve similar devices (i.e., the solar cell modules of Kudo and Kim), in the same way (i.e., as disclosed by Kim). See MPEP 2143.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mizuno (EP 0 587 353) (discloses a decorative laminate sheet of claim 1, but does not disclose use for a solar cell or light transmittance).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at (303) 297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721
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