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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al (JP 2012/216689A, reference made to attached English machine translation), and in further view of Ichikawa (JP 2013/093410A, reference made to attached English machine translation).
Regarding claim 1 Hirose discloses an infrared-light-reflecting sheet comprising an infrared-light-transmitting dark color layer ([0020], Fig. 2 see: black adhesive layer 60) and a reflective layer ([0024], Fig. 2 see: reflective layer 61), wherein
the infrared-light-reflecting sheet has only one layer that is the infrared-light-transmitting dark color layer ([0020], Fig. 2 see: black adhesive layer 60 with a single layer containing the dark pigment that is IR transmitting), and
the thickness of the infrared-light-transmitting dark color layer is 15 μm or less ([0091] see: film thickness of such a black adhesive layer is 2 to 15 µm after curing),
the infrared-light-transmitting dark color layer contains a resin component and a pigment component ([0033]-[0034] see: black adhesive composition in black adhesive layer 60 has a base material of a polyurethane/polycarbonate resin and an organic pigment), and
wherein a reflection rate of the infrared-light-reflecting sheet is 50% or more when light having a wavelength of 1000 nm is incident to the infrared-light-reflecting sheet ([0021], [0096]-[0097] Fig. 4 see: reflection rate of the rear surface protective sheet has a reflection rate over 50% for the wavelength of 1000 nm).
Hirose does not explicitly disclose the infrared reflective sheet has an L* value of 10 or less as measured under conditions of a D65 light source and a 10° view angle according to JIS-Z 8722.
Ichikawa teaches an infrared reflecting back sheet for a solar panel with a black color bonding layer which are desirably colored black from a design standpoint (aesthetic appearance) (Ichikawa, see Abstract and middle of page 1 of translation). Ichikawa teaches minimizing the L* value of the surface facing the cell side of the solar cell backsheet is more preferably 30 or less (Ichikawa, see Abstract and page 2 of translation).
Ichikawa and Hirose are combinable as they are both concerned with the field of solar cell module backsheets.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the infrared-light-reflecting sheet of Hirose in view of Ichikawa such that the infrared reflective sheet has an L* value of preferably 30 or less as in Ichikawa (see Abstract and page 2 of translation) to provide an aesthetic appearance of the solar cell module (Ichikawa, see Abstract and middle of page 1 of translation and page 2 of translation). The range of an L* value of preferably 30 or less entirely encompasses the claimed range of 10 or less. The court has held where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Additionally, Ichikawa teaches the L* value of the infrared reflective sheet impacts the design or aesthetic appearance of the solar panel (Ichikawa, see Abstract and middle of page 1 of translation and page 2 of translation) 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. “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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Regarding claim 2 modified Hirose discloses the infrared-light-reflecting sheet according to claim 1,
regarding the recitation “the content of the pigment component is 20 parts by mass to 40 parts by mass with respect to 100 parts by mass of the resin component”, Hirose teaches in para [0059] adding the black pigment in a mass ration of 3 to 50 mass% relative to the base resin which entirely encompasses the claimed range. The court has held where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3 modified Hirose discloses the infrared-light-reflecting sheet according to claim 1, and regarding the claim 3 recitation “wherein the thickness of the infrared-light-transmitting dark color layer is 10 μm or less” Hirose teaches in para [0091] the film thickness of such a black adhesive layer is 2 to 15 µm after curing with a specific example of a thickness of 3 µm which anticipates the range. Alternatively, the thickness range of 2 to 15 µm substantially overlaps the claimed range. The court has held where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4 modified Hirose discloses the infrared-light-reflecting sheet of claim 1, which is a rear surface protective sheet for a solar cell module (Fig. 2 see: a rear protective sheet 6 of a solar cell module 1).
Regarding claim 5 modified Hirose discloses a solar cell module comprising the infrared-light-reflecting sheet according to claim 4 (Fig. 2 see: a rear protective sheet 6) and a solar cell element ([0023], Fig. 2 see: a solar cell element 4), wherein the infrared-light-reflecting sheet is disposed laminated on a non-photoreception surface side of the solar cell element ([0023], Fig. 2).
Regarding claim 6 modified Hirose discloses the infrared-light-reflecting sheet according to claim 2, and regarding the claim 6 recitation “wherein the thickness of the infrared-light-transmitting dark color layer is 10 μm or less” Hirose teaches in para [0091] the film thickness of such a black adhesive layer is 2 to 15 µm after curing with a specific example of a thickness of 3 µm which anticipates the range. Alternatively, the thickness range of 2 to 15 µm substantially overlaps the claimed range. The court has held where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)..
Regarding claim 7 modified Hirose discloses the infrared-light-reflecting sheet of claim 2, which is a rear surface protective sheet for a solar cell module (Fig. 2 see: a rear protective sheet 6 of a solar cell module 1).
Regarding claim 8 modified Hirose discloses the infrared-light-reflecting sheet of claim 3, which is a rear surface protective sheet for a solar cell module (Fig. 2 see: a rear protective sheet 6 of a solar cell module 1).
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 6 of U.S. Patent No. 12,297,359 in view of Ichikawa (JP 2013/093410A, reference made to attached English machine translation).
Claims 1-2 of U.S. Patent No. 12,297,359 recite substantially the same limitations as claim 1 of the present application but does not explicitly claim where the infrared reflective sheet has an L* value of 10 or less as measured under conditions of a D65 light source and a 10° view angle according to JIS-Z 8722.
However, Ichikawa teaches an infrared reflecting back sheet for a solar panel with a black color bonding layer which are desirably colored black from a design standpoint (aesthetic appearance) (Ichikawa, see Abstract and middle of page 1 of translation). Ichikawa teaches minimizing the L* value of the surface facing the cell side of the solar cell backsheet is more preferably 30 or less (Ichikawa, see Abstract and page 2 of translation).
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the infrared-light-reflecting sheet of U.S. Patent No. 12,297,359 in view of Ichikawa such that the infrared reflective sheet has an L* value of preferably 30 or less as in Ichikawa (see Abstract and page 2 of translation) to provide an aesthetic appearance of the solar cell module (Ichikawa, see Abstract and middle of page 1 of translation and page 2 of translation). The range of an L* value of preferably 30 or less entirely encompasses the claimed range of 10 or less. The court has held where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 1-2 and 6 of U.S. Patent No. 12,297,359 recite the further limitations of claims 2-8 of the present application.
Conclusion
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ANDREW J. GOLDEN
Primary Examiner
Art Unit 1726
/ANDREW J GOLDEN/Primary Examiner, Art Unit 1726