Ex Parte Brounne et al

Patent Trials and Appeals Board

Jan 17, 2019

13542878 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/542,878 07/06/2012 Marcel Brounne
23413 7590 01/22/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 1PLAS0023-US-NP 8508
EXAMINER
SLAWSKI, MAGALI P
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
01/22/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL BROUNNE, CORNELIS JOHANNES,
and PRZEMYSLA W OLSZYNSKI
Appeal2018-003023
Application 13/542,878
Technology Center 1700
Before JAMES C. HOUSEL, MICHAEL G. McMANUS, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-8 and 31-35. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Independent claims 1 and 3 illustrate the subject matter on appeal and
are reproduced below with emphasis added to highlight contested language:
1. A photovoltaic module assembly, comprising:
a photovoltaic cell;
1 Appellants identify SABIC Global Technologies B.V. as the real party in
interest. Appeal Brief filed October 16, 2017 ("App. Br."), 2.
Appeal2018-003023
Application 13/542,878
a transparent first layer comprising a plastic material,
wherein the first layer has a first layer first surface and a first
layer second surf ace;
a plastic structural second layer, wherein the plastic
structural second layer has a second layer first surface and a
second layer second surface, wherein the photovoltaic cell is
between the first layer second surface and the second layer first
surface, wherein the plastic structural second layer comprises a
plastic multi wall sheet comprising ribs and/or hollow sections
to increase the stiffness of the plastic structural second layer;
and
a cured layer between the first layer second surface and
the second layer first surface, wherein the cured layer is made
from a fluid having a viscosity of less than or equal to 1,500
centipoise before curing.
3. A photovoltaic module assembly, comprising:
a photovoltaic cell;
a transparent first layer comprising a plastic material,
wherein the first layer has a first layer first surface and a first
layer second surface;
a plastic structural second layer comprising a plastic
material, wherein the plastic structural second layer has a
second layer first surface and a second layer second surface,
wherein the photovoltaic cell is between the first layer second
surface and the second layer first surface, wherein the plastic
structural second layer comprises a plastic multiwall sheet
comprising ribs and/or hollow sections to increase the stiffness
of the plastic structural second layer;
a connecting layer disposed between the first layer
second surface and the second layer first surface, wherein the
connecting layer forms a gap between the first layer first
surface and the second layer second surface, wherein the
photovoltaic cell is in the connecting layer; and
a cured layer in the gap, between the first layer and the
photovoltaic cell.
App. Br. 15-16 (Claims Appendix) (emphasis added).
2
Appeal2018-003023
Application 13/542,878
The Examiner sets forth the following rejections in the Final Office
Action entered April 28, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered November 27, 2017 ("Ans."):
I. Claims 1, 33, and 35 under 35 U.S.C. § 103(a) as unpatentable
over Xia in view of Roscheisen and Daily;
II. Claims 2, 3, 6, and 8 under 35 U.S.C. § 103(a) as unpatentable
over Xia in view of Roscheisen and Daily, or, alternatively over Xia in view
of Roscheisen, Daily, and Gittings;
III. Claims 4, 5, 31, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Xia in view of Roscheisen and Daily, or, alternatively
over Xia in view of Roscheisen, Daily, Gittings, and Sam;
IV. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Xia in
view of Roscheisen and Daily, or, alternatively over Xia in view of
Roscheisen, Daily, Gittings, Sheats, and Bieniek; and
V. Claim 34 under 35 U.S.C. § 103(a) as unpatentable over Xia in
view of Roscheisen, Daily, Sheats, and Bieniek.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' timely contentions2, we affirm the Examiner's rejections
of claims 1-8 and 31-35 under 35 U.S.C. § 103(a) for the reasons set forth
in the Final Office Action, the Answer, and below.
2 We do not consider the arguments that Appellants present at pages 2 to 3 of
the Reply Brief because Appellants do not show good cause for raising these
arguments for the first time in their Reply Brief. 37 C.F.R. §
41.37( c )(1 )(iv); 37 C.F.R. § 41.41 (b )(2) (arguments raised for the first time
in the Reply Brief that could have been raised in the Appeal Brief will not be
considered by the Board unless good cause is shown).
3
Appeal2018-003023
Application 13/542,878
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each ground of rejection
Appellants contest. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections")).
Rejection I
Appellants argue claims 1, 33, and 35 together on the basis of claim 1,
to which we accordingly limit our discussion. App. Br. 5-9; 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants do not dispute the Examiner's finding that Xia discloses
photovoltaic device 10 comprising photovoltaic cells 14, transparent layer
12 that includes polycarbonate and corresponds to the transparent first layer
recited in claim 1, backsheet 18 that can be flexible and/ or rigid, and
encapsulant 20 that corresponds to the cured layer recited in claim 1.
Compare Final Act. 3, with App. Br. 5-9. Nor do Appellants dispute the
Examiner's finding that because backsheet 18 "has a definite shape,
structural properties, and a structure [that] performs a function, it is a
structural [second] layer" as recited in claim 1. Compare Final Act. 3, with
App. Br. 5-9.
The Examiner finds that Xia does not disclose that plastic backsheet
18 includes a plastic multiwall sheet comprising ribs and/or hollow sections,
and the Examiner relies on Roscheisen and Daily for suggesting this feature.
Final Act. 4--5.
4
Appeal2018-003023
Application 13/542,878
Roscheisen discloses a photovoltaic device comprising a photovoltaic
cell deposited onto thermally conductive backsheet 120, which is connected
to heat sink 122. Col. 2, 11. 1-5, 40-42; col. 11, 1. 67---col. 12, 1. 3; Fig. 4.
Roscheisen discloses that heat sink 122 has a plurality of metal fins 124 that
create greater surface area for heat to be carried away from the heat sink by
way of air convection. Col.12, 11. 5-9; Fig. 4. Roscheisen discloses that the
heat sink allows sufficient heat transfer to lower a normal operating cell
temperature of the photovoltaic cell, thereby increasing the efficiency of the
cell. Col. 2, 11. 4--8. The Examiner finds that the fins of Roscheisen's heat
sink are walls and "are the claimed ribs with the claimed hollows between
them." Final Act. 4--5; Ans. 12.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants' invention to add a
multiwall heatsink as disclosed in Roscheisen to Xia's photovoltaic device
to cool Xia's device and "increase its conversion efficiency." Final Act. 5.
The Examiner finds that because the fins of Roscheisen' s heat sink are made
of metal-a solid material-they would necessarily increase the stiffness of
Xia's backsheet 18. Ans. 12.
The Examiner relies on Daily for suggesting a heat sink having plastic
(rather than metal) fins. Final Act. 5. Daily discloses light-emitting diode
(LED) heat sink assembly 150 comprising LED 154 positioned in heat sink
body 156. ,r 37; Fig. 15A. Daily discloses that LED 154 transfers heat to
heat sink body 156, which has an axially extending fin pattern that facilitates
removal of heat to air passing over the outer surfaces of heat sink body 156.
,r 40; Fig. 15A. Daily discloses that heat sink body 156 may be comprised
5
Appeal2018-003023
Application 13/542,878
of any thermally conductive material, such as a conductive metal or a
thermally conductive resin. ,r 40.
The Examiner finds that light emitting diodes (LEDs) as disclosed in
Daily, like the photovoltaic cells disclosed in Roscheisen, are optoelectronic
semiconductor devices, and the Examiner finds that Daily's heat sink 156
and Roscheisen's heat sink 122 both work the same way-they both take
heat from the semiconductor device and dissipate it outward via the fins.
Final Act. 5. The Examiner finds that "Daily's teachings show that, at the
time of the invention, it was known in the art that either a metal or a
thermally conductive resin would make an effective heat sink for an
optoelectronic semiconductor device." Id. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellants' invention to use a thermally conductive resin----or plastic-as
disclosed in Daily to form Roscheisen's heat-dissipating fins, which "would
have provided a plastic multiwalled sheet as claimed." Id.
Appellants argue that one skilled in the art of plastic sheets would
understand that a heat sink as disclosed in Roscheisen or Daily used for heat
transfer is not a multiwall sheet comprising ribs and/or hollow sections that
increase the stiffness of the sheet. App. Br. 6-7, 9. Appellants argue that
the Examiner incorrectly "tak[ es] a literal meaning of a multi wall sheet,
alleging the fins of the heat sink are walls." App. Br. 7.
As the Examiner correctly finds, however, Appellants' Specification
as originally filed does not provide a definition of "multiwall sheet." Ans.
13. Nor does the Specification provide any description of a "multiwall
sheet." Rather, the Specification as originally filed includes only three
references to a "multi wall sheet," none of which does anything more than
6
Appeal2018-003023
Application 13/542,878
state that the second layer comprises a multiwall sheet comprising ribs
and/or hollow sections to increase the stiffness of the second layer, as recited
in claim 1. Spec. ,r,r 53, 72, 88. Due to the absence of any definition or
limiting description of a "multiwall sheet" in Appellants' Specification, the
Examiner correctly interprets this phrase according to its plain and ordinary
meaning as a sheet having multiple walls. Ans. 13 ( citing dictionary
definitions of "multi wall" previously cited in the Advisory Action entered
July 21, 2017); In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989) (the words of
a claim must be given their plain meaning unless the plain meaning is
inconsistent with the specification.). The Examiner further correctly finds
that a wall is a structure that divides an area, 3 and determines that because
the fins disclosed in Roscheisen divide the space between the fins, the fins
are walls. Ans. 13.
Although Appellants argue that one skilled in the art of plastic sheets
would understand that a heat sink as disclosed in Roscheisen used for heat
transfer is not a multiwall sheet comprising ribs and/or hollow sections to
increase the stiffness of the sheet, Appellants do not provide any evidence to
support this assertion, which is a question of fact. App. Br. 6-7. Because it
is well-established that unsupported attorney arguments cannot take the
place of evidence necessary to resolve a disputed question of fact,
Appellants' arguments lack persuasive merit. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) ("An assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case of obviousness."); Icon Health &
Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)
3 See, e.g., https://dictionary.cambridge.org/us/dictionary/english/wall.
7
Appeal2018-003023
Application 13/542,878
("[ a ]ttomey argument is not evidence" and cannot rebut other admitted
evidence).
Appellants argue that "no motivation, prompting, or suggestion exists
for one skilled in the art to combine Roscheisen and Daily." App. Br. 7.
Appellants argue that "[ s ]imply because Daily and Roscheisen disclose heat
sinks does not provide the requisite motivation for one skilled in the art to
combine the references in the manner done" by the Examiner. App. Br. 8.
As discussed above, however, Roscheisen and Daily both disclose a
heat-conducting finned heat sink. Roscheisen discloses that the heat sink
conducts heat away from a photovoltaic cell, while Daily discloses that the
heat sink conducts heat away from a light emitting diode. Compare
Roscheisen col. 2, 11. 4--8; col. 12, 11. 5-9, with Daily ,r 40. As the Examiner
correctly finds, photovoltaic cells and light emitting diodes are both
optoelectronic semiconductor devices, which Appellants do not dispute.
Compare Final Act. 5, with App. Br. 5-9. Thus, Roscheisen and Daily
disclose structurally similar heat sinks that perform the same function in
similar devices. As also discussed above, Daily discloses that the finned
heat sink may be comprised of any thermally conductive material, such as a
conductive metal or a thermally conductive resin. Implicit in this disclosure
is a teaching that conductive metals and thermally conductive resins are
reasonably interchangeable materials for forming finned heat sinks. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ([A]n obviousness
analysis "need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for [ an examiner] can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ."; see also In re Preda, 401 F. 2d 825, 826 (CCPA 1968) ("[I]t is
8
Appeal2018-003023
Application 13/542,878
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.").
Consequently, contrary to Appellants' arguments, the combined
disclosures of Roscheisen and Daily reasonably would have led one skilled
in the art, through no more than ordinary skill and creativity, to utilize a
thermally conductive resin (plastic) as disclosed in Daily to form a finned
heat sink, with a reasonable expectation that the heat sink could be
successfully used in a photovoltaic device as disclosed in Roscheisen. In re
Fout, 675 F.2d 297,301 (CCPA 1982)("Express suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.").
Although Appellants also argue that the Examiner does not provide
reasoning that one skilled in the art of photovoltaic modules would also be
skilled in the art of LEDs (App. Br. 8), Appellants do not dispute the
Examiner's finding in the Answer that "a person working in the solar cell
field would have been sufficiently familiar with optoelectronic devices in
general to know which materials could be used to make heat sinks."
Compare Ans. 14, with Reply Br. 2--4. Nor do Appellants dispute the
Examiner's finding that "finned heat sinks are broadly used across so many
semiconductor technologies that a person of ordinary skill in any
semiconductor subfield would have been familiar with finned heat sinks and
their materials." Compare Ans. 14, with Reply Br. 2--4.
Appellants also argue that the requirements and operating conditions
for photovoltaic modules and light emitting diodes vary greatly, and the
devices "are not similar enough such that materials for each can be
9
Appeal2018-003023
Application 13/542,878
interchanged between the two devices." App. Br. 8. Appellants argue that
"[ m ]erely alleging that replacing metal with plastic in Roscheisen would be
possible, when Roscheisen clearly prefers metal is not sufficient to establish
a primafacie case of obviousness." Id.
Although the general requirements and operating conditions for
photovoltaic modules and light emitting diodes may vary greatly, what is at
issue is whether the requirements for heat sinks used in photovoltaic
modules and light emitting diodes as disclosed in Roscheisen and Daily,
respectively, vary to the extent that materials used to form the heat sink of
one device would not be suitable for use to form the heat sink of the other
device. As discussed above, the heat sinks disclosed in Roscheisen and
Daily have similar finned structures and both function to conduct heat away
from an optoelectronic semiconductor device. Although Roscheisen may
prefer use of metal to form the fins, as discussed above, Daily nonetheless
implicitly teaches that conductive metals and thermally conductive resins are
reasonably interchangeable materials for forming finned heat sinks.
We accordingly sustain the Examiner's rejection of claims 1, 33, and
35 under 35 U.S.C. § 103(a).
Rejection II
To address this rejection, Appellants repeat the arguments that
Appellants provide for claim 1 ( addressed above), and argue that Gittings
fails to cure the deficiencies of Xia, Roscheisen, and Daily. App. Br. 9--12.
Because we are unpersuaded of reversible error in the Examiner's rejection
of claim 1 for the reasons discussed above, Appellants' position as to this
rejection is also without merit.
10
Appeal2018-003023
Application 13/542,878
Rejections III-V
To address these rejections, Appellants rely on the arguments made
for claim 1 ( discussed above), and argue in essence that the additional
references applied in these rejections fail to cure the deficiencies of Xia,
Roscheisen, and Daily. App. Br. 12-13. Because we are unpersuaded of
reversible error in the Examiner's rejection of claim 1 for the reasons
discussed above, Appellants' position as to these rejections is also without
merit.
DECISION
We affirm the Examiner's rejections of claims 1-8 and 31-35 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
11