Ex Parte Danning

Patent Trial and Appeal BoardOct 5, 2017

13532703 (P.T.A.B. Oct. 5, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/532,703 06/25/2012 Matthew Danning SNPWR.081A 9691 145212 7590 10/10/2017 Ohl on /S»i 1 nnnwer EXAMINER 1940 DUKE STREET ALEXANDRIA, VA 22314 LAUX, JESSICA L ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 10/10/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW DANNING Appeal 2015-003668 Application 13/532,703 Technology Center 3600 Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and JUSTIN T. ARBES, Administrative Patent Judges. MEDLEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 5—12, and 21.1 App. Br. 1, 11—20. We have jurisdiction under 35 U.S.C. § 6. We reverse. 1 Responsive to a Restriction Requirement, claims 3, 4, and 13—20 were withdrawn from consideration on July 24, 2013. See Office Action dated August 16, 2013. Appeal 2015-003668 Application 13/532,703 The Invention The invention relates to anchors for mounting solar modules to a fixed surface such as a roof. Spec. 17. Figures 2B and 3A are reproduced below. 12a \ 13 56 m. zb Figure 2B shows a side view of an anchor coupled to a web of a solar module. Id. Tflf 14, 42. 2 Appeal 2015-003668 Application 13/532,703 & • & - vj 55 A .'7 \ "V A A,. fT\ $43 • • 55S $4 -• & y 3i> " HO. 5A Figure 3A shows an exploded view of the anchor of the embodiment of Figures 2 A—2C. Id. Tflf 16, 52. As shown above, anchor 50a includes clamp body 51 and clamp member 55 for securing one or more webs 15 extending from one or more solar modules 12. Id. Tflf 47, 49. Rotatable clamp device 59 couples to wedge 64 disposed in receiver 57 of base member 56 and includes head 69 at proximal end of device 59 that is configured to bear against clamp member 55. Id. 1 53. Rotatable height adjustment member 60 is coupled to clamp device 59 so as to be axially adjustable relative to clamp device 59 along a longitudinal axis of height adjustment member 60. Id. 1 54. In operation, a user can 3 Appeal 2015-003668 Application 13/532,703 adjust the height of solar module(s) 12 in addition to securing solar module(s) 12 to a fixed structure, e.g., a roof. Id. | 61. To adjust the height, the user can rotate height adjustment member 60 such that it bears against foot 62 of base member 56. Id. By bearing against base member 56, rotatable height adjustment member 60 can raise or lower clamp body 51, wedge 64, clamp member 55, and clamp device 59 relative to base member 56 to raise solar module(s) 12. Id. Illustrative Claim Claims 1 and 21 are independent claims. Claims 2 and 5—12 directly or indirectly depend from independent claim 1. Details of the appealed subject matter are recited in independent claims 1 and 21, which are reproduced below from pages 22 and 25 of the Appeal Brief (Claims App.), with key limitations at issue in each of the claims indicated in italicized text: 1. An anchor for mounting one or more solar modules to a roof, the anchor comprising: a clamp body comprising a central surface and a first arm extending from the central surface, the first arm having a first clamping face, the clamp body sized and shaped to receive one or more webs extending from one or more solar modules; a rotatable clamp device coupled to the clamp body, the rotatable clamp device configured to press a first web of the one or more webs against the first clamping face when the rotatable clamp device is rotated about a rotational axis; and a rotatable height adjustment member coupled to the rotatable clamp device, the rotatable height adjustment member configured to raise or lower at least the clamp body and the one or more solar modules when the rotatable height adjustment member is rotated about the same rotational axis as the rotatable clamp device. 4 Appeal 2015-003668 Application 13/532,703 21. An anchor for mounting one or more solar modules to a roof, the anchor comprising: a clamp body comprising a central surface and a first arm extending from the central surface, the first arm having a first clamping face, the clamp body sized and shaped to receive one or more webs extending from one or more solar modules; a rotatable clamp device coupled to the clamp body, the rotatable clamp device configured to press a first web of the one or more webs against the first clamping face; and a rotatable height adjustment member coupled to the rotatable clamp device, the rotatable height adjustment member providing for fixation of the one or more solar modules at a plurality of heights; wherein the rotatable clamp device and the rotatable height adjustment member are configured to rotate about the same axis. Rejections on Appeal Claims 1, 2, 5, 6, and 21 were rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Taylor (U.S. Patent No. 8,505,864 Bl, filed Feb. 29, 2012, iss. Aug. 13, 2013). Final Act. 2-4. Claims 1, 2, 5—12, and 21 were provisionally rejected on the ground of non-statutory double patenting over claims 1—20 of U.S. Patent Application No. 13/532,712 (“the ’712 application”). Id. at 4—6. § 102(e) Rejection - Claims 1, 2, 5, 6, and 21 The Examiner rejected claims 1, 2, 5, 6, and 21 as being anticipated by Taylor. Id. at 2-4. With respect to claim 1, the Examiner finds that Taylor describes a clamp body (citing Taylor’s plate 12 of the figures), a rotatable clamp device (citing Taylor’s plate 15 of the figures), and a 5 Appeal 2015-003668 Application 13/532,703 rotatable height adjustment member (citing Taylor’s clamp 17 of the figures). Id. at 3. With respect to the claim language italicized above, the Examiner provided, per an Advisory Action dated May 16, 2014 (“Advisory Act.”), referring to Taylor: The PV panel would be raised or lowered by member 15 when coupled to the the [sic] PV panel since the member 15 is capable of sliding along the threaded rod and it is capable of sliding while be[ing] rotated, where the claim only recites functional capability limitations. The member 17 is threadably engaged with rod 13 and capable of being raised or lowered, the position of member 17 affecting the position of members 12, 15 up or down, therefore member 17 anticipates the claimed rotatable height adjustment member since it is capable of the claimed functions. Advisory Act. 1. Additionally, the Examiner finds that Taylor’s PV panel is raised or lowered with respect to rod 13 by rotation of rod 13 into or out of clamp 17, and that rod 13 has nut 22 threadably engaged with rod 13, which would also result in lowering plate 12. Ans. 2. Appellant argues that Taylor does not disclose that its assembly raises or lowers PV panel 23, that it is insufficient for the Examiner to cite a prior art structure that is merely capable of performing the claimed function, and that the Examiner must show that the prior art discloses structure that is “made to,” “designed to,” or “configured to” perform the recited functionality. App. Br. 12—17; Reply Br. 2 (citing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014)). Appellant also argues that, even assuming arguendo that the test for anticipation is whether the prior art is capable of performing the recited function, Taylor’s device is incapable of performing the recited function. App. Br. 17—19; Reply Br. 3—5. This is so, Appellant argues, 6 Appeal 2015-003668 Application 13/532,703 because if PV panel 23 is clamped between plates 12 and 15 and a user attempts to rotate threaded rod 13, rod 13 would advance relative to threaded opening 21 in clamp 17, but because plates 12 and 15 are not structured to translate with rod 13, rod 13 would simply pass through plates 12 and 15, and PV panel 23 would not be raised or lowered. App. Br. 18; Reply Br. 5. With respect to nut 22, Appellant argues that this nut is used to tighten the grip of plates 12 and 15 on PV panel 23 and that rotating nut 22 only causes plates 12 and 15 to bear against one another, but would not cause PV panel 23 and connector plate 12 to be raised or lowered. Reply Br. 5. We are persuaded by Appellant’s arguments that the Examiner erred in finding that Taylor’s clamp 17 is “configured to raise or lower at least the clamp body and the one or more solar modules,” as recited in claim 1. The Specification explains that rotatable height adjustment member 60 is configured to raise or lower clamp body 51 and solar module(s) 12. Spec. 161. Taylor, however, does not disclose a height adjustment member or that its assembly is configured to adjust the height of the clamp body (plate 12 of Taylor) or Taylor’s PV panels (solar modules) in any way. See Giannelli, 739 F.3d at 1379—80 (explaining that written description can make clear that phrases like “configured to” have a narrower meaning than merely “capable of’ or “suitable for”). In addition, Taylor describes that rod 13 is inserted within thru-holes 11A, 12 A, 14A, and 15A to engage threaded opening 21 on top of roofing clamp 17. Taylor, 2:27—30. Notably, Taylor does not describe any of the thru-holes as being threaded. Thus, while Taylor discloses connector plates 12 and 15 for securing PV panels, we agree with Appellant that the thru- holes in the connector plates are not threadably engaged with rod 13, and, 7 Appeal 2015-003668 Application 13/532,703 thus, are not configured to raise or lower either plate 15 or the PV panels as required by claim 1. We further agree with Appellant that Taylor’s nut 22 is used only to tighten the grip of plates 12 and 15 on PV panel 23 and would not cause the PV panel 23 and connector plate to be raised or lowered. Thus, the Examiner’s position with respect to how Taylor’s device could function to meet the disputed language is not supported by the disclosure of the reference, but rather is based on speculation and assumptions. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (explaining that it is improper to resort to speculation or assumptions to cure the deficiencies in the factual basis to support a rejection). For these reasons, we cannot uphold the Examiner’s rejection of claim 1, or claims 2, 5, and 6, which depend from claim 1. Independent claim 21 is similar to claim 1, but instead of reciting that the rotatable height adjustment member is configured to raise or lower at least the clamp body and solar modules, claim 21 recites the rotatable height adjustment member “providing for fixation of the one or more solar modules at a plurality of heights.” Appellant argues that “providing for” should be interpreted the same as the phrase “configured to” with respect to claim 21. App. Br. 20. Based on the record before us, we agree. The Examiner provides the same findings with respect to claim 21 as with respect to claim 1. We are not persuaded for the reasons discussed above. Accordingly, we cannot uphold the Examiner’s rejection of claim 21. 8 Appeal 2015-003668 Application 13/532,703 Double Patenting Rejection of Claims 1, 2, 5—12, and 21 The Examiner provisionally rejected claims 1, 2, 5—12, and 21 on the grounds of non-statutory double patenting over claims 1—20 of the ’712 application. Final Act. 6. After the Examiner’s final rejection, Appellant filed a terminal disclaimer in response to the provisional rejection, which the Office accepted on May 7, 2014. Moreover, claims 1—20 of the ’712 application that were the basis for the rejection were amended and the application has since issued as U.S. Patent No. 9,193,014. Therefore, we leave it to the Examiner to determine whether an obviousness-type double patenting rejection remains appropriate. We do not reach the merits of the Examiner’s provisional double patenting rejection because it would be premature to do so at this time. See Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). V. DECISION The Examiner’s decision to reject claims 1, 2, 5, 6, and 21 under pre- AIA 35 U.S.C. § 102(e) as being anticipated by Taylor is REVERSED. REVERSED 9