Ex Parte Harder et al

Patent Trial and Appeal Board

Dec 6, 2016

11917474 (P.T.A.B. Dec. 6, 2016)

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.
11/917,474 10/20/2008 Nils-Peter Harder 319112US6PCT 6872
22850 7590 12/08/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MERSHON, JAYNE L
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NILS-PETER HARDER, ULF BLIESKE, DIRK
NEUMANN, MARCUS NEANDER,
MICHELE SCHIAVONI, and PATRICK GAYOUT
Appeal 2015-007303
Application 11/917,474
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 24—27 and 35—39. We have jurisdiction. 35
U.S.C. § 6(b). We AFFIRM.
1 According to the Appellants, the real party in interest is SAINT-GOB AIN
GLASS FRANCE. Appeal Br. 2.
Appeal 2015-007303
Application 11/917,474
STATEMENT OF THE CASE
Appellants describe the invention as relating to transparent panes
including, for example, solar cells having visually interesting surface motifs.
Spec. Abstract, 5:16—6:—19. Claim 24, reproduced below with emphasis
added to certain key recitations, is the only independent claim on appeal and
is illustrative of the claimed subject matter:
24. An assembly comprising:
a transparent pane including a surface structure on at least
one of the main surfaces of the pane; and
an element configured to collect light energy traversing
the pane, the element facing the pane, and the surface structure
being placed on an opposite side from the element, wherein the
surface structure includes an assembly of individual motifs in
relief that are based on one or more basic motifs, and
wherein an entirety of the individual motifs are
obtained by varying at least one structural characteristic,
selected only from a group of characteristics, of the one or
more basic motifs on the at least one of the main surfaces of
the pane, the group from which the at least one structural
characteristic is selected consisting of: a depth of the motif, a
height of the motif, and a position of a peak of the motif with
respect to a base of the motif seen in a direction
perpendicular to the at least one of the main surfaces of the
pane.
Appeal Br.2 9 (Claims Appendix).
2 In this decision, we refer to the Final Office Action mailed September 18,
2014 (“Final Act.”), the Appeal Brief filed February 20, 2015 (“Appeal
Br.”), the Examiner’s Answer mailed June 15, 2015 (“Ans.”), and the Reply
Brief filed July 29, 2015 (“Reply Br.”).
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Application 11/917,474
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Benjamin US 3,068,751
Chalmers US 4,379,202
Blieske et al.3 WO 2003/046617
(hereinafter “Blieske”)
REJECTIONS
The Examiner withdrew rejections based on Wortman, U.S.
5,771,328, June 23, 1998. Ans. 7-8.
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 24—27 and 35—38 under 35 U.S.C. § 103 as
unpatentable over Blieske in view of Benjamin. Ans. 3.
Rejection 2. Claim 39 under 35 U.S.C. § 103 as unpatentable over
Blieske and Benjamin in further view of Chalmers. Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf. 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) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). Appellants do not
present any separate, substantive arguments with respect to the Examiner’s
separate rejection of claim 39 (Appeal Br. 8), and Appellants argue claims
Dec. 18, 1962
Apr. 5, 1983
June 5, 2003
3 The Examiner relies on U.S. 2005/0039788 A1, Feb. 24, 2005, as a
translation of WO 2003/46617. We do the same in this opinion, and
citations to Blieske refer to the United States publication.
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Application 11/917,474
24—27 and 35—38 as a group (id. at 4). Therefore, consistent with the
provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to
claim 24. All other claims on appeal stand or fall together with claim 24.
The Examiner rejects claim 24 as obvious over Blieske in view of
Benjamin. Ans. 3. We begin our analysis of the rejection with claim
construction. Claim 24 recites “the surface structure includes an assembly
of individual motifs in relief that are based on one or more basic motifs.”
Appeal Br. 9 (Claims App’x). Claim 24 further recites “wherein an entirety
of the individual motifs are obtained by varying at least one structural
characteristic ... of the one or more basic motifs.” Id. The claim language
does not require that an entire structure be covered by the assembly. Thus,
the assembly may be a collection of two or more motifs which are each
obtained in the manner recited by claim 24. Those same motifs could be
repeated elsewhere in the structure. This construction of claim 24 is
consistent with the Specification, which explains that groups of motifs can
be repeated periodically. Spec. 12:3—9.
The Examiner finds that Blieske teaches a textured transparent panel
capable of collecting light, and that the textured surface faces the light
source and is thus opposite the photovoltaic element. Ans. 3 (citing Blieske
112, 16). The Examiner also finds that the textured surface includes a
plurality of geometrical features / motifs that may be cones or pyramids.
Ans. 3 (citing Blieske H 16, 19, 25). The Examiner finds that Blieske does
not explicitly teach that the individual motifs vary with respect to the
position of peaks of the motifs. Ans. 3^4. Rather, Blieske suggests that
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Application 11/917,474
individual motifs (e.g., concave pyramids) may be identical as illustrated in
Figure 3 of Blieske, as reproduced below.
Figure 3 of Blieske shows a textured panel having an array of aligned
concave features on its surface with the features having the shape of square-
based pyramids. Blieske 130.
The Examiner finds, however, that Benjamin teaches that varying the
position of peaks of motifs “prevents objectionable light glare when viewing
the light transmitting surface from a distance.” Ans. 4 (citing Benjamin
Figs. 1, 2, 2:8—21). The Examiner thus concludes that it would have been
“obvious for a person having ordinary skill in the art to modify the
individual motifs of Blieske et al. by creating a peak that is off-center to the
base and therefore the planes of the sides because the pane is more
aesthetically pleasing when viewed from afar due to minimization of the
glare.” Ans. 4. A preponderance of the evidence supports the Examiner’s
findings and conclusion, and Appellants do not persuasively dispute these
findings, or the Examiner’s combining of the Blieske and Benjamin
references.
Appellants argue that Benjamin only teaches the relative arrangement
of mirror image motifs and thus does not teach “wherein an entirety of the
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individual motifs are obtained by varying ... a position of a peak of the
motif with respect to a base of the motif seen in a direction perpendicular to
the at least one of the main surfaces of the pane” as recited by claim 24.
Appeal Br. 4—5. Appellants’ arguments concerning Benjamin’s particular
embodiments (Appeal Br. 4—5; Reply Br. 1—3) fail to establish reversible
error because “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Moreover, a person of ordinary skill in the art may be motivated
by the teachings of Benjamin without bodily incorporating the particular
motif arrangement of Benjamin into Blieske. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Here, a preponderance of the evidence supports the Examiner’s
finding that Benjamin generally teaches the advantage of peaks off-center to
the base and arranged in a varying manner such that peaks of at least two
motifs are differently off-center when seen in a direction perpendicular to
the pane. Ans. 4, 8. Thus, the Examiner reasonably concluded that a person
of skill in the art would have had reason, based on Benjamin’s teachings, to
vary the location of peaks relative to the bases of Blieske. In other words, a
preponderance of the evidence supports that Benjamin’s teachings regarding
the advantages of motif peaks having varying offsets when seen in a
direction perpendicular to the main surface of a pane would have led a
person of ordinary skill in the art to modify Blieske so that, instead of having
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identical motifs, the motifs would have varied peak position with respect to
the base of the motif. Ans. 4.
Thus, for the reasons above and for the reasons further explained in
the Final Office Action and Answer, we sustain the Examiner’s rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
24—27 and 35-39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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