Ex Parte Jiang et al

Patent Trial and Appeal Board

Jun 8, 2018

14785786 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
141785,786 10/20/2015
826 7590 06/12/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Zhanfeng Jiang
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.
055605/467959 9223
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHANFENG JIANG,
JINGBO GUAN, YUNJIANG YAO,
YU WU, BO FANG,
and QIANG CHEN
Appeal2018-002706
Application 14/785,786 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 1-21. 2 We have jurisdiction under 35 U.S.C.
§ 6(b).
1 The real party in interest and the Applicant are said to be BYD Company
Limited. See Appeal Brief dated June 13, 2017 ("App. Br."), at 2.
2 Claim 21 was added in an Amendment after Final under 3 7 C.F .R. § 1.116, dated
December 22, 2016. The Examiner entered the Amendment in an Advisory Action
dated January 10, 2017 ("Adv. Act.").
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We AFFIRM and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
The claimed subject matter is directed to a solar cell module. The
Appellants' Figure 6, reproduced below, is illustrative.
Appellants' Figure 6 is a cross-sectional view of a solar cell
module according to an embodiment of the invention.
The solar cell module comprises transparent layer 31, a plurality of cells 2
disposed on an upper surface of transparent layer 31, reflective layer 32 disposed
on the upper surface of transparent layer 31, and cover plate 1 disposed above the
plurality of cells 2 and reflective layer 32, wherein at least a part 11, opposed to
reflective layer 32, of a lower surface of cover plate 1 has a serrate shape. See
App. Br. 3.
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief.
1. A solar cell module comprising:
a transparent layer;
a plurality of cells disposed on an upper surface of the
transparent layer and spaced apart from each other;
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a reflective layer disposed on the upper surface of the
transparent layer and surrounding at least a portion of a periphery of at
least one cell; and
a cover plate disposed above the plurality of cells and the
reflective layer, wherein at least a part, opposed to the reflective layer,
of a lower surface of the cover plate has a serrate shape.
App. Br. 12.
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 1-7, 11-17, and 20 under 35 U.S.C. § 102(a)(l) as anticipated
by Hebrink et al.; 3
(2) claims 8, 9, 18, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Hebrink; and
(3) claims 10 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Hebrink in view ofNiira et al. 4
The rejections are sustained for the reasons set forth in the Examiner's
Answer dated November 17, 2017. We add the following for emphasis.
B. DISCUSSION
1. Rejections ( 1 }--{3)
a. Claims 1--4 and 6-21
Referring to Hebrink Figure 3, reproduced below, the Examiner finds
He brink discloses a solar cell module comprising first transparent layer 10 and a
3 WO 2012/154803 A2, published November 15, 2012. The Examiner notes that
US 2014/0083481 Al is the 371 application of WO 2012/154803 Al. Final Office
Action dated September 13, 2016 ("Final Act."), at 6. Therefore, the Examiner
refers to US 2014/0083481 Al, published March 27, 2014, in the rejections on
appeal. The Appellants do not object. Therefore, we also refer to US
2014/0083481 A 1 ("He brink") in this Decision on Appeal.
4 US 2012/0235268 Al, published September 20, 2012 ("Niira").
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plurality of solar cells 4 and reflective layer 20 disposed on a first side of first
transparent layer 10. Final Act. 6-7.
Hebrink Figure 3 is a cross-sectional view
of a photovoltaic module.
The Examiner also finds the solar cell module comprises a backsheet, which
includes transparent substrate 6 and multilayer optical film 11, disposed on the
opposite side of solar cells 4 and reflective layer 20 from first transparent layer 10.
Final Act. 7; Ans. 14, 20; see also Hebrink Fig. 2. The Examiner finds that
Hebrink's backsheet corresponds to the cover plate recited in claim 1. Ans. 14.
The Examiner finds that a portion of Hebrink's backsheet, which faces solar cells 4
and reflective layer 20, includes a textured surface comprising a plurality of teeth
109 (i.e., a serrate shape). Final Act. 7; Ans. 14; see also Hebrink Fig. 4.
The Appellants contend that the Examiner's finding that Hebrink's reflective
backsheet corresponds to the claimed cover plate is erroneous. The Appellants
argue:
[T]he structure of a solar cell has an inherently defined direction and
structural orientation, commonly referred to by then-type silicon of a
solar cell as the upper and/or top of the solar cell and the p-type
silicon of the solar cell as the lower and/or bottom of the solar cell.
That is, a solar cell panel usually at least includes, from top to bottom,
a cover plate or front plate, one or more cells, and a back board, plate,
or sheet. A cover plate is transparent to let light pass through to the
upper n-type silicon of the cover sheet. And the back plate is used to
support the cells .... [A]s known to one skilled in the art, a front
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cover plate and a back plate of a solar cell module are different from
each other, at least in that the front cover plate is positioned on the n-
type silicon side of the solar cells and the back plate is positioned on
the p-type silicon side of the solar cells.
App. Br. 4.
In response, the Examiner concludes that there is no implicit or explicit
directional relationship in claim 1 requiring the transparent layer to be a backsheet
and the cover plate to be incident to solar radiation. Ans. 16, 18. In that regard,
we note that claim 1 does not recite a relationship between then-type silicon and p-
type silicon of the plurality of cells relative to the recited "cover plate" and
"transparent layer."
The Examiner concludes that claim 1 merely requires "no more than a
directional relationship such that the layers are ordered as follows: transparent
layer, solar cells and reflective layer, and cover plate." Ans. 1 7. The Examiner
finds that the order of layers in He brink's solar cell module, in a direction away
from incident light, is transparent layer 10, solar cells 4, 5 and a backsheet
comprising a transparent substrate, a multilayer optical film, and a textured
surface. See Ans. 16. The Examiner finds that Hebrink's backsheet corresponds to
the claimed "cover plate" because the backsheet "covers the entire surface of the
solar cells encapsulated in the module." Ans. 17 (emphasis added); see also Final
Act. 3 ("using broadest reasonable interpretation, any layer which covers another
can be considered a cover plate").
The Examiner's interpretation of the claimed "cover plate" is supported by
the record. The Appellants do not direct us to any definition of "cover plate" in the
Specification that excludes Hebrink's backsheet. Likewise, the Appellants do not
5 According to Hebrink Figure 3, solar cells 4 and reflective layer 20 are in the
same layer of the solar cell module.
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direct us to any evidence establishing that the term "cover plate" is known in the
art to connote a surface of a solar cell module that is incident to incoming light. 6
See In re Schulze, 346 F .2d 600, 602 (CCP A 1965) ("Argument in the brief does
not take the place of evidence in the record."). Thus, based on the record before
us, we interpret the "cover plate" recited in claim 1 to encompass a plate that
covers the underlying layers of a solar cell module, such as Hebrink's backsheet,
regardless of the direction of incident light.
The Appellants also argue that claim 1 recites that "a lower surface of the
cover plate has a serrate shape." App. Br. 7; see also App. Br. 12 (claim 1).
He brink Figure 4, reproduced below, illustrates a serrate-shaped surface 109.
Hebrink Figure 4 is a cross-sectional view of a
reflective backsheet in a photovoltaic module
according to one embodiment of the invention.
He brink discloses that backsheet 100 includes optional substrate 105,
multilayer optical film 103, and textured layer 109. Hebrink i-f 77. The Appellants
argue that "even if the multilayer optical film 100 were interpreted as the second
transparent layer, then the reflective layer 103 is between the substrate 105 and the
textured surface 109, such that the substrate 105 does not have a serrate shape
opposed to the reflective layer as required by independent Claim 1." App. Br. 8
(emphasis added).
6 We note that Hebrink uses the term "front cover," not "cover plate." See Hebrink
,-r 25.
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To be clear, claim 1 does not recite a "second transparent layer." Claim 1
recites a "transparent layer" and a separate "cover plate" but does not recite that the
cover plate is transparent. See App. Br. 12. The Examiner finds that Hebrink's
transparent layer 10 corresponds to the claimed "transparent layer" and Hebrink's
backsheet corresponds to the claimed "cover plate." Ans. 3, 20. In one
embodiment, Hebrink discloses that backsheet 100 includes multilayer optical film
103/11 and textured layer 109. Hebrink i-fi-124, 77. Thus, contrary to the
Appellants' argument, He brink discloses a structural element corresponding to the
claimed "cover plate" having a serrate shape as recited in claim 1. See Ans. 20
(explaining that "[t]he entire backsheet, formed of for example the multilayer film
of Fig. 4, is the claimed 'cover plate' as clearly and distinctly set forth in the
previous action").
Finally, the Appellants argue that claim 1 recites "a reflective layer disposed
on the upper surface of the transparent layer and surrounding at least a portion of a
periphery of at least one cell." App. Br. 9. The Appellants argue that in the
rejection on appeal, "the asserted first transparent layer is the front cover 10, but
the reflective layer 20 is illustrated disposed on the backsheet substrate 6, not the
front cover 10." App. Br. 9.
The Appellants' argument is not persuasive of reversible error. The
Examiner finds that "Hebrink's reflective layer (20 Fig. 2) is clearly on the
transparent layer [10] as it makes contact with the layer." Ans. 23. Indeed,
Hebrink Figure 3 shows reflective layer 20 disposed between both transparent
layer 10 and the backsheet (corresponding to the claimed "cover plate"). To the
extent that encapsulant 14 prevents direct contact between reflective layer 20 and
transparent layer 10, claim 1 recites a reflective layer disposed "on" the upper
surface of the transparent layer. App. Br. 12. Significantly, the Appellants do not
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define the term "on" in the Specification to mean "directly on." Therefore, we
conclude that claim 1 does not exclude the configuration disclosed in Hebrink,
wherein an encapsulant is disposed between reflective layer 20 and transparent
layer 10.
For the reasons set forth above, a preponderance of the evidence supports the
Examiner's finding that claim 1 is anticipated by He brink. Therefore, the
§ 102(a)(l) rejection of claim 1 is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of claims 2--4 and 6-21. Therefore, the§ 102(a)(l) rejection
of claims 2--4, 6, 7, 11-17, and 20 and the§ 103(a) rejections of claims 8-10, 18,
19, and 21 are sustained.
b. Claim 5
Claim 5 depends from claim 4 (which in tum depends from claim 1) and
recites "wherein the upper surface of the reflective layer is a flat surface." App.
Br. 12.
The Examiner finds that Hebrink's reflective layer 20 corresponds to the
claimed reflective layer. Final Act. 6-7. The Appellants argue that in the
embodiment of He brink relied on by the Examiner, reflective layer 20 does not
have a flat surface as recited in claim 5, but rather has a textured surface 109. App.
Br. 10.
The Examiner finds that "[t]he 'upper surface' of the reflective film in
Hebrink is the surface which faces the backsheet (6 Fig. 2). Clearly, that surface is
flat in all possible combinations of the layer disclosed as the multilayer film."
Ans. 24. The Appellants do not direct us to any error in the Examiner's finding.
Therefore, the § 102(a)(l) rejection of claim 5 is sustained.
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2. New ground of rejection
To the extent that the Examiner has combined different embodiments of
He brink (i.e., combined the backsheet of He brink Figure 4 with the solar cell
module of Hebrink Figure 3) to arrive at the claimed invention, we also enter a
new ground of rejection of claims 1-7, 11-17, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Hebrink. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (for
a rejection under 35 U.S.C. § 102 to be proper, the prior art reference must direct
those skilled in the art to the claimed invention "without any need for picking,
choosing, and combining various disclosures not directly related to each other by
the teachings of the cited reference").
We adopt the Examiner's factual findings as to claims 1-7, 11-17, and 20.
See Final Act. 6-10; Ans. 3-8. In particular, we find that the embodiment of
Hebrink Figure 3 comprises, inter alia, backsheet 6, which corresponds to the
claimed cover plate. In an alternative embodiment, Hebrink discloses that the
backsheet comprises substrate 105, multilayer optical film 103, and textured layer
109. Hebrink i-f 77; Hebrink Fig. 4. We find that one of ordinary skill in the art
would have understood that each of the backsheet configurations disclosed in
He brink would be suitable in Hebrink' s solar cell module, including the solar cell
module illustrated in He brink Figure 3. Therefore, we conclude that it would have
been obvious to one of ordinary skill in the art to substitute the backsheet
illustrated in Hebrink Figure 3 with the backsheet illustrated in Hebrink Figure 4.
See In re Fout, 675 F.2d 297, 301(CCPA1982) ("Express suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.").
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C. DECISION
The Examiner's decision rejecting claims 1-7, 11-17, and 20 under
35 U.S.C. § 102(a)(l) as anticipated by Hebrink is affirmed.
The Examiner's decision rejecting claims 8, 9, 18, and 21under35 U.S.C.
§ 103(a) as unpatentable over Hebrink is affirmed.
The Examiner's decision rejecting claims 10 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Hebrink in view ofNiira is affirmed.
Claims 1-7, 11-17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hebrink.
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
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). See also 37 C.F.R.
§ 41.50(f).
AFFIRMED; 37 C.F.R. § 41.50(b)
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