Ex Parte Nagyvary et al

Patent Trial and Appeal Board

Jan 26, 2017

12553813 (P.T.A.B. Jan. 26, 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.
12/553,813 09/03/2009 John Nagyvary 467.00180101 (9402) 7282
26813 7590 01/26/2017
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
SLAWSKI, MAGALI P
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
01/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN NAGYVARY, PETER ALLEN ZAWADZKI,
STEVE SEEL, and JAMES FORESI
Appeal 2015-007602
Application 12/553,8131
Technology Center 1700
Before CHRISTOPHER L. OGDEN, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1—18 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Suncore Photovoltaics, Inc. as the real party in interest.
Appeal Br. 2, Jan. 26, 2015.
2 Office Action, Aug. 22, 2014 [hereinafter Action]; Examiner’s Answer,
June 17,2015 [hereinafter Answer],
Appeal 2015-007602
Application 12/553,813
BACKGROUND
Appellants’ invention relates to an encapsulated “solar cell
subassembly for use in a concentrator photovoltaic system.” Spec. 12. An
embodiment is depicted in Figure 4, reproduced below:
Figure 4 is a cross-sectional view of a subassembly, in which a solar cell 102
sits under the tapered body 112 of an optical element, and sits above a
ceramic substrate 126, which is also above a heat sink 120. Spec. Tflf 20, 35.
The substrate has a lower metallized surface 130, and surrounding all of
these components and the lower portion of the optical element is an
encapsulant 152. See id. 135.
Independent claim 1 is representative:
1. A solar cell receiver subassembly for use in a
concentrating solar system which concentrates the solar energy
onto a solar cell by a factor of 1000 or more for converting
solar energy to electricity, comprising:
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Application 12/553,813
a solar cell receiver comprising a support defining an
upper surface facing an upper direction and a lower metallized
surface facing a lower direction, wherein the lower direction is
opposite the upper direction;
a solar cell defining an upper surface facing the upper
direction and a lower surface facing the lower direction,
wherein the lower surface of the solar cell is mounted on the
upper surface of the support, wherein the solar cell comprises
one or more III-V compound semiconductor layers;
an optical element defining an optical channel from an
optical inlet to an optical outlet and configured to direct light
toward the solar cell, wherein the optical element defines at
least one exterior side surface extending between the optical
inlet to the optical outlet, wherein the optical outlet is coupled
to the upper surface of the solar cell; and
an encapsulant covering the support, the solar cell, and
at least a portion of the at least one exterior side surface of the
optical element to surround and encapsulate the solar cell and
the support.
Appeal Br. Claims App. 1 (emphasis added). Independent claim 11 is a
manufacturing method containing similar limitations. See id. at 2—3.
The Examiner maintains the following grounds of rejection:
I. Claims 1—5, 8, 10—14, and 16—18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Todorof3 in view of Shook.4 See Action
2-7.
II. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Todorof in view of Shook and Pardell Vilella.5 See Action
7-8.
3 Todorof et al., U.S. Patent No. 4,830,678 (issued May 16, 1989).
4 Shook et al., Patent Application Pub. No. US 2009/0159122 Al (published
June 25, 2009).
5 Pardell Vilella, Inf 1 Patent Publication No. WO 2006/114457 Al
(published Nov. 2, 2006).
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Application 12/553,813
III. Claim 9 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jensen in view of Todorof in view of Shook and Jansen.6
See Action 8—9.
IV. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Todorof in view of Shook and Penumatcha.7 See Action
9.
In the Appeal Brief, Appellants argue independent claims 1 and 11 as
a first group, and claims 17 and 18 as a second group. See Appeal Br. 6—15.
Appellants present no separate arguments regarding claims 2—10 and 12—16.
See id. at 15—17. Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv)
(2016), we limit our discussion to claims 1 and 17, and all the other claims
stand or fall with these claims.
DISCUSSION
Claims 1—16
The Examiner finds that Todorof discloses an assembly of
components for a concentrating photovoltaic system that includes most of
the limitations of claim 1. See Action 2—3. Figure 1 of Todorof is
reproduced below:
6 Jansen et al., U.S. Patent No. 6,077,722 (issued June 20, 2000).
7 Penumatcha et al., Patent Application Pub. No. US 2007/0116414 Al
(published May 24, 2007).
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Application 12/553,813
Figure 1 depicts a concentrating photovoltaic assembly including a tapered
secondary lens 30 over a solar cell 40. See Todorof 3:4—34. Below the solar
cell is a rear terminal 110, and below that is a thin insulating disk 100 and a
heat sink 50. See id. at 3:21—27, 6:10-15. The region between the solar cell
and the heat sink is surrounded by a threaded base member 80. See id. at
4:57-5:5.
Although Todorof does not teach an encapsulant as required by the
final paragraph of claim 1, the Examiner finds that Shook discloses an
encapsulant that covers a support, solar cell, and at least a portion of an
exterior side surface of an optical element as required by claim 1. See
Action 3^4. Figure 4B of Shook is reproduced below:
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Application 12/553,813
440
Figure 4B depicts a cutaway side view of an assembly including a tapered
optical element 440 over a solar cell (rectangle directly below optical
element 440), over a conductive element 440 (bottom of figure). See id.
130. Surrounding the solar cell, the conductive element, and the lower
portion of the optical element is a mold compound 455. See id. According
to Shook, the mold compound “may assist in the dispersion of heat from
incident solar energy.” Id. 121. The Examiner finds that “[a] molded
compound like Shook’s predictably would have helped prevent Todorof’s
cell from overheating, a problem recognized by Todorof.” Action 4 (citing
Todorov 1:22—25). Thus, the Examiner concludes that “in order to protect
Todorof’s cell from heat damage, it would have been obvious to one of
ordinary skill in the art [to] incorporate into Todorof’s device a molded
compound like Shook’s.” Id.
Citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), Appellants argue
that modifying Todorof according to the teachings of Shook “would render
the invention of Todorof et al. unsatisfactory for its intended purpose.”
Appeal Br. 6—7. According to Appellants, an express intended purpose of
the Todorof invention is that the sealed enclosure 10 “can be disassembled
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Application 12/553,813
readily, if desired, for ease of cell replacement.” Id. at 7 (citing Todorof
6:67—7:1) (emphasis omitted). Appellants argue that if the Todorof
apparatus were encapsulated according to the teaching of Shook, the mold
compound “would prevent the sealed enclosure of Todorof et al. from being
disassembled readily for ease of solar cell replacement.” Id. at 9 (emphasis
omitted); see also Reply Br. 2—3. For similar reasons, Appellants argue that
Todorof teaches away from the use of an encapsulant, because “the sealed
enclosure of Todorof et al. needs to be free from encapsulant to allow
disassembly, and thus, teaches away from anything, such as encapsulant, that
would restrict, or prohibit, disassembly.” Id. at 10-11.
Appellants’ arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1. Gordon held that a prior art blood
filtering apparatus would not have been functional if it had been modified by
turning it upside down. See 733 F.2d at 902. By contrast, the proposed
modification of Todorof by adding an encapsulant would not have rendered
the resulting apparatus inoperable. Although Todorof teaches that ready
disassembly is a beneficial feature of the disclosed design, see Todorof 6:66—
7:1, a lack of ready disassembly would not have made the apparatus
inoperable for its intended use as a concentrating photovoltaic device.
Moreover, Todorof does not teach away from the use of an
encapsulant as set forth in claim 1, because it does not criticize, discredit, or
otherwise discourage that solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Given that heat dissipation was a known concern at the
time of filing, see Todorof 1:22—25, a person of ordinary skill in the art
would have had reason to improve heat dissipation through the use of an
encapsulant, even if the resulting design were not as readily dissassembled.
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Application 12/553,813
See Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
For the above reasons, Appellants have not persuaded us that the
Examiner reversibly erred in rejecting claim 1, and likewise, we are not
persuaded of reversible error in the rejections of claims 2—16.
Claims 17, 18
Claim 17 depends from claim 1, and further requires “a heat sink
coupled to the lower metalized surface of the support, wherein the
encapsulant further covers a region between the lower metalized surface of
the support and the heat sink.” Appeal Br. Claims App. 4.
The Examiner finds that
Todorof teaches a heat sink (50) mounted by intervening struc­
tures to the rear terminal (110), which is the lower metallized
surface of the support. Were Todorof modified in view of Shook
as proposed above, the molded encapsulant would overlie, or
cover, a region between the rear terminal (110) and the heat sink
(50).
Action 7. As Appellants correctly note, see Reply Br. 4—5, the region in
Todorof’s disclosed apparatus between the rear terminal 110 and the heat
sink 50 is enclosed by base member 80, and it is unclear how Todorof would
have been modified by a person of ordinary skill in the art such that the
encapsulant further covers this region, without a significant redesign. It is
not simply enough, as the Examiner suggests, see Appeal Br. 15, that the
encapsulant “lie above that region” in the vertical plane. Based on the
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ordinary meaning of the claims, and in light of the Specification, the
broadest reasonable interpretation of the phrase further covers requires that
the encapsulant have at least some degree of contact with a region between
the lower metalized surface of the support and the heat sink.
For the above reasons, the Examiner reversibly erred in rejecting
claim 17. For the same reasons, the Examiner erred in rejecting claim 18.
DECISION
The Examiner’s decision to reject claims 1—16 is affirmed.
The Examiner’s decision to reject claims 17 and 18 is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED-IN-PART
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