John CONKLIN et al.

Patent Trials and Appeals BoardJun 23, 2021

2020005274 (P.T.A.B. Jun. 23, 2021)

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. 14/317,939 06/27/2014 John Anthony CONKLIN 5759.006US7 7356 21186 7590 06/23/2021 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER DAM, DUSTIN Q ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 06/23/2021 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN ANTHONY CONKLIN and SCOTT RYAN HAMMOND Appeal 2020-0052741 Application 14/317,9392 Technology Center 1700 Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL 1 The following documents are of record in this appeal: Specification filed June 27, 2014 (“Spec.”); Final Office Action dated November 29, 2018 (“Final Act.”); Appeal Brief filed November 29, 2019 (“Appeal Br.”); Examiner’s Answer dated March 31, 2020 (“Ans.”); and Reply Brief filed July 1, 2020 (“Reply Br.”). 2 The present application is related to Application 14/317,930, which is currently on appeal (Appeal 2020-003166). See Appeal Br. 3. Appeal 2020-005274 Application 14/317,939 2 The Appellant3 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision finally rejecting claims 1 and 3–22.4 We affirm and enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The invention relates to “organic photovoltaic devices—cell or modules—as coatings for military aircraft fuselage, wing, tail, and strut surfaces, to provide electricity for mission-critical systems on-board the aircraft.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electricity-generating coating for a three-dimensional surface of a fuselage panel of a military aircraft, comprising: a conformal organic photovoltaic device, including one or more cells connected in series and/or parallel, wherein the conformal organic photovoltaic device is flexible and configured to be adhered and conformed to the three- dimensional surface of the fuselage panel of the military aircraft, along with wires and power electronics to allow the conformal organic photovoltaic device to provide electricity for electrical systems on-board the military aircraft; and a pressure-sensitive adhesive on the conformal organic photovoltaic device, the pressure-sensitive adhesive being flexible and capable of conforming to the three-dimensional surface of the fuselage panel and adhering the conformal organic photovoltaic device to the three-dimensional surface of the fuselage panel of the military aircraft without air entrapped between the conformal organic photovoltaic device and the surface of the fuselage panel, 3 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as SolarWindow Technologies, Inc. Appeal Br. 3. 4 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-005274 Application 14/317,939 3 wherein the conformal organic photovoltaic device is semitransparent and the pressure-sensitive adhesive is one of semitransparent and transparent. Appeal Br. 34 (Claims App.). REFERENCES Name Reference Date Corrales US 2008/0134497 A1 June 12, 2008 Booth US 2011/0197955 A1 August 18, 2011 Dong US 2011/0198444 Al August 18, 2011 Chung US 2011/0300664 A1 December 8, 2011 Zhao US 2014/0000681 A1 January 2, 2014 Conklin 14/317,930 (claims 1, 3–21 June 27, 2014 Conklin 14/317,951 (claims 1, 3–22) June 27, 2014 Conklin 14/317,956 (claims 1, 3–22) June 27, 2014 Conklin 14/317,966 (claims 1, 3, 4, 8–10, 12–26) June 27, 2014 Kaltenbrunner “Ultrathin and lightweight organic solar cells with high flexibility” Nature Communications 3:770, doi:10.1038/ncommsl772 April 3, 2012 REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 3–22 Provisional Double patenting—claims 1 and 3–21 of copending Application No. 14/317,930 1, 3–22 Provisional Double patenting—claims 1 and 3–22 of copending Application No. 14/317,951 Appeal 2020-005274 Application 14/317,939 4 1, 3–22 Provisional Double patenting—claims 1 and 3–22 of copending Application No. 14/317,956 1, 3–22 Provisional Double patenting—claims 1, 3, 4, 8–10, and 12–26 of copending Application No. 14/317,966 1, 3–10, 15–18, 22 112(a) Written description 1, 3–22 112(b) Indefiniteness 1, 3–5, 7, 17 103 Kaltenbrunner, Booth, Chung 6, 15, 16, 22 103 Kaltenbrunner, Booth, Chung, Dong 8, 9, 18 103 Kaltenbrunner, Booth, Chung, Corrales 10 103 Kaltenbrunner, Booth, Chung, Corrales, Dong 11, 12, 19, 20 103 Kaltenbrunner, Booth 13, 14, 21 103 Kaltenbrunner, Booth, Zhao NEW GROUND OF REJECTION Claims 6 and 10 are rejected under 35 U.S.C. § 112(b) as indefinite. A claim is indefinite under 35 U.S.C. § 112 when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014). General claim construction principles apply when determining indefiniteness. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332– 33 (Fed. Cir. 2010). During examination, claim terms must be given their broadest reasonable construction consistent with the specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A] Appeal 2020-005274 Application 14/317,939 5 claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.” 35 U.S.C. § 112(d); see also In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (“[E]ach claim of a patent has a purpose that is separate and distinct from the remaining claims. Claims of narrower scope can be useful to clarify the meaning of broader, independent claims under the doctrine of claim differentiation.”). Claim 1 recites “[a]n electricity-generating coating for a three- dimensional surface of a fuselage panel of a military aircraft.” Appeal Br. 34 (Claims App.). The coating includes a conformal organic photovoltaic device “configured to be adhered and conformed to the three-dimensional surface of the fuselage panel of the military aircraft.” Id. Dependent claim 22 recites “[t]he electricity-generating coating of claim 1, further comprising: the three-dimensional surface of the fuselage panel.” Id. at 40. Applying the above claim construction principles, we interpret claim 1 as reciting a coating intended for use on a military aircraft fuselage panel, and claim 22 as further limiting claim 1 to require that the coating is mounted on a military aircraft fuselage panel. Claims 6 and 10 indirectly depend from claim 1 and require that the electricity-generating coating “engag[e]” the military aircraft fuselage panel such that air is not entrapped. See Appeal Br. 35–36 (Claims App.). Unlike claim 22, neither claim 6, claim 10, nor any intervening claim, positively recites a fuselage panel. Thus, the scope of each of claims 6 and 10 is unclear. Specifically, the ordinary artisan would not know whether claims 6 and 10 require both a coating and a fuselage panel, or just a coating Appeal 2020-005274 Application 14/317,939 6 configured to, or capable of, engaging a fuselage panel without air entrapped between them. Based on the Appellant’s traversal of the Examiner’s rejections under 35 U.S.C. §§ 112 (a) and (b), for purposes of this appeal, we treat claims 6 and 10 as requiring both a coating and a fuselage panel. OPINION Double Patenting Rejections The Examiner provisionally rejected claims 1 and 3–22 on the ground of nonstatutory double patenting over the following copending application claims: (1) claims 1 and 3–21 of Application 14/317,930; (2) claims 1 and 3–22 of Application 14/317,951; (3) claims 1 and 3–22 of Application 14/317,956; and (4) claims 1, 3, 4, 8–10, and 12–26 of Application 14/317,966. Final Act. 4. The Appellant does not argue these rejections, and we decline to reach them. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential) (panels may decline to reach provisional obviousness-type double patenting rejections); Ex Parte Jerg, Appeal No. 2011-000044, 2012 WL 1375142, at *3 (BPAI 2012) (informative) (declining to reach nonstatutory double patenting rejections because the claims on appeal were not clearly the same as those originally considered by the examiner and holding that panels have the flexibility to reach or not reach such rejections.). Rejection under 35 U.S.C. § 112(a) The Examiner rejected claims 1, 3–10, 15–18, and 22 under 35 U.S.C. § 112(a). Final Act. 5. The Examiner found that the written description does not support the following claim language: “without air entrapped between Appeal 2020-005274 Application 14/317,939 7 the conformal organic photovoltaic device and the surface of the fuselage panel” (claim 1); “without air entrapped between the conformal organic photovoltaic device and the pressure-sensitive adhesive” (claims 6, 10, 22); “without air entrapped between the second curved surface of the pressure- sensitive adhesive and the curved surface of the fuselage panel” (claims 6, 10); “removal of air entrapped between the transfer film and the curved surface of the fuselage panel” (claims 15, 16); and “the three- dimensional surface of the fuselage panel . . . comprises a varying curved surface” (claim 22). Final Act. 5–12. The Appellant does not dispute the Examiner’s determination that the written description does not support claim 22’s recitation of “a varying curved surface” (emphasis added). See generally Appeal Br. 11–15; see e.g., id. at 12 (“In this way, the electricity-generating coating can be formed using conventional manufacturing techniques while having sufficient flexibility to be applied to a three-dimensional fuselage surface having either a planar or curved surface.” (emphasis added)). Accordingly, we sustain the rejection of claim 22. As to the recitations “without air entrapped” between various surfaces (claims 1, 6, 10, 22), the Appellant argues that written descriptive support is provided in Figures 2 and 3, each of which illustrates an embodiment without any air bubbles. See Appeal Br. 13–15. The Appellant also relies on Specification paragraphs 18 and 19 which describe the organic photovoltaic devices 204, 304 as “[l]aminated onto the fuselage panel using stretching, and press-forming, with or without vacuum assistance in removing entrained air.” Appeal Br. 13, 14 (quoting Spec. ¶¶ 18, 19). Appeal 2020-005274 Application 14/317,939 8 “Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Although the Specification describes removing entrained air, the Appellant has not provided sufficient evidence that the ordinary artisan would have understood that no entrapped air was present. For example, there is no evidence in this appeal record that the techniques for laminating—“stretching and press- forming, with or without vacuum assistance” (Spec. ¶¶ 18, 19)— are capable of removing all entrained air. Nor has the Appellant shown that the ordinary artisan would have understood the term “without” as meaning something other than “none of.” See https://www.dictionary.com/browse/without# (accessed June 8, 2021). For the reasons discussed above, we are not convinced that the written description describes the invention as providing a complete removal of entrained air. Thus, the ordinary artisan reasonably would have understood Figures 2 and 3 as depicting neither the presence nor the absence of air. Accordingly, we sustain the rejection of claim 22 for this additional reason, as well as the rejection of claims 1, 6, and 10, and claims 15 and 16 by virtue of their indirect dependencies from claim 1. Because we sustain the rejection of claims 15 and 16 based on language in the claims from which they depend, and the Appellant does not separately address claims 15 and 16 (see generally Appeal Br. 11–15), we do not reach the issue of whether the recitation “removal of air entrapped between the transfer film and the curved surface of the fuselage panel” (claims 15 and 16) lacks written description support. Appeal 2020-005274 Application 14/317,939 9 Rejection under 35 U.S.C. § 112(b) The Examiner rejected claims 1 and 3–22 under 35 U.S.C. § 112(b). Final Act. 12. The Examiner determined that language in claims 1, 11, and 15 renders those claims, as well as their dependent claims, indefinite. See id. at 12–13.5 Claims 1 and 11 recite “a fuselage panel of a military aircraft.” Appeal Br. 34, 37 (Claims App.). The Examiner determined that this language renders the claims indefinite because “[i]t is unclear as to what limitations the term ‘military’ imparts on the claimed components and steps.” Final Act. 12. The Appellant argues that “one of ordinary skill in the art will know and understand that the phrase ‘military aircraft’ distinguishes between an electricity-generating coating intended for a fuselage panel of a military aircraft, in contrast to for a commercial or private aircraft.” Appeal Br. 16. The Appellant’s argument is not persuasive for the reasons that follow. As discussed below in connection with the obviousness rejections, we determine that the term “military” is a structural limitation and not merely an intended use. See K–2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (functional language may structurally limit an apparatus claim when it describes something about the apparatus’s structure, rather than merely listing its intended or preferred uses). “[C]laim definiteness depends on the skill level of an ordinary artisan. Therefore, the specification need only disclose adequate defining structure to render the bounds of the claim understandable to an ordinary artisan.” Telcordia Techs., Inc. v. Cisco 5 The Examiner’s rejection of claim 1 as lacking antecedent basis is withdrawn in the Answer. See Ans. 3. Appeal 2020-005274 Application 14/317,939 10 Systems, Inc. 612 F.3d 1365, 1377 (Fed. Cir. 2010) (citing Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365–66 (Fed. Cir. 2003)). As evidence that the ordinary artisan would understand the meaning of “military aircraft,” the Appellant quotes the “public aircraft” definition in 19 C.F.R. §§ 122.1: “any aircraft owned by, or under the complete control and management of the U.S. government or any of its agencies, . . . not including any government owned aircraft engaged in carrying persons or property for commercial purposes.” Appeal Br. 16–17. Although this regulation describes the type of individuals that may operate or travel as passengers in US government owned or operated aircraft, it fails to provide any information as to the structural requirements for a military aircraft fuselage versus a commercial or private aircraft fuselage. For the reasons discussed above, we determine that the term “military aircraft” renders claims 1 and 11, as well as their dependent claims 3–10 and 12–22, indefinite under 35 U.S.C. § 112(b). The Examiner determined that claim 15 also is indefinite because the steps are unclear. Final Act. 13. As noted by the Examiner claim 15 defines the term “transfer film” as including “the support substrate, the flexible transparent substrate, the transfer release layer, the conformal organic photovoltaic device, and the pressure-sensitive adhesive” Appeal Br. 38 (Claims App.). Final Act. 13. The last step in claim 15 recites “removing the support substrate and the transfer release layer from the transfer film leaving the transfer film on the three-dimensional surface of the fuselage panel.” Appeal Br. 39 (Claims App.). Final Act. 13. The Examiner determines that it is unclear how the transfer film can remain on the fuselage panel surface after two of its components—the support substrate and the transfer release Appeal 2020-005274 Application 14/317,939 11 layer—have been removed. Id. The Appellant contends that the ordinary artisan would know and understand that “claim 15, refers to leaving the transfer film (i.e., the flexible transparent substrate, the conformal organic photovoltaic device, and the pressure-sensitive adhesive) on the three- dimensional surface of the fuselage panel after the support substrate and the transfer release layer are removed.” Reply Br. 6. We are not persuaded that claim 15 complies with the Section 112 definiteness requirement. Although claim 15 recites a step of removing the support substrate and the transfer release layer, the recitation of “leaving the transfer film on the three- dimensional surface of the fuselage panel” suggests a step of reapplying the support substrate and the transfer release layer. We determine that claim 15 is indefinite for this additional reason. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential) (“The USPTO is justified in using a lower threshold showing of ambiguity to support a [determination] of indefiniteness . . . because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent.”). Rejections under 35 U.S.C. § 103 The Examiner rejected independent claim 11 as unpatentable over Kaltenbrunner and Booth, and independent claim 1 as unpatentable over Kaltenbrunner, Booth, and Chung. Final Act. 14, 35–36. Claim 1 recites: “the conformal organic photovoltaic device is flexible and configured to be adhered and conformed to the three-dimensional surface of the fuselage panel of the military aircraft.” Appeal Br. 34 (Claims App.) (emphasis Appeal 2020-005274 Application 14/317,939 12 added). Claim 11 recites: “the pressure-sensitive adhesive is . . . flexible and configured to adhere and conform the organic photovoltaic device to a three- dimensional surface of a fuselage panel of a military aircraft.” Id. at 37 (emphasis added). The Examiner found that Kaltenbrunner’s conformal organic photovoltaic device is “configured to be adhered and conformed to the three- dimensional surface of the fuselage panel of [a] military aircraft, along with . . . to provide electricity for electrical systems on-board the military aircraft” (claim 1) because it is “structurally capable of adhering to a three- dimensional surface of a fuselage panel” and “is depicted in FIG. 1a–e as adhered on a surface and comprising electrodes.” Final Act. 15 (emphasis added). The Examiner found that the ordinary artisan would have modified Kaltenbrunner’s conformal organic photovoltaic device to include a pressure sensitive adhesive as taught by Booth “because it would allow for encapsulating the conformal organic photovoltaic device, provide a structural protective backing, operate as a sealant, and provide a mounting adhesive for mounting the conformal organic photovoltaic device.” Id. at 17, 38. The Examiner found that Booth’s adhesive is “configured to adhere and conform the organic photovoltaic device to a three-dimensional surface of a fuselage panel of a military aircraft” (claim 11) because it is “structurally capable of adhering and conforming the photovoltaic device to a three- dimensional surface of a fuselage panel of a military aircraft” (id. at 39) because “Fig. 2 depicts the photovoltaic device 12 adhered and conformed onto a three-dimensional surface 30” (id.; see id. at 17). The Examiner relied on Chung for a suggestion of eliminating “air entrapped between the Appeal 2020-005274 Application 14/317,939 13 conformal organic photovoltaic device and the surface of the fuselage panel” (claim 1). See Final Act. 18. The Appellant argues that Booth discloses adhering a photovoltaic device “to planar surfaces of building materials, such as a roof, rack, roof membrane, or roof deck, where precision conformal coating and removal of entrapped air is not a concern.” Appeal Br. 21. The Appellant contends that “Booth does not disclose an electricity-generating coating configured for or capable of being applied to a surface of a fuselage panel of an aircraft.” Id. The Appellant’s argument is persuasive. The Examiner’s obviousness determination is based on findings that Kaltenbrunner’s conformal organic photovoltaic device and Booth’s adhesive are capable of adhering and conforming to an aircraft fuselage panel. But claim 1 requires an organic photovoltaic device “configured to” be adhered and claim 11 requires a pressure-sensitive adhesive “configured to” adhere the organic photovoltaic device to a three-dimensional surface of a fuselage panel of a military aircraft. Absent an explicit definition or contrary usage in a specification, the phrase “configured to” generally has a narrower meaning than “capable of.” See In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014). The present Specification focuses on fuselage panels and does not describe uses for the inventive coatings other than fuselage panels. We find no indication that the phrase “configured to” should be construed more broadly than its plain and ordinary meaning of “designed to” or “constructed to.” As the Examiner has not identified a teaching or suggestion of an organic photovoltaic device and adhesive that are specifically designed to adhere and conform to a military aircraft fuselage panel, the Examiner has not met the burden to establish a prima facie case of obviousness. Appeal 2020-005274 Application 14/317,939 14 Accordingly, we do not sustain the obviousness rejections of independent claims 1 and 11, and their dependent claims. We note that the Examiner has not relied on any of the other cited references in a manner that cures the deficiencies in the combination of Kaltenbrunner, Booth, and Chung. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3–22 Provisional Double patenting—claims 1 and 3–21 of copending Application No. 14/317,9306 1, 3–22 Provisional Double patenting—claims 1 and 3–22 of copending Application No. 14/317,951 1, 3–22 Provisional Double patenting—claims 1 and 3–22 of copending Application No. 14/317,956 1, 3–22 Provisional Double patenting—claims 1, 3, 4, 8–10, and 12–26 of 6 As explained above, we do not reach the provisional double patenting rejections. Appeal 2020-005274 Application 14/317,939 15 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground copending Application No. 14/317,966 1, 3–10, 15–18, 22 112(a) Written description 1, 3–10, 15–18, 22 1, 3–22 112(b) Indefiniteness 1, 3–22 6, 10 1, 3–5, 7, 17 103 Kaltenbrunner, Booth, Chung 1, 3–5, 7, 17 6, 15, 16, 22 103 Kaltenbrunner, Booth, Chung, Dong 6, 15, 16, 22 8, 9, 18 103 Kaltenbrunner, Booth, Chung, Corrales 8, 9, 18 10 103 Kaltenbrunner, Booth, Chung, Corrales, Dong 10 11, 12, 19, 20 103 Kaltenbrunner, Booth 11, 12, 19, 20 13, 14, 21 103 Kaltenbrunner, Booth, Zhao 13, 14, 21 Overall Outcome 1, 3–22 6, 10 TIME PERIOD FOR RESPONSE This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[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 Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2020-005274 Application 14/317,939 16 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. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R § 41.50(b)