John CONKLIN et al.

Patent Trials and Appeals BoardJun 23, 2021

2020003166 (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. 14/317,930 06/27/2014 John Anthony CONKLIN 5759.006US6 7308 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 2020-0031661 Application 14/317,9302 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 October 18, 2018 (“Final Act.”); Appeal Brief filed June 18, 2019 (“Appeal Br.”); Second Examiner’s Answer dated February 13, 2020 (“Ans.”); and Reply Brief filed March 23, 2020 (“Reply Br.”). 2 The present application is related to Application 14/317,939, which is currently on appeal (Appeal 2020-005274). See Appeal Br. 3. Appeal 2020-003166 Application 14/317,930 2 The Appellant3 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision finally rejecting claims 1 and 3–21.4 We affirm in part and enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The invention relates to “semi-transparent organic photovoltaic devices—cell or modules—as coatings for military aircraft windows, including fighter and troop transport jet cockpits, to provide electricity for mission-critical systems onboard the aircraft.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electricity-generating coating for a three-dimensional window surface of a military aircraft, the electricity-generating coating 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 to the three-dimensional window surface, along with wires and power electronics to allow such coatings 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 configured to adhere and conform the conformal organic photovoltaic device to the three-dimensional window surface, wherein the conformal organic photovoltaic device is semitransparent and the pressure-sensitive adhesive is one of 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 2020-003166 Application 14/317,930 3 semitransparent and transparent such that light is capable of passing through the conformal organic photovoltaic device and the pressure-sensitive adhesive of the electricity-generating coating from either side. Appeal Br. 25 (Claims App.). REFERENCES Name Reference Date Shrotriya US 2009/0229667 A1 Sept. 17, 2009 Booth US 2011/0197955 A1 Aug. 18, 2011 Chung US 2011/0300664 A1 Dec. 8, 2011 Zhao US 2014/0000681 A1 Jan. 2, 2014 Conklin 14/317,939 (claims 1, 3–22) June 27, 2014 Conklin 14/317,951 (claims 1, 3–20) June 27, 2014 Conklin 14/317,956 (claims 1, 3–21) 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, 3–21 Provisional Double patenting—claims 1 and 3–22 of copending Application No. 14/317,939 1, 3–21 Provisional Double patenting—claims 1 and 3–20 of copending Application No. 14/317,951 Appeal 2020-003166 Application 14/317,930 4 Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 3–21 Provisional Double patenting—claims 1 and 3–21 of copending Application No. 14/317,956 1, 3–21 Provisional Double patenting—claims 1, 3, 4, 8–10, and 12–26 of copending Application No. 14/317,966 6, 10, 15, 16, 20, 21 112(a) Written description 1, 3–10, 15–17, 20, 21 112(b) Indefiniteness 1, 3–5, 7–9, 11, 12, 17, 18 103 Kaltenbrunner, Booth 13, 14, 19 103 Kaltenbrunner, Booth, Zhao 6, 10, 16, 20, 21 103 Kaltenbrunner, Booth, Chung, Shrotriya 15 103 Kaltenbrunner, Booth, Shrotriya 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] 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 Appeal 2020-003166 Application 14/317,930 5 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 window surface of a military aircraft.” Appeal Br. 25 (Claims App.). The coating includes a conformal organic photovoltaic device and a pressure-sensitive adhesive “configured to adhere” the device to a three- dimensional window surface. See id. Dependent claims 20 and 21 recite “[t]he electricity-generating coating of claim 1, further comprising: the three-dimensional window surface.” Id. at 31–32. Applying the above claim construction principles, we interpret claim 1 as reciting a coating intended for use on a military aircraft window surface, and claims 20 and 21 as further limiting claim 1 to require that the coating is mounted on a military aircraft window surface. Claims 6 and 10 indirectly depend from claim 1 and require that the electricity-generating coating “engag[e]” the military aircraft window surface such that air is not entrapped. See Appeal Br. 26–27 (Claims App.). Unlike claims 20 and 21, neither claim 6, claim 10, nor any intervening claim, positively recites a window surface. 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 window, or just a coating configured to, or capable of, engaging a window surface without air entrapped between them. Appeal 2020-003166 Application 14/317,930 6 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 window. OPINION Double Patenting Rejections The Examiner provisionally rejected claims 1 and 3–21 on the ground of nonstatutory double patenting over the following copending application claims: (1) claims 1 and 3–22 of Application 14/317,939; (2) claims 1 and 3–20 of Application 14/317,951; (3) claims 1 and 3–21 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 6, 10, 15, 16, 20, and 21 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 the second curved surface of the pressure-sensitive adhesive and the curved surface of the three-dimensional window surface” Appeal 2020-003166 Application 14/317,930 7 (claims 6, 10); “without air entrapped between the conformal organic photovoltaic device and the pressure-sensitive adhesive” (claims 6, 10, 20, 21); and “removal of air entrapped between the transfer film and the three- dimensional window surface” (claims 15, 16). Final Act. 5–12. The Appellant does not argue the Section 112(a) rejection of claims 15 and 16. See Appeal Br. 11–14. Therefore, we summarily sustain the Examiner’s rejection as to these claims. See 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) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). As to the recitations “without air entrapped between the second curved surface of the pressure-sensitive adhesive and the curved surface of the three-dimensional window surface” (claims 6, 10) and “without air entrapped between the conformal organic photovoltaic device and the pressure-sensitive adhesive” (claims 6, 10, 20, 21), the Appellant argues that written descriptive support is provided in Figures 1–5, each of which illustrates an embodiment without any air bubbles. See Appeal Br. 12–14. The Appellant also relies on the Specification’s description of organic photovoltaic devices 204, 404 as “[l]aminated onto the window using lamination, stretching, and press-forming, with or without vacuum assistance in removing entrained air.” Appeal Br. 12, 14 (quoting Spec. ¶¶ 18, 20). “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 Appeal 2020-003166 Application 14/317,930 8 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 the coating onto a military aircraft window—“stretching and press-forming, with or without vacuum assistance” (Spec. ¶¶ 18, 20)—or known methods for coating an organic photovoltaic device with pressure-sensitive adhesive (id. ¶ 17) 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 1–5 as depicting neither the presence nor the absence of air. The rejection of claims 6, 10, 15, 16, 20, and 21 under 35 U.S.C. § 112(a) is sustained. Rejection under 35 U.S.C. § 112(b) The Examiner rejected claims 1, 3–10, 15–17, 20, and 21 under 35 U.S.C. § 112(b). Final Act. 12. The Examiner determined that language in claims 1, 15, and 16 renders those claims, as well as their dependent claims, indefinite. See id. at 12–13. The Appellant does not dispute the rejection of claims 15 and 16 as indefinite. See Appeal Br. 14–15. Accordingly, we summarily sustain the indefiniteness rejection as to those claims. Claim 1 recites “[a]n electricity-generating coating for a three- dimensional window surface of a military aircraft.” The Examiner Appeal 2020-003166 Application 14/317,930 9 determined that claim 1 is indefinite because it “is unclear if ‘the three- dimensional window surface’ recited on line 5 of claim 1 is referring to the ‘three-dimensional window surface of a military aircraft’ recited on line[s] 1–2 of claim 1 or an entirely different three-dimensional window surface altogether.” Final Act. 13. “[T]he failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.” Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001) (quoting MPEP § 2173.05(e) (6th ed. Rev.1, Sept. 1995)). We agree with the Appellant that claim 1 “clearly introduces ‘a three-dimensional window surface of a military aircraft’ and then refers to this [same] feature in subsequent occurrences as ‘the three-dimensional window surface.’” Appeal Br. 15. Therefore, we do not sustain the Examiner’s rejection of claim 1 based on lack of antecedent basis. The Examiner also determined that claim 1 is indefinite because “[i]t is unclear as to what limitations the term ‘military’ imparts on the claimed components.” 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 window surface of a military aircraft, in contrast to for a commercial or private aircraft.” Appeal Br. 14. 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. Appeal 2020-003166 Application 14/317,930 10 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 Sys., 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)). The problem with the Appellant’s assertion as to the ordinary artisan’s skill level is that it is not supported by evidence. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also 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.”). The Appellant does not direct us to, nor do we find, a clear description of the structural requirements for a military aircraft window coating versus a commercial or private aircraft window coating. Further, although the Specification identifies fighter and troop transport jet cockpits as examples of military aircraft windows (Spec. ¶ 2), the full scope of “military aircraft” is unclear. For example, does “military aircraft” encompass military helicopters, and would helicopter Appeal 2020-003166 Application 14/317,930 11 window coatings have the same structural requirements as fighter jet window coatings? For the reasons discussed above, we sustain the rejection of claims 1, 3–10, 15–17, 20, and 21 under 35 U.S.C. § 112(b). Rejections under 35 U.S.C. § 103 The Examiner rejected independent claims 1 and 11 as unpatentable over Kaltenbrunner and Booth. Claim 1 recites: “the conformal organic photovoltaic device is flexible and configured to be adhered to the three- dimensional window surface [of a military aircraft] . . . ; and a pressure- sensitive adhesive . . . configured to adhere and conform the conformal organic photovoltaic device to the three-dimensional window surface.” Appeal Br. 25 (Claims App.) (emphasis added). Claim 11 recites: “the pressure-sensitive adhesive is . . . configured to adhere and conform the organic photovoltaic device to a three-dimensional window surface of an aircraft.” Id. at 28 (emphasis added). The Examiner found that Kaltenbrunner’s conformal organic photovoltaic device is configured to be adhered to “a three-dimensional window surface . . . to provide electricity for electrical systems on-board [a] military aircraft” (claim 1) because it is “structurally capable of adhering to a three-dimensional window surface” 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 Appeal 2020-003166 Application 14/317,930 12 adhesive for mounting the conformal organic photovoltaic device.” Id. at 16–17, 20–21. The Examiner found that Booth’s adhesive is “structurally capable of adhering and conforming the photovoltaic device to a three- dimensional window surface” (id. at 17, 21) because “Fig. 2 depicts the photovoltaic device 12 adhered and conformed onto a three-dimensional surface 30” (id. at 21; see id. at 16). 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. 16. The Appellant contends that Booth does not disclose applying the device to an aircraft’s three- dimensional window surface, and the Examiner “fails to articulate the reasons why one of ordinary skill in the art would have [had] a reasonable expectation of success in coating the thick laminate layer 16 of Booth on a curved three-dimensional window surface of an aircraft.” Id. at 17. 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 a military aircraft window. But claims 1 and 11 use the language “configured to.” 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 military aircraft windows and does not describe uses for the coatings other than aircraft windows. 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.” Appeal 2020-003166 Application 14/317,930 13 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 or other type of aircraft window, the Examiner has not met the burden to establish a prima facie case of obviousness. 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 and Booth. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 3–21 Provisional Double patenting— claims 1 and 3–22 of copending Application No. 14/317,9395 1, 3–21 Provisional Double patenting— claims 1 and 3–20 of copending 5 As explained above, we do not reach the provisional double patenting rejections. Appeal 2020-003166 Application 14/317,930 14 Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground Application No. 14/317,951 1, 3–21 Provisional Double patenting— claims 1 and 3–21 of copending Application No. 14/317,956 1, 3–21 Provisional Double patenting— claims 1, 3, 4, 8–10, and 12– 26 of copending Application No. 14/317,966 6, 10, 15, 16, 20, 21 112(a) Written Description 6, 10, 15, 16, 20, 21 1, 3–10, 15–17, 20, 21 112(b) Indefiniteness 1, 3–10, 15–17, 20, 21 6, 10 1, 3–5, 7– 9, 11, 12, 17, 18 103 Kaltenbrunner, Booth 1, 3–5, 7– 9, 11, 12, 17, 18 13, 14, 19 103 Kaltenbrunner, Booth, Zhao 13, 14, 19 6, 10, 16, 20, 21 103 Kaltenbrunner, Booth, Chung, Shrotriya 6, 10, 16, 20, 21 15 103 Kaltenbrunner, Booth, Shrotriya 15 Appeal 2020-003166 Application 14/317,930 15 Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground Overall Outcome 1, 3–10, 15–17, 20, 21 11–14, 18, 19 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 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 IN PART; 37 C.F.R § 41.50(b)