Sergeyv.Frolov et al.

Patent Trials and Appeals Board

Sep 26, 2019

14602560 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/602,560 01/22/2015 SERGEY V. FROLOV SP007C1 9274
54698 7590 09/26/2019
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
AYAD, TAMIR
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte SERGEY V. FROLOV, MICHAEL CYRUS, and
ALLAN J. BRUCE
____________
Appeal 2018-007336
Application 14/602,560
Technology Center 1700
____________

Before ROMULO H. DELMENDO, GRACE KARAFFA OBERMANN,
and MICHAEL G. MCMANUS, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks relief from the Examiner’s final rejection of
claims 1–20 under 35 U.S.C. § 103(a). Appeal Br. 6–17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellant is the Applicant, Sunlight Photonics Inc., which according to the
Appeal Brief, is also the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Inventors describe the invention as relating generally to
photovoltaic devices and, more particularly, stretchable photovoltaic
devices. Spec. ¶ 2. According to the Inventors, known photovoltaic cells
are constructed rigidly or to allow a limited amount of flexing or bending.
Id. ¶ 10. The Inventors assert that there is a need for a photovoltaic source
more suitable for applications that require nonplanar or arbitrary form
factors. Id. ¶ 11.
Claim 1, reproduced below, is illustrative of the subject matter.
A carrier comprising:
a stretchable part having a stretchable-part length,
wherein the stretchable-part length is operable to change a
length dimension of the carrier in response to a force being
applied to the carrier, wherein the stretchable part comprises a
plurality of corrugations, and wherein the change in the
stretchable-part length is produced by a change in an amplitude
and width of at least some of the plurality of corrugations; and
a mounting site having a flat foundation surface located
between at least some of the plurality of corrugations on which
to affix at least one photovoltaic cell.

REJECTION
The Examiner rejects the subject matter of claims 1–20 as obvious
over Arora2 in view of Murphy.3 Final Action 3–8.
FACTUAL FINDINGS AND ANALYSIS
The Examiner finds that Arora discloses a carrier comprising a
stretchable part, including interconnects 104 (shown in Figure 7) that

2 US 8,389,862 B2 (issued March 5, 2013).
3 US 2006/0174930 A1 (published Aug. 10, 2006).
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accommodate stretching, and a plurality of corrugations as specified in claim
1. Id. at 3 (citing Arora, 4:63–65, 5:20). The Examiner also finds that Arora
discloses a mounting site having a flat foundation surface (i.e., discrete
islands 102), but does not disclose that the mounting site is located between
the corrugations. Id. (citing Arora, 3:11–12). The Examiner relies on
Murphy’s illustration of interconnects 60 for a teaching of locating
interconnects on either side of a solar cell – a configuration that would
suggest locating Arora’s foundation surface between a plurality of
corrugations. Id. (citing Murphy, Fig. 9A).
Appellant argues that the proposed combination of Arora and Murphy
does not teach a “stretchable part compris[ing] a plurality of corrugations”
where a mounting site is “located between at least some of the plurality of
corrugations.” Appeal Br. 6–9. Appellant contends that Murphy teaches an
interconnected solar cell in which positively charged pads are placed on a
top side of a solar cell to connect with negatively charged pads on a bottom
side of an adjacent solar cell. Id. at 7–9; Reply Br. 3–8. Appellant also
contends that Murphy’s interconnects are not stretchable, but rather, are
rigid – and, as a result, the combination of Arora and Murphy would cause
Arora to lose stretching capabilities. Appeal Br. 8–9; Reply Br. 6, 8.
Appellant further asserts that the Examiner fails to provide a reason to
combine Arora and Murphy, indicating that the proposed rejection is based
on improper hindsight. Appeal Br. 13–14, 16; Reply Br. 11–12, 14–15.
Appellant’s arguments are not persuasive. We agree with the
Examiner that Figure 9A of Murphy illustrates interconnects located on both
sides of a solar cell. See Murphy, Fig. 9A (illustrating cells 24B and 24C
located between interconnects 60); see also Appeal Br. 7 (acknowledging
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that Murphy teaches “interconnects on a top side and a bottom side of solar
cells to interconnect a plurality of adjacent solar cells in series”). Arora also
discloses interconnects (Arora, 4:7), and as the Examiner cogently explains,
the combined teachings of the applied prior art references would have
suggested the proposed modification of Arora in view of Murphy as follows:
[T]he Final Office Action does not propose interchanging or
substituting one interconnect for the other, but simply relies on
Murphy for the teaching which discloses the placement of
interconnects on either side of a photovoltaic cell. Based on the
teaching of Murphy, it would have been obvious to place the
interconnects of Arora on either side of the photovoltaic cell as
set forth in the Final Office Action. The result of the
modification proposed in the Final Office Action is a mounting
site having a flat foundation surface (a mounting site is
disclosed in Arora) located between at least some of the
plurality of corrugations (the location of the interconnects
(plurality of corrugations) in Arora is modified in view of the
teaching of Murphy).
Answer 10–11. We find no error in that explanation. Further, we agree with
the Examiner that the combined teachings of Arora and Murphy would have
suggested locating Arora’s mounting site between a plurality of corrugations
of Arora’s stretchable part.
Appellant appears to misunderstand the Examiner’s rejection in
arguing that Murphy teaches rigid interconnects and that using Murphy’s
interconnects in Arora would result in lost stretching capabilities. The
Examiner does not rely on a bodily incorporation of Murphy’s rigid
interconnects into the configuration of Arora’s carrier. In that regard, the
Examiner twice reiterates that the rejection is not based on “interchanging or
substitution one interconnect for the other.” Answer 9, 10. On the contrary,
as the Examiner explains, the Final Action “simply relies on Murphy for the
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teaching which discloses the placement of interconnects on either side of a
photovoltaic cell.” Id. at 9. The Examiner further explains:
It is the location of the interconnects (the location of the
plurality of corrugations) in Arora that is modified in view of
the teaching of Murphy. Rigid interconnects do not result from
the proposed modification of Arora. Placing the stretchable
plurality of corrugations (interconnects) of Arora on either side
of the photovoltaic cell, as proposed in the modification, does
not result in the electronic device losing its stretching
capabilities as asserted by Appellant.
Id. at 9; see In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.”). Appellant
does not show reversible error in the Examiner’s reasoning.
We understand the Examiner’s rejection to propose duplicating the
stretchable interconnects and corrugations of Arora in accordance with the
concept illustrated in Murphy of locating interconnects on both sides of a
mounting site. We find no error in the Examiner’s finding that rearranging
the interconnects of the prior art would have been an obvious modification
in which there is no change to the operation of the prior art device. Final
Action 4 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)); see KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976))).
Appellant similarly argues, unpersuasively, that modifying Arora with
a rigid non-stretchable interconnected solar cell array as taught in Murphy
would destroy the utility of invention of Arora and undermine the operation
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or purpose of Arora to provide extremely stretchable electronics, such that
there is no motivation to combine Arora and Murphy. Appeal Br. 13–15;
Reply Br. 13. Here again, Appellant appears to misunderstand the basis of
the Examiner’s rejection. The Examiner plainly does not propose
substituting Murphy’s interconnects for Arora’s interconnects. Final
Action 4 (first paragraph); Answer 9 (second paragraph), 10 (last
paragraph). The Examiner relies on Murphy only for an illustration that, in
this particular field of endeavor, it would have been obvious to arrange
Arora’s components so that Arora’s mounting site is located between at least
some of the plurality of Arora’s corrugations as specified in claim 1. Id.
Appellant further argues that Murphy’s interconnects are not designed
to be stretchable because stretchable interconnects could damage or
compromise the wiring and any physical connection between adjacent cells.
Appeal Br. 15; Reply Br. 14. That argument is unpersuasive for the same
reasons explained above. The Examiner does not propose replacing
Murphy’s interconnects with stretchable components, but instead relies on
Arora for the stretchable feature. See Final Action 3–4; Answer 9.
Appellant further argues that, even if Murphy teaches placing
interconnects on either side of a photovoltaic cell, one of ordinary skill in the
art would not look to combine Murphy’s teachings (which pertain to a rigid,
non-stretchable solar cell array) with Arora (which pertains to extremely
stretchable electronics). Reply Br. 11. We disagree. Both Arora and
Murphy provide teachings directed to electrical interconnects. Appellant
seeks to limit the availability of secondary references to those specifically
involving stretchable interconnects, but the obviousness analysis is not so
narrow. See KSR, 550 U.S. at 418 (“As our precedents make clear, however,
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the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”).
For the above reasons, we sustain the Examiner’s rejection of claim 1.
Claims 2, 4–17, 19, and 20
Appellant does not separately argue claims 2, 4–17, 19, and 20, apart
from claim 1. See Appeal Br. 6–16. Accordingly, we consider those claims
together with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We sustain the
Examiner’s rejection of claims 2, 4–17, 19, and 20 for the reasons set forth
above.
Claims 3 and 18
Appellant argues claims 3 and 18 separately and as a subgroup. We
select claim 3 as representative. See Appeal Br. 10–11. Claim 3 states:
The carrier of claim 1, wherein the stretchable part
comprises first and second stretchable parts having respective
first and second stretchable part lengths, wherein the first
stretchable part is oriented orthogonally to the second
stretchable part, and wherein the first stretchable part length is
operable to change independently from the second stretchable
part length.
Appellant argues that Arora does not disclose a “first stretchable part”
that “is oriented orthogonally to the second stretchable part.” Id. at 10. In
the Examiner’s view, that limitation is directed only to the intended use of
the claimed apparatus and, therefore, does not distinguish the claimed
apparatus from a prior art device having the capability to perform the
intended use. Final Action 5–6; see Answer 11 (finding that Arora’s device
is “capable of being oriented in the manner claimed”). We agree with
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Appellant that the claim limitation, requiring that “the first stretchable part is
oriented orthogonally to the second stretchable part,” is not a recitation of
intended use, but rather, describes the structure of the carrier. Appeal Br. 10
(emphasis added); see Spec. ¶ 109, Fig. 9 (illustrating a stretchable carrier in
which stretchable parts 904 are orthogonally positioned).
On that point, the Examiner relies on the following disclosure in
Arora: “The stretching may be a rotational stretching, where the rotation
may be greater than a certain rotation angle, such as 90°, 180°, 270°, 360°,
and the like, where the stretching may be in all three axes.” Answer 11
(quoting Arora 7:58–61). We agree with Appellant, however, that this
disclosure in Arora discusses the angles at which two pads on opposite sides
of an interconnect may be oriented. Reply Br. 8–9. Specifically, when read
in context, that disclosure addresses how electronic components 102A–B are
oriented in Arora relative to one another in rotational stretching – but does
not address the orientation of a first stretchable part in relation to a second
stretchable part. See Arora 7:48–60 (disclosing rotational stretching in the
same discussion as to how electronic components 102A–B separate from
each other in translational stretching). In other words, the Examiner relies
on a disclosure that, at best, suggests that electronic components 102A–B in
Arora may undergo rotational stretching relative to one another to achieve
the disclosed angles. But electronic components 102A–B correspond to the
claimed mounting sites in the Examiner’s rejection (see Final Action 3
(citing Arora, 3:11–12)), not the first and second stretchable parts to which
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the claim limitation at issue pertains. The Examiner identifies no disclosure
that relates to any angle of orientation of two stretchable parts.
We observe that the Examiner separately finds that Arora discloses
first and second stretchable parts, but that finding does not end the inquiry.
Id. at 5 (citing Arora, 5:20). The Examiner provides no reasons how or why
Arora’s disclosure, pertaining to the rotational stretching capabilities of
electronic components 102A–B, would have suggested a first stretchable
part that is oriented orthogonally to a second stretchable part as required by
claims 3 and 18. See Spec. ¶ 109, Fig. 9 (illustrating a stretchable carrier
where the stretchable parts 904 are orthogonally positioned).
Accordingly, we cannot sustain the Examiner’s rejection of claim 3 or
claim 18.

CONCLUSION

Claims
Rejected
Basis Affirmed Reversed
1, 2, 4–17, 19, 20 § 103 over Arora in
view of Murphy
1, 2, 4–17, 19,
20

3, 18 § 103 over Arora in
view of Murphy
3, 18
Overall Outcome 1, 2, 4–17, 19,
20
3, 18

The Examiner’s decision to reject claims 1, 2, 4–17, 19, and 20 is
affirmed.
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The Examiner’s decision to reject claims 3 and 18 is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART