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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/774,238
`
`01/28/2020
`
`Yuya Nakamura
`
`P200093US00
`
`5661
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`GONZALEZ RAMOS, MAYLA
`
`ART UNIT
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/02/2021
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 01/28/2020 is/are: a)[¥) accepted or b)(.) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 01/28/2020.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210827
`
`Application No.
`Applicant(s)
`16/774 ,238
`Nakamuraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MAYLA GONZALEZ RAMOS
`1721
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 08/16/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`Claim(s) 1-8 are currently pending.
`
`Status of Claims
`
`Election/Restrictions
`
`3.
`
`Applicant’s election without traverse of Species A in the reply filed on 08/16/2021
`
`is acknowledged. However, upon further consideration and during the search
`
`performed, it is determined that the Species are directed to obvious variants.
`
`Accordingly, the restriction requirement between Species A, Species B and Species C
`
`is hereby withdrawn.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`A patentfor a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`5.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized as follows:
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 3
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating
`
`obviousness or nonobviousness.
`
`6.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effectivefiling dates of each claim that was not commonly
`
`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`7.
`
`Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`US 2014/0202534, Ichinoseet al. in view of US 2013/0206214, Akaikeetal.
`
`Regarding claims 1-6
`
`Ichinose teaches a solar cell module (1) [Fig.1 and paragraph 0021], comprising:
`
`a plurality of solar cells (12) [Fig.
`
`1 and paragraph 0021];
`
`a wiring member (14) configured to connect, among the plurality of solar cells
`
`(12), a first solar cell and a second solar cell which are adjacent to each other [Fig. 1
`
`and paragraph 0021];
`
`a first protective base (10) disposed onalight receiving surface side of the
`
`plurality of solar cells (12) [Fig.
`
`1 and paragraph 0030];
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 4
`
`a second protective base (11) disposed on a rear surface side of the plurality of
`
`solar cells (12) [Fig.
`
`1 and paragraph 0030];
`
`a first encapsulant (13a) disposed between the first protective base (10) and the
`
`plurality of solar cells (12) [Fig. 1, paragraphs 0021, 0025 and 0030], the first
`
`encapsulant (13a) composedof a resin comprising polyolefin (instant claim 2) [Fig.
`
`1
`
`and paragraph 0026]; and
`
`a second encapsulant (13b) disposed between the second protective base (11)
`
`and the plurality of solar cells (12) [Fig. 1, paragraphs 0025 and 0030],
`
`wherein the first protective base (10) is a translucent glass base (the first
`
`protection member/base comprises a glass plate) [paragraph 0030], and
`
`wherein the gel fraction of the first encapsulant (13a) is in a range of 5% ~ 90%
`
`(the gel fraction of the first encapsulant 13a is of 50%or less which overlaps with the
`
`claimed range of 5% ~ 90%) [paragraph 0027].
`
`In the case wherethe claimed ranges “overlapor lie inside ranges disclosed by
`
`the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,
`
`191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
`
`Cir. 1990) [MPEP 2144.05].
`
`Ichinose is silent to the Young's modulus ofthe first encapsulant being in a range
`
`of 14 MPa ~ 54 MPa.
`
`Akaike teaches a sealed solar cell module comprising a plurality of solar cells
`
`(12A and 12B) sealed byafirst encapsulant layer (10B) and a second encapsulant layer
`
`(14) [Fig.
`
`1 and paragraph 0146], wherein the encapsulant resin layer comprises a
`
`polyolefin resin having a storage elastic modules (Young’s modulus) of between 10 and
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 5
`
`100 MPafrom the view point of the ability to protect the solar cell elements and in
`
`consideration of the handleability of the encapsulant resin layer [paragraphs 0010, 0057
`
`and 0111].
`
`Ichinose and Akaike are analogous inventions in the field of sealed solarcell
`
`modules.
`
`It would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the invention to modify the first encapsulant of Ichinose to have a
`
`Young’s modulus in a range of 10 and 100 MPa,asin Akaike, in order to ensure
`
`adequate protection of the solar cell elements while securing the handleability of the
`
`encapsulant layer [Akaike, paragraph 0111].
`
`In the case wherethe claimed ranges
`
`“overlap or lie inside ranges disclosed bythe prior art” a prima facie case of
`
`obviousnessexists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re
`
`Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
`
`Modified Ichinoseis silent to a rate of stress relaxation of the first encapsulant at
`
`a temperature of 90°C is in a range of 0.18 ~ 0.52 (instant claim 1) and to the rate of
`
`stress relaxation of the first encapsulant at a temperature of 60°C is in a range of 0.80 ~
`
`82 (instant claim 5).
`
`However, becausethe first encapsulant is identical to the one claimed (see
`
`polyolefin resin, gel fraction and Young’s modulus; see also paragraph 0036 of the
`
`instant specification), the claimed properties or functions are presumedto be inherent.
`
`The court has held that products of identical chemical composition cannot have
`
`mutually exclusive properties. A chemical composition and its properties are
`
`inseparable. Therefore, if the prior art teaches the identical chemical structure, the
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 6
`
`properties applicant discloses and/or claims are necessarily present. In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
`
`It has been held that when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
`
`inherent (see MPEP § 2112.01). “When the PTO shows a soundbasis for believing that
`
`the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
`
`1655, 1658 (Fed. Cir. 1990).
`
`8.
`
`Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`2014/0202534, Ichinoseetal. in view of US 2013/0206214, Akaikeet al. as applied
`
`to claims 1-6 above, and further in view of JP 2014-068005, Fujita et al. (see
`
`attached Machine translation).
`
`Regarding claim 7
`
`All the limitations of claim 1, from which claim 7 depends, have been setforth
`
`above.
`
`Modified Ichinose does not teach a value of (Young's modulus) x (thickness) of
`
`the second protective base equal to or greater than 0.1 GPa.mm; and
`
`a linear expansion coefficient of the second protective base equal to or greater
`
`than 40 ppm/°C, and also confined within a range from a lower limit which is set to a
`
`value (a1) determined by Equation 1 to an upper limit which is set to a value (a2)
`
`determined by Equation 2,
`
`Equation 1: a1 (ppm/°C) = 583 x E? - 623 x E+ 176
`
`Equation 2: a2 (ppm/°C) = 500 x (E)* - 590 x E + 190
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 7
`
`wherereference letter E represents the value (GPa.mm) of (Young's modulus) x
`
`(thickness) of the second protective base.
`
`Fujita teaches a solar cell module comprisingafirst protective base (front surface
`
`protective layer 1) and a second protective base (back surface protective layer 2) [Fig. 2
`
`and paragraph 0002], wherein the second protective base (2) comprises:
`
`a thicknessthat is preferably 3.5 mm or more and 8 mm or lessin order to
`
`ensure adequate insulation and impact resistance while avoiding a reduction in the
`
`flexibility and an increase in the weight of the module [paragraph 0032];
`
`a Young’s modulus of 5GPaorless in order to avoid excessive heat shrinkage
`
`stress [paragraphs 0015 and 0033]; and
`
`a linear coefficient of thermal expansion in a range of 45 ppm/°C or more and
`
`200 ppm/°Corless such that whenthe battery module is subjected to temperature
`
`changes that causesthe layers to expand and contract the device is not damaged by
`
`thermal stress [paragraphs 0003 and 0033].
`
`The above properties of the second protective base (2) of Fujita satisfy the
`
`following:
`
`a value of (Young's modulus) x (thickness) of the second protective base equal to
`
`or greater than 0.1 GPa.mm (0.1GPa x 3.5 mm = 0.35 GPa.mm);
`
`a linear expansion coefficient of the second protective base equal to or greater
`
`than 40 ppm/°C (between 45 ppm/°C and 200 ppm/°C);
`
`and also confined within a range from a lower limit which is set to a value (a1)
`
`determined by Equation 1 to an upper limit which is set to a value (a2) determined by
`
`Equation 2,
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 8
`
`Equation 1: a1 (ppm/°C) = 583 x E? - 623 x E + 176 [583 x (0.35)? - 623 x 0.35 +
`
`176 = 29.37].
`
`Equation 2: a2 (ppm/°C) = 500 x (E)? - 590 x E + 190 [500 x (0.35)? - 590 x 0.35
`
`+ 190 = 44.75].
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the invention to modify the second protective base of modified Ichinose
`
`suchthat the thickness, the Young’s modulus and the linear expansion coefficient are
`
`within the ranges disclosedin Fujita in order to ensure adequate insulation and impact
`
`resistant while avoiding a reduction in the flexibility of the module as well as an increase
`
`in the overall weight, to avoid excessive heat shrinkage stress and to prevent damage
`
`caused by thermal stress [Fujita, paragraphs 0003, 0015 and 0032-0033].
`
`It is noted
`
`that the above combination satisfy the limitations of the claim as set forth above.
`
`9.
`
`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`2014/0202534, Ichinoseet al. in view of JP 2014-068005, Fujita et al.
`
`Regarding claims 8
`
`Ichinose teaches a solar cell module (1) [Fig.1 and paragraph 0021], comprising:
`
`a plurality of solar cells (12) [Fig.
`
`1 and paragraph 0021];
`
`a wiring member (14) configured to connect, among the plurality of solar cells
`
`(12), a first solar cell and a second solar cell which are adjacent to each other [Fig. 1
`
`and paragraph 0021];
`
`a first protective base (10) disposed onalight receiving surface side of the
`
`plurality of solar cells (12) [Fig.
`
`1 and paragraph 0030];
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 9
`
`a second protective base (11) disposed on a rear surface side of the plurality of
`
`solar cells (12) [Fig.
`
`1 and paragraph 0030];
`
`a first encapsulant (13a) disposed between the first protective base (10) and the
`
`plurality of solar cells (12) [Fig. 1, paragraphs 0021, 0025 and 0030], the first
`
`encapsulant (13a) composedof a resin comprising polyolefin (instant claim 2) [Fig.
`
`1
`
`and paragraph 0026]; and
`
`a second encapsulant (13b) disposed between the second protective base (11)
`
`and the plurality of solar cells (12) [Fig. 1, paragraphs 0025 and 0030],
`
`wherein the first protective base (10) is a translucent glass base (the first
`
`protection member/base comprises a glass plate) [paragraph 0030].
`
`Ichinose does not teach a value of (Young's modulus) x (thickness) of the second
`
`protective base equal to or greater than 0.1 GPa.mm; and
`
`a linear expansion coefficient of the second protective base equal to or greater
`
`than 40 ppm/°C, and also confined within a range from a lower limit which is set to a
`
`value (a1) determined by Equation 1 to an upper limit which is set to a value (a2)
`
`determined by Equation 2,
`
`Equation 1: a1 (ppm/°C) = 583 x E? - 623 x E+ 176
`
`Equation 2: a2 (ppm/°C) = 500 x (E)? - 590 x E + 190
`
`wherereference letter E represents the value (GPa.mm) of (Young's modulus) x
`
`(thickness) of the second protective base.
`
`Fujita teaches a solar cell module comprisingafirst protective base (front surface
`
`protective layer 1) and a second protective base (back surface protective layer 2) [Fig. 2
`
`and paragraph 0002], wherein the second protective base (2) comprises:
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 10
`
`a thicknessthat is preferably 3.5 mm or more and 8 mm or lessin order to
`
`ensure adequate insulation and impact resistance while avoiding a reduction in the
`
`flexibility and an increase in the weight of the module [paragraph 0032];
`
`a Young’s modulus of 5GPaorless in order to avoid excessive heat shrinkage
`
`stress [paragraphs 0015 and 0033]; and
`
`a linear coefficient of thermal expansion in a range of 45 ppm/°C or more and
`
`200 ppm/°Corless such that whenthe battery module is subjected to temperature
`
`changes that causesthe layers to expand and contract the device is not damaged by
`
`thermal stress [paragraphs 0003 and 0033].
`
`The above properties of the second protective base (2) of Fujita satisfy the
`
`following:
`
`a value of (Young's modulus) x (thickness) of the second protective base equal to
`
`or greater than 0.1 GPa.mm (0.1GPa x 3.5 mm = 0.35 GPa.mm);
`
`a linear expansion coefficient of the second protective base equal to or greater
`
`than 40 ppm/°C (between 45 ppm/°C and 200 ppm/°C);
`
`and also confined within a range from a lower limit which is set to a value (a1)
`
`determined by Equation 1 to an upper limit which is set to a value (a2) determined by
`
`Equation 2,
`
`Equation 1: a1 (ppm/°C) = 583 x E? - 623 x E + 176 [583 x (0.35)? - 623 x 0.35 +
`
`176 = 29.37].
`
`Equation 2: a2 (ppm/°C) = 500 x (E)? - 590 x E + 190 [500 x (0.35)? - 590 x 0.35
`
`+ 190 = 44.75].
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 11
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the invention to modify the second protective base of Ichinose a thickness,
`
`Young’s modulus and linear expansion coefficient within the ranges disclosed in Fujita
`
`in order to ensure adequate insulation and impact resistant while avoiding a reduction in
`
`the flexibility of the module as well as an increase in the overall weight, to avoid
`
`excessive heat shrinkage stress and to prevent damage caused by thermalstress
`
`[Fujita, paragraphs 0003, 0015 and 0032-0033].
`
`It is noted that the above combination
`
`satisfy the limitations of the claim as set forth above.
`
`10.=‘The prior art made of record and not relied upon is considered pertinent to
`
`Conclusion
`
`applicant's disclosure.
`
`US 2011/0192458, Doi et al. teaches that stresses that arise as a result of the
`
`different thermal expansion coefficients when the solar cell module is subjected to
`
`temperature variations can be relaxed by a sealing layer thereby preventing damages
`
`such as cracksin the wiring portion of the module [paragraph 0027].
`
`11.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MAYLA GONZALEZ RAMOSwhosetelephone number
`
`is (571)272-5054. The examiner can normally be reached on Monday- Thursday, 9:00-
`
`5:00 - EST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`

`

`Application/Control Number: 16/774 ,238
`Art Unit: 1721
`
`Page 12
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Allison Bourke can be reached on (303)297-4684. The fax phone number
`
`for the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
`
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`
`272-1000.
`
`/MAYLA GONZALEZ RAMOS/
`Primary Examiner, Art Unit 1721
`
`